Anil Dev Singh, J.:— This order will dispose of plaintiff's application under Order 39 rules 1 and 2 read with Section 151 CPC, being IA No. 6215 of 1990, for grant of temporary injunction restraining the defendants from selling or offering for sale and from using in any manner whatsoever, the trade mark “TISCO” or “FISCO” or any other mark deceptively and confusingly similar to Trade Mark TISCO of the plaintiff in relation to channels and application of defendants 2 and 5 under Order 39 rule 4 being I.A No. 8804 of 1990, for vacation of ex parte interim order dated August 8, 1990 whereby the defendants were restrained from asing the Trade Mark TISCO or FISCO in relation to the aforesaid product.
In order to appreciate the questions argued at the bar it will be necessary to set out the relevant facts as detailed in the pleadings of the parties.
The case of the plaintiff is that the plaintiff company was established 80 years ago and has been engaged in the manufacture and marketing of iron and steel and its derivative products including products like channels. These products are being sold under the trade mark “TISCO”. This trade mark has been registered under the Trade & Merchandise Marks Act, 1958 (for short ‘the Act’), being nos. 8710 (registered on November 25, 1942) and 143447 (registered on May 4, 1950).As explained in the plaint, in the trade mark “TISCO”, “T” stands for Tata, ‘I’ stands for Iron, ‘S’ stands for Steel and ‘CO’ stands for Company. According to the plaintiff the business is being run for a very long time and the plaintiff has acquired high reputation and goodwill in the market. In order to build up the business the products of the plaintiff have been extensively advertised and the total amount spent on advertisement in respect of its products under the said trade mark have been Rs. 4 crores from the period April 1986 to March 1989, avers the plaintiff. The plaint discloses that the total sale of the plaintiff's goods from April 1986 to March 1989 was Rs. 60 crores which included the sale of channels also.
M/s. Ispat Udyog, defendant No. 2 based in Khanna, District Ludhiana (Punjab) is a partnership concern consisting of defendants 3 to 5. The further case of the plaintiff is that defendants 2 to 5 are using trade mark “TISCO” and “FISCO” in relation to their channels with a view to cash on its reputation in violation of plaintiff's trade mark TISCO and to confuse and deceive the consumers so as to pass off their channels as those of the plaintiff. The plaintiff avers that in Delhi the sales of Channels manufactured by defendant No. 2 are being effected through M/s. Mahavir Steels, defendant No. 1. The plaintiff maintains that in mark “FISCO” the letter ‘F’ is nothing but a distorted ‘T’ meant to cause deception and confusion to bolster up sales. On discovery of aforesaid alleged acts of infringement and passing off on the part of the defendants, the plaintiff has filed the suit in question praying, inter alia, that the defendants be restrained by means of a permanent injunction from using trade mark “TISCO” and “FISCO” in relation to channels or any other mark similar to the trade mark “TISCO” of the plaintiff. The plaintiff also seeks a permanent injunction restraining the said defendants from passing off their goods as those of the plaintiff.
In the written statement filed by defendant No. 1 it is denied that the said defendant was selling any channels except those manufactured by the plaintiff-company. Defendants 2 to 5 in their written statement have taken up number of pleas to counter the claim of the plaintiff. According to the said defendants the court has no jurisdiction to entertain the suit as the defendants have neither sold nor offered for sale the channels within the jurisdiction of this court. It is averred that the mark of the plaintiff is common to trade and number of firms/companies are using the trade mark ending with ‘ISCO’ in respect of channels and other items like Joists, Girders etc. It is also denied that the plaintiff has acquired any goodwill in respect of its trade mark ‘TISCO’. According to the defendants the trade name ‘FISCO’ is totally different to the mark of the plaintiff. It is categorically stated in the written statement that the defendants have never manufactured its goods under the trade mark ‘TISCO‘ or are using alphabet “F” in the trade name ‘FISCO‘ in a distorted manner so as to look like “T”.
By order dated August 8, 1990 the court granted an ex parte injunction restraining the defendants from selling their goods under the trade mark “TISCO” or “FISCO” or any other mark which may cause deception or confusion in the minds of the public that the goods of the defendants are those of the plaintiff whose trade mark is “TISCO”.
The matter has now come up for confirmation/vacation of the said stay order. I have heard the learned counsel for the parties at length. Learned counsel for the plaintiff and defendants 2 to 5 have also filed written submissions to supplement their oral arguments.
At the outset I would like to point out that more often than not the parties even at the interloctory stage address arguments on the merits of the case. This case is no exception. Long arguments were addressed in this case too. Parties did not leave it at that but also filed written arguments. This practice consumes considerable amount of court's time as it is required to hear the same arguments all over again after trial of the matter. Whenever elaborate arguments are required to be addressed in matters relating to trade mark at a stage anterior to trial, it is desirable that the parties file affidavits by way of evidence. Most of the trade mark matters can be decided on the basis of the documents, cartons, labels and the products which are filed in/brought before the court. On visual examination the matters can be determined to a large extent. There will be very few cases in which detailed evidence would be required to form an opinion about the question as to whether or not, the offending mark is deceptively similar to the mark of the originator. Now I proceed to examine the respective contentions of the learned counsel for the parties.
Mr. Goel, learned counsel for defendants 2 to 5 submitted that his clients are not located within the territorial jurisdiction of this court and a bare averment in the plaint to the effect that the said defendants are selling goods in Delhi will not be enough to confer jurisdiction on the court. He also invited my attention to the written statement of defendant No. 1 wherein it is stated that the said defendant is not selling any channels except those manufactured by the plaintiff. Learned couasel contended that in view of the fact that defendant No. 1 has denied to have sold any goods of defendants 2 to 5, the suit is not maintainable and is liable to be thrown out at this stage. It was his submission that since the suit will notbe maintainable, the interim order dated August 8, 1990 should be vacated.
On the other hand Mr. Lahiri learned counsel for the plaintiff submitted that the question of territorial jurisdiction will have to be determined after the parties adduce evidence in support of their respective claims and at this stage the case set up in the plaint with regard to the jurisdiction of the court would be enough for the court to assume jurisdiction to entertain the application. He has invited my attention to paras 23 to 30 of the plaint. From the reading of the said paras it is apparent that the plaintiff is claiming that defendant No. 1, who is located in Delhi, was selling the channels manufactured by defendant No. 2 under the trade mark ‘TISCO’ with alphabet “T” distorted. This according to the plaintiff was unravelled through a detective agency which submitted a report to the said effect. Learned counsel for the defendants 2 to 5 wanted me to go into the question of jurisdiction even though it will be a matter to be decided after the framing of an issue to that effect and after the parties are given an opportunity to lead evidence, if any, thereon at the trial of the case. At this stage it will be premature to decide the question one way or the other. In Dharam Pal Satya Pal v. Janta Sales Corporation 41(1990) DLT 612 it was held that the mere averment of the plaintiff in the plaint that the goods were being sold by the defendants in Delhi was enough at initial stage for the court to assume jurisdiction. The question of territorial jurisdiction did not deter the court from considering the application for grant of temporary injunction in the case of passing off action and infringement of trade mark. In this regard the court laid down as follows:
“The plea of the defendant about this court having no territorial jurisdiction cannot non-suit the plaintiff at this stage, for the reason as held in the case of the The Tata Oil Mills Co. Ltd…Plaintiff v. Hansa Chemical Pharmacy…Defendant, ILR (1979) II Delhi 236, the question of territorial jurisdiction should not deter the court from considering the application for temporary injunction and that this is not such a question which wholly takes away jurisdiction of the court to entertain the application. This court also held in the case of Niraj Pvt. Ltd. (Supra) that mere averment of the plaintiff in the plaint that the goods were being sold by the defendant in Delhi was enough at this stage for the court to assume territorial jurisdiction”.
The observations of this court squarely cover the case in hand.
Learned counsel for the defendants placed reliance on the decision of this court in Chandra Bhan Dembla Trading, Delhi v. Bharat Sewing Machine Co. Bikaner AIR 1982 Delhi 230 for urging that no cause of action accrued to the plaintiff within the jurisdiction of this court and therefore stay order dated August 8, 1990 should not be confirmed. In that case the plaintiff and defendant were manufacturing and marketing sewing machines at Delhi and Bikaner respectively, using the same trade mark. It was an admitted case of both the parties that defendant advertised its product in a local newspaper having no circulation outside Bikaner The mere fact that such a newspaper could be obtained by post in Delhi was not considered sufficient to give rise to a cause of action for infringement of trade mark in Delhi, when the defendant never manufactured and marketed the sewing machines there. No deliberate act of the defendant was committed within the jurisdiction of the Delhi Court. It was in these circumstances that the court came to the conclusion that the suit was not maintainable as the cause of action, wholly or partly, did not arise within its territorial jurisdiction. The facts as alleged in the plaint in thentirely different from the facts found by the court in Chander Bhan's case (Supra).Therefore reliance placed by Mr. Goel, learned counsel is wholly misplaced. The next case relied upon by the learned counsel for the defendant is reported as Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. Simla, v. Mohan Meaking Breweries Limited Solan AIR 1981 Punjab & Haryana 117. This was a case where the court framed a preliminary issue for decision with regard to the jurisdiction of the court to try the suit. Parties were given opportunity to lead evidence and only after the evidence was led, the question of jurisdiction was decided. In this case it was held that in a suit for passing off or injunction on account of infringement of trade mark the cause of action partly or wholly can arise within the territorial jurisdiction of a court, if it is proved that the defendant had directly made sale of goods under the impugned trade mark not to an individual consumer but to a distributor, wholesaler or retailer within the territory over which the court exercises jurisdiction and that such a sale of goods was on a commercial scale. The Court found that there was no evidence whatsoever to show that any transaction of sale of goods under the impugned trade mark had taken place at the place where the suit for passing off and injunction was instituted. In the present case the evidence has yet to be led. The question regarding jurisdiction can only be gone into after the evidence of the parties is recorded in the case. Even in the Punjab case the suit was not thrown out at the threshold under Order 7 rule 11 CPC but only after the parlies were given an opportunity to lead evidence. The plaint in the present suit categorically states that defendant No. 1 was selling the channels of defendant No. 2 under the offending trade mark which is deceptively similar to that of the plaintiff. On these averments the court must assume jurisdiction and proceed with the suit to determine the question relating to the confirmation/vacation of the slay order at this stage.
Reliance was then placed by the learned counsel for the defendants on a judgment of the Lahore High Court in Firm Bhagwan Das Ramji Lal and another v. Watkins Mayor & Co., AIR (34) 1947 Lahore 289 which is also of no avail to the defendants. That was not a matter in which question of confirmation or vacation of an interim injunction was involved. It was again a case where the question of jurisdiction was considered by the court after the parties had led evidence in the matter. It was held that the suit was rightly instituted at Jullundur as it was proved that the defendants were respoasible for sending out goods to that District which were liable to deceive intending purchasers into believing that they were goods manufactured by the plaintiffs. It was also laid down that in a case of passing off it would not be sufficient if such goods are supplied by the defendants to individual purchasers for use, as in such a case, the probability of any members of the public being deceived would be slight. It was further held that it is necessary to show that the supply is made on a commcerical scale to persons who are likely to offer goods for sale. These were matters which involved evidence.
In the light of the above discussion, I am of the confirmed view that the court can assume jurisdiction on the basis of facts stated in the plaint and proceed with the matter and consider the question of confirmation or vacation of an interlocutory injunction.
The next question is whether the defendants should be allowed to use trade mark ‘FISCO’ at this stage in relation to channels which are being manufactured by it.
‘TISCO’ and ‘FISCO’ are, prima facie, too close phonetically. The plaintiff has been carrying on its business under the trade name ‘TISCO’ for a period of 80 years. The trade mark is registered in favour of the plaintiff. It is the owner and proprietor of the said trade mark. The defendants' trade name is deceptively similar to the plaintiffs trade mark. Learned counsel for the defendants, however, submitted that the trade mark of the plaintiff is different from the trade mark of the defendants. He submitted that the most important letter in the mark employed by the defendants is “F” which distinguishes the trade mark of the defendants from that of the plaintiff. I am afraid I can not accept the submission of the learned counsel for the defendants. As is self evident, there is a very little difference between the trade marks ‘FISCO’ and ‘TISCO’. In a dispute like the present one although the court is primarily concerned with the rights and obligations of the parties before it nevertheless the court is also required to protect the interests of the nameless and faceless consumers. The court has to view the affect of a trade mark on the buyer. The purchaser can be easily misled by phonetic similarity of trade marks. Aping of Trade mark cannot be allowed as it confuses and deceives the consumer. It, prima facie, seems to me that defendants 2 to 5 by use of the trade name FISCO have infringed the registered trade mark of the plaintiff. Even a literate purchaser can be taken in by the offending trade mark and can be led to believe that he is buying the product of the plaintiff when actually he would be purchasing the product of the defendants. There is also no denying that large number of people in our country are illiterate who can be the victims of imitation. Fake easily passes as real. Learned counsel for the defendants failed to give any explanation as to why the defendants were using the suffix ‘ISCO’ with letter “F”. On the other hand in the plaint it has been explained as to why the plaintiff was using ‘TISCO’ as its trade mark. A look at the name of the defendant No. 2, which is Ispat Udyog shows that it bears no similarity, proximity, affinity and resemblance with the trade name of its product. In these circumstances can it be a honest use of the trade mark FISCO by defendants? Can it be said that there is an innocent or accidental resemblance between the trade mark ot the defendant No. 2 with that of the plaintiff and the former has not deceptively copied the trade mark of the latter in its essential features, namely, ‘ISCO’. Defendants have given no explanation on these questions. Their pleadings say nothing except citing the example of few others who are also similarly using trade names having suffix ‘TSCO’ in conjunction with one letter prefix in connection with their goods. An imitation remains an imitation whether it is done by one or by many. It acquires no legitimacy. A wrong is not righted by the following it musters. Infringement of trade mark by a trader cannot be justified on the ground that there are others like him who are doing the same. There is a growing tendency to copy the trade marks to cash upon some one else's business reputation. The pirators of trade marks are like parasites clinging to others for their growth. Imitators of trade marks have the sole object of diverting the business of others. This tendency must be curbed in the interest of the trade and the consumers.
The first letter of the trade marks of the plaintiff and the defendants are no doubt different but the remaining letters are common in the two marks. There is every likelihood of “T” being mispronounced as a “F” or the same being made to appear as “T”. In Essco Sanitations, Delhi v. Mascot Industries (India), Delhi, AIR 1982 Delhi 308 the offending trade mark “OSSO” of the judgment debtors was held by this court to be deceptively similar to the registered trade mark “ESSCO” of the decree-holder in relation to brass cocks.
The Supreme Court in Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SC 1649 held that the word “Ruston” and the word “Rustam” bear deceptively close resemblance to each other and the use of the word “Rustam” by the defendant as its mark in regard to its product constituted an infringement of the plaintiff's trade mark “Ruston”. In Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 S.C 449 their Lordships of the Supreme Court were of the view that marks “Amritdhara” and “Lakshmandhara” were deceptively similar and would confuse persons of the class who generally purchase such preparations.
In K.R Chinna Krishna Chettiar v. Sri Ambala & Co. another AIR 1970 S.C 146 the respondents were the proprietors of trade mark “Sri Ambal” and also proprietors consisting of a label containing a device of a goddess Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend “Sri Ambal parimala snuff at the top of the label. The appellant sought registration of a mark consisting of a label containing three panels. The first and the third panels contained in Tamil, Devanagri, Telgu and Kannada the equivalents of the words “Sri Andal Madras Snuff. The centre panel had the picture of goddess Sri Andal and the legend “Sri Andal”. The Registrar of Trade Marks was of the opinion that the sound of the word “Ambal” does not nearly resemble the sound of the word “Andal”, inspite of certain letters common to both the marks. He allowed the registration as according to Him there was no likely cause of confusion or deception among the users of the snuff, in case both the marks “Ambal” and “Andal” were used by the respondent and the appellant respectively. The High Court of Madras to which an appeal was caried by the respondent set aside the order of the Registrar on the ground that the words “Ambal” and “Andal” have such great phonetic similarity that they were undistinguishable having the same sound and pronounciation. Before the Supreme Court the questions in issue were whether, the appellant's mark was used in a normal and fair manner in connection with the snuff and if fair and normal user was assumed of the existing registered marks will there be such a likelihood of deception that the mark ought not to be allowed to be registered. In this regard the Supreme Court held as follows:
“There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danager of confusion between the two marks.
There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of long standing. There lies no visual resemblance between the two marks, but occular comparison is not always the decisive test. The resemblance between the two marks mast be considered with reference to the ear as well as the eye. There is a close affinity of sound between “Ambal” and “Andal”.
In the case of Coca Cola Co. of Canada v. Pepsi Cola Co, of Canada Ltd. 1942-1950 RPC 127, it was found that Cola was in common use in Canada for naming the beverages. The distinguishing feature of the mark cocacola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and not cola. It was not likely that any one would confuse the word Pepsi with coca. In the present case the word “Sri” may be regarded as in common use. The distinguishing feature of the respondent's mark is “Ambal” while that of the appellant's mark is “Andal” The two words are deceptively similar in sound.”
Learned counsel for the defendants 2 to 5 contended that suffix “ISCO” is commonly used in the trade and therefore the same has become juris publics. He has listed number of firms/companies which are using phonetically similar trade names to the trade marks ‘TISCO’. It is the contention of the learned counsel that in view of wide use of suffix “ISCO” by traders, the defendants cannot be stopped from using ‘FISCO’ as their trade mark. It is not the case of the defendant that the suffix “ISCO” is descriptive in nature. It is well settled that if the word is descriptive in nature, it can be used by the traders/manufacturers of similar goods. The word should be both descriptive and common to trade. In the case of The Coca Cola Co. of Canada, LD. v. Pepsi Cola Co. of Canada, LD, 1942 (59) R.P.C 127 the question was whether the word “Cola” was descriptive and commonly adopted in naming of beverages. It was pleaded and contended that “Cola” was descriptive and commonly used by the manufacturer of non-alcoholic drinks containing a particular nut. In the present case there is no allegation that the term “ISCO” is descriptive in nature. The court cannot curve out a new case for a party. It is a party who has to specifically plead a particular point so that his opponent has an opportunity to meet the same. Unlike The Coca Cola Co. case (Supra) where it was alleged that the “Cola” was derived from a nut, in the instant case no help is sought from the elements/metals from which the channels are manufactured. It is not even alleged in the written statement that the suffix in question was well know and used to denote a product of a particular material. Even if the defendants had alleged that the letters “IS” indicated the constitutents from which they manufactured their product, there could be no explanation for the two last letters of their trade name, namely, “CO”. “CO” is no part of the firm name of the defendants. In ‘TISCO’ the “CO” stands for company as explained in the plaint.
Mr. Goel, learned counsel for the defendants has relied on a decision of the Supreme Court in F. Hofflmann -LA Roce and Co. Ltdf. v. Geoffrey Manners and Co. Private Ltd. AIR 1970 SC 2062 for the proposition that where two words have a common suffix, the uncommon prefix portion of the words is a natural and necessary mark of distinction. In this case the Supreme Court was required to decide whether the word “DROPOVIT’ was deceptively similar to the word “PROTOVIT’. The affidavits of the appellants in that case clearly averred that the last three letters namely “VIT” were being used to denote Vitamin preparations. The Supreme Court held that it was apparent that the terminology “VIT” in the two marks was both descriptive and common to the trade. In the present case as already pointed Out, “ISCO” is not alleged to be a descriptive word. If the defendants had made out such a case only then the principles of law laid down by their Lordships of the Supreme Court could have any application to the present case. This decision also does not come to the rescue of the defendants. The defendants have in their written submissions referred to various other decisions, namely, Fitchetts Ld v. Loubet & Co. Ld. (1919) 36 RPC 296, In the matter of an application by FOX & Co. (1920) 37 RPC 37, In the matter of the application by R.K Dundas Ld. (1955) 72 RPC 151 and In the matter of the Trade Mark “Herogern” of the British Drug Houses Ltd” (1913) 30 RPC 73 for drawing support. These judgments also do not help the defendants as these cases were decided in view of their peculiar and special facts.
In case of Fitchetts Ld. (Supra) the position was like this. The plaintiff was the owners of trade mark “LITO” and “Y-TO”. The defendants claimed registration of trade mark “RITO” in relation to their goods the question was whether registration of trade mark “LITO” and “Y-TO” in favour of the plaintiff should prevent the registration of another word “RITO”. In this case it was found as a matter of fact that the business of the plaintiff was small and there was nothing to show that “Y-TO” had acquired anything like a general meaning as signifying their goods. The court did not find that the goods under the said trade name were being connected with the goods of the plaintiff. The total sales of the goods of the plaintiff under the trade marks was under 1500L. Applying the tests both of eyes and ears the court came to the conclusion that there was no real probability of any ordinary and reasonable purchasers being misled by the use of the word “RITO” by the defendants into purchasing the goods of the defendant as goods of the plaintiff. In these circumstances it was held that registration of the trade names “LITO” and “Y-TO” should not prevent the registration of another word ending in “ITO”.The present case cannot be compared with the Fitchetts Ltd.‘s case as the facts are entirely different.
In Fox & Co. (Supra) the appellant was selling goods under the trade name “Filtrate” and was opposing the registration of trade mark “Motrate” in favour of the defendant in regard to the goods of the latter. Rejecting the appeal the High Court held that the first part of the words were sufficiently different to distinguish the mark. In this case suffix “rate” was preceded with prefixes consisting of 2 to 3 letters. The distinction was between prefixes “Mot” and “FILT” and by no stretch of imagination the said prefixes could cause confusion in the minds of the buyers. In the instant case trade names of both the parties consist of five letters. Four letters are common, only one letter in each of the trade names is different. The common suffix “ISCO” does not form any word in the English language. It is not even alleged to be an abbreviation of a common word in the English language. Besides “ISCO” does not form a meaningful quinqueliteral word with a combination of any letter. It is a coined word. In the cases referred by the defendants trade names consisted of common suffixes forming disyllabic words in association with prefixes of two or three letters. In all those cases it was found that there was no likelihood of confusion or deception having regard to the prefixes which sufficiently distinguished the marks. Letter “F” in trade name “FISCO” can be easily slurred causing confusion and deception in the minds of the one letter in each of the trade names is different. The common suffix “ISCO” does not form any word in the English language. It is not even alleged to be an abbreviation of a common word in the English language. Besides “ISCO” does not form a meaningful quinqueliteral word with a combination of any letter. It is a coined word. In the cases referred by the defendants trade names consisted of common suffixes forming disyllabic words in association with prefixes of two or three letters. In all those cases it was found that there was no likelihood of confusion or deception having regard to the prefixes which sufficiently distinguished the marks. Letter “F” in trade name “FISCO” can be easily slurred causing confusion and deception in the minds of the purchasers. This was not the case in the decisions cited by the learned counsel for the defendants.
Having regard to the above, I am of the view that the interim injunction dated August 8, 1990 needs to be confirmed. I accordingly confirm the same. The above decision is tentative in nature and it will be open to the parties to urge all the points at the final hearing of the case after the parties adduce evidence in support of their respective stands.
IA No. 6215 of 1990 is allowed while IA No. 8804 of 1990 is dismissed.