This is an application by the plaintiff for issue of an ad interim injunction under Order 39 Rules 1 and 2 of the CPC restraining the defendant, their servants and agents from manufacturing, selling, offering for sale, advertising or displaying, directly or indirectly, their toys or stuffed toys under the trade mark ‘CUDDLES’ or any other trade mark identical with or deceptively similar to the aforementioned trade mark of the plaintiff.

2. Brief facts which led to the present application are that the plaintiff is a firm and Smt. Vinay Chawla is the sole proprietress of the said firm. The said firm deals in toys under the trade mark ‘CUDDLES’. The plaintiff has been using the said trade mark since long i.e 1st January, 1987. The goods of the plaintiff bearing the said trade mark are in huge demand in the markets. The plaintiff with a view to acquiring the statutory rights in the said trade mark moved an application bearing No. 505426 before the Trade Mark registry, New Delhi on February 15, 1989 for all types of toys. The said application has been accepted for registration by the Trade Mark Registry, Bombay vide Order No. U-8/2759, dated July 30, 1991 and as such, a registration certificate is to be issued shortly in favour of the plaintiff. Besides the above the plaintiff also claims to be the proprietor of the said trade mark on account of its prior adoption and subsequent user. The said trade mark alluded to above has already become distinctive and is associated with the aforesaid goods belonging to the plaintiff on account of its long, continuous, extensive and exclusive user. The goods belonging to the plaintiff bearing the said trade mark are very much in demand on account of their standard quality and precision. The plaintiff has also advertised the said trade mark through the distribution of trade literature and by displaying the same on packing material of the aforementioned products. The plaintiff has as such spent a substantial sum of money on the publicity of the said trade mark. The plaintiff has been using the said trade mark all alone without any interruption or interference from any quarter, whatsoever. The defendant (hereinafter referred to as respondent) here also a dealer in stuffed toys under the trade mark ‘CUDDLES’. The said fact came to the notice of the plaintiff through an advertisement in a magazine known as ‘Chandamama’ of May, 1991. The defendant is not the proprietor of the trade mark ‘CUDDLES’ in “respect of stuffed toys and toys out of greed with a view to taking advantage of the reputation of the plaintiff (hereinafter referred to as the applicant) to mislead the public and to practice deception and create confusion in the minds and to pass off their spurious goods as that of the applicant. The resemblance in between the two trade marks i.e the one belonging to the applicant and the other belonging to the respondent is so close that it could not have occurred except by deliberate imitation. The said trade mark is bound to cause confusion and deception in the normal course of business. The respondent are thus guilty of passing off their goods and business as that of the applicant. The respondent thus must give up the use of the trade mark as the applicant is suffering huge losses, both in business and in reputation. Thus, the prima facie case is in favour of the applicant, the balance of convenience is also in her favour. The applicant is likely to suffer irreparable loss and injury in case the injunction is not issued in favour of the applicant restraining the respondent from passing of their goods under the trade mark ‘CUDDLES’ belonging to the applicant. Hence the present application. The application is supported by an affidavit.

3. The respondent have resisted and oppose the above application through an application under Order 39 Rule 4, CPC, being I.A No. 12208/91, inter alia, on the following grounds : that the respondent came into being on May 28, 1986 with the main object of carrying on business in the manufacture and sale of toys, including stuffed toys. The respondent have been manufacturing and selling stuffed toys under the trade mark ‘CUDDLES’ w.e.f April, 1990. The stuffed toys manufactured and marketed under the trade mark ‘CUDDLES’ by the respondent have been extensively advertised in public newspapers and magazines with extensive circulation all over the country, such as The Hindu, Chandamama, Women's Era, Anandmela, the Indian Express. The list all the members of All India Toys Manufacturers' Association was published in the Toys Show organised by the All India Toys Manufacturers Association. The name of the respondent is very much mentioned in the said list whereas the name of the applicant is not even classified as a toy manufacturer as they have never been toy manufacturers. The stuffed toys manufacturer by the respondent under the trade mark ‘CUDDLES’ have been extensively sold in different markets in India, including Delhi, since April, 1990. The toys manufacturer by the respondent are sold in Delhi markets under the trade mark ‘CUDDLES’ through M/s. United Agencies, 33-C, Swadeshi Market, Sadar Bazar, Delhi. The applicant is only a manufacturer of school bags under the trade mark ‘PIGGY’. The applicant has never manufactured, sold or dealt with toys under the trade mark ‘CUDDLES’. Even if it is assumed that the applicant has used the trade mark ‘CUDDLES’, in that eventuality the extent and duration of the use is deminimus and not adequate to make the mark distinctive of the goods of the applicant. There is no document on the record to show and prove any deception or confusion in relation to the goods manufactured by the respondent. The respondent have been only advertising and selling their goods. i.e toys under the trade mark ‘CUDDLES’ since April, 1990 while the present suit has been filed after nine months when the respondent have completely established themselves in the market. The application is false and frivolous. It is thus liable to be dismissed.

4. It is manifest from the facts canvassed above that the applicant has claimed, an ad interim injunction in the instant case on the ground that the respondent are passing off and selling their goods in the market under the trade mark ‘CUDDLES’ of which she is the proprietress. Section 27(2) of the Trade and Merchandise Marks Act, 1958 deals with an action for passing off one's goods as the goods of another person. Since we are concerned with the construction of the said Section it would be just and proper to examine the provisions of the said Section before proceeding any further in the matter, it is in the following words :—

“27(1). No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to effect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”

5. The above Section 27(2) came up for interpretation before different High Courts, in our own country and in Courts in England, in a large number of cases. It was observed by Wyon Parry J. in Mc Culloch v. May (Produce Distributors) Ltd., (1948) 65 R.P.C 58 at page 64.” It is of the essence of an action for passing off to show, first, that there has been an invasion by the defendant of a proprietary right of the plaintiff, in respect of which the plaintiff is entitled to protection, and, secondly, that such invasion has resulted in damage or that it created a real and tangible risk that damage will ensue”.

6. Lord Cozens-Hardy opined in J.B Williams Co. v. H. Bronnley and Co. Ltd., (1909) 26 R.P.C 765 at page 771 :

“What is it necessary for a trader who is plaintiff in a passing off action to establish? It seems to me that in the first place he must, in order to succeed, establish that he has selected a peculiar - a novel - design as a distinguishing feature of his goods, and that his goods are known in the market, and have acquired a reputation in the market, by reason of that distinguish feature, and that unless he establishes that, the very foundation of his case fails.”

7.The aforesaid Section was also the subject-matter of a suit in a case before the Bombay High Court as reported in Consolidated Food Corporation v. Brandon and Co. Pvt. Ltd., AIR 1965 Bom 35 (Para 28). It was observed by Shah J., at page 38 in the said case. “It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sale. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of mark under circumstances as showing an intention to adopt and use it as a trade mark is the test rather than the extent or duration of the use”. It was further observed in Para 27 of the case alluded to above, “The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration”. It is crystal clear from the authorities alluded to above that an applicant for an action on the basis of the passing off must prove the following :—

(i) That the trade mark which he has been using on the goods manufactured by him has assumed a vendible character.

(ii) He has been using the said trade mark from before it was used by the defendant.

(iii) His goods are identified and recognised by the use of the said trade mark and in case the defendant is allowed to use the said trade mark or a trade mark which is deceptively similar to the said trade mark it is likely to cause irreparable loss and damage to him.

(iv) There is every likelihood that the impugned trade marks will invade and offend the property rights of the applicant.

8. With the above background let us now see as to how far the applicant in the instant case has succeeded in proving the above laid down ingredients. The case of the applicant is that he has been using the impugned trade mark ‘CUDDLES’ since January 1, 1987 (vide para 5 of the application). Furthermore, in order to acquire the statutory rights in the said trade mark an application bearing No. 505426 was moved before the Trade Mark Registry, New Delhi, under the Trade and Merchandise Marks Act, 1958 on February 15, 1989 (vide para 6 of the application). It has thus been urged for and on behalf of the applicant by the learned counsel Mr. Bansal that the applicant has become the proprietor of the said trade mark on the basis of its prior user in time since she has been using it since January 1, 1987. The respondent, on the other hand, claim the user of the said trade mark since April, 1990 (vide para 3 of the application under Order 39 Rule 4 CPC). It thus can be safely concluded from above that the applicant has prima facie proved that she has been using the said trade mark from before it was used by the respondent.

9. Learned counsel Mr. Praveen Anand has vehemently contended that the alleged prior user by the applicant of the impugned trade mark does not confer on her any proprietary right inasmuch as the said user is intermittent, casual and deminimus. It is of thus no avail to the applicant. It does not lie in the mouth of the applicant, on the basis of the said intermittent user to allege that she is the proprietress of the said trade mark. Thus her application for the issue of an ad interim injunction is liable to be flung away on this short ground alone. The contention of the learned counsel, I feel, does not hold much water and it can be brushed aside without any difficulty.

10. The applicant in order to show and prove that the said user by them of the trade mark ‘CUDDLES’ on their articles is neither casual nor intermittent but it was used by them since the year 1987 on all the toys manufactured by the applicant. The fact that the applicant was very much serious and sincere to display and sell all her goods under the trade mark ‘CUDDLES’ and to make them distinguishable from the toys manufactured by other manufacturers, is evident from the fact that she applied for the registration of the impugned trade mark to the Trade Mark Registry, New Delhi, as early as on February 15, 1989. The said application No. 505426 has been accepted for registration by the Trade Mark Registry, Bombay, vide order No. U/281 dated July 30, 1991. It is thus manifest from above that the applicant is very much serious and has got all the intention in the world to use the said trade mark on all the goods manufactured by her, for the present and the future.

11. The applicant has placed on record 40 photocopies of the invoices which all relate to the year 1989, in order to show and prove that she has been using the impugned trade mark while selling her goods. The applicant besides the above has also placed on record certificates issued by certain firms i.e Sehgal Bros., Maya Toys, K.B Stationery, Shiv Jyoti Traders, New Kids and Karti Kag Gift Shop. All of them have certified to the fact that they have been selling toys manufactured by the applicant under the trade mark ‘CUDDLES’. Then there are 9 invoices pertaining to the year 1988. The invoice dated June 14, 1988 shows that stuffed toys were sold under the trade mark ‘CUDDLES’. All the above documents prima facie show that the applicant has been selling her goods in the market under the trade mark ‘CUDDLES’. The said goods under the impugned trade mark have acquired a vendible character and the same are being identified and recognised with the help of the said trade mark.

12. The respondent on the other hand, filed photocopies of the extracts from certain magazines, journals such as Chandamama, Women's Era, Anandmela, Hindu and the Indian Express in order to show and prove that they have extensively advertised their trade mark in the aforesaid newspapers. Besides the above, they have also placed on record certificates issued by as many as ten firms/shops in order to prima facie show and prove that their goods are being widely sold in Delhi Markets and elsewhere under the trade mark ‘CUDDLES’ and they have acquired a very good and wide reputation to my mind, the said documents are of no avail to the respondent inasmuch as they have themselves admitted that they have started using the impugned trade mark w.e.f April, 1990 only. Thus, the user of the applicant of the impugned trade mark is prima facie prior to that of the respondent.

13. We have already observed above that the applicant has been using the said trade mark since January 1, 1987. Her user of the impugned trade mark is much prior to that of the respondent. In the circumstances stated above we are of the view that the applicant has succeeded in proving a prima facie case in her favour on the basis of the prior and consistent user of the impugned trade mark. The balance of convenience is also in favour of the applicant inasmuch as in case the respondent are not restrained from using the impugned trade mark they are likely to invade and offend the proprietary rights of the applicant in the impugned trade mark. There is every possibility in the absence of an injunction order from this Court of a confusion being caused in the mind of the purchasers to take the goods of the applicant as the goods of the respondent and the same is likely to result in irreparable loss and damage to the reputation and goodwill of the applicant which would be difficult to measure in terms of the pecuniary compensation.

14. In the circumstances stated above, the application is allowed. The respondent, their servants and agents are hereby restrained from selling, displaying for sale or advertising their goods or toys under the impugned trademark ‘CUDDLES’ or any other trade mark identical or deceptively similar to the trade mark of the applicant ‘CUDDLES’. The application under Order 39 Rule 4, CPC is hereby dismissed.

Application allowed.