M. Jagannadha Rao, C.J— This is an appeal by the defendants, Chattar Extractions Ltd and its Managing Director against the order of the learned Single Judge in I.A 6708/94 in Suit 1208/94. The order was passed under Order 39, Rule 1 CPC and a temporary injunction was granted in favour of the respondent-plaintiff, directing the appellant, not to manufacture, sell nor offer for sale nor advertise directly or indirectly, nor deal with oil under the trade mark ‘Pakwan’ or any other trade mark which is identical or deceptively similar with the plaintiffs trade mark.
2. The learned Single Judge, after referring to the contentions, held that prima facie plaintiff was using the trade mark ‘Pakwan’ for its refined oil manufacture from 1984, that the plaintiff had set out its sales figures and expenses on advertisements—publicity for the years 1983-1984 to 1991-1992, and the figures were substantial. Invoices and letters from the customers have also been filed by the plaintiff showing its having marketed oil in the trade name ‘Pakwan’ for several years. Even the prospectus issued by plaintiff,—while going into capital market—is of October/November, 1985. The plaintiff's products are micro-refined Soyabean oil, Soymeal, Soya flour, Soya foods etc. The learned Single Judge rejected the contention of the appellant that the documents filed by the plaintiff showed a limited set of customers—such as Hotels/Government Departments where oil might have been supplied without trade name and also rejected the contention that the plaintiff has not produced evidence of retail sales. For this purpose, learned Single Judge relied upon the large number of invoices produced by the plaintiff which showed ‘large scale’ supplies under the name “Pakwan”. This was apart from marketing in the general market. The learned Judge observed that the letters from some brokers/businessmen that they had not heard of plaintiff marketing “Pakwan” products, was of no evidentiary value. Learned Judge also observed that the fact that plaintiff applied for registration of trade mark at some point and withdrew the same was of no effect. The plaintiff has produced the appellant's prospectus for public issue, of March/April, 1994 and page 11 thereof showed that appellant was dealing in non-edible oils and also in refined oil under the trade name “Savera” and “Pakwan” in North India. Appellant applied for registration in 1993. These documents showed that appellant came into the market in 1993, while plaintiff was there from 1984.
3. These facts, in our view, are clear evidence of the prior user by the plaintiff and its business, both retail and to departments/hotels from 1984 and that appellant came into the market only in 1993 and is using the same name “Pakwan” for its oils. We agree that this material relied upon by the learned Single Judge prima facie satisfies the requirements of law in a “passing-off action by a prior user of a trade mark to obtain temporary injunction.
4. Learned counsel for the appellant has relied upon Judgment of the Supreme Court in Durga Dutt Sharma v. N.P Laboratories (A.I.R 1965 S.C 980). In para 28 thereof the difference between ‘infringement’ and ‘passing-off action “is stated as follows:—
“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 marks 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. 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 differences, 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.”
5. The Supreme Court case was one where the respondent was a registered proprietor of the trade mark and the appellant's claim for registration was refused and the respondent filed the suit on the basis of infringement and the Supreme Court upheld the respondent's claim. In the present case there is no “added matter”. The appellant-defendant is using the identical word “Pakwan” for its oil products. Therefore, the facts of the case satisfy the requirements of the above Judgment cited by the appellant.
6. In the present case before us, the appellant and the respondent-plaintiff do not have a registration in respect of the word “Pakwan” and this is a passing-off action at common law. The respondent has to prove not only similarity but also that the defendant is deceitfully passing-ff his goods as that of plaintiff or there is bound to be confusion in the minds of the customers and a risk of damage.
7. The Supreme Court has pointed out in Wander Ltd v. Antox India (P) Ltd (1990) Supple. S.C.C 727) that passing-off is 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 person has established for himself in a particular trade or business. The action is regarded as an action in deceit. The tort of passing-off includes a misrepresentation made by a trader to his propsective customers calculated to injure, as a reasonablke foreseeable consequence, the business or good will of the other trader”.
8. We had occasion to review the law relating to “passing-off in a recent decision in N.R Dongre & Ors. v. Whirlpool Corp. & Anr) 262/94) dated 21.4.1995 That was a case where the plaintiff was using the trade mark from 1941 (and registered a trade mark but was not renewed after 1977) and the defendant applied for registration and the plaintiff opposed the same (and the matter is pending in an appeal by the plaintiff) and plaintiff, who was the prior user, filed the suit for injunction on the ground of passing-off. It was held that a prior user has rights even over a later registered user and the temporary injunction was confirmed. In that context, a review of the law relating to “passing-off was made by one of us (Anil Dev Singh, J). The rights of a prior user were referred to as stated in Century Traders v. Roshan Lal Duggar & Co (AIR 1978 Delhi 250); Consolidated Foods Corpn. v. Brandon & Co. (AIR 1965 Bombay 35); L.D Malhotra v. Ropi Industries (ILR 1976 (1) Delhi 278), Delco Engineering Works v. General Motors Corp (ILR 1974 Punjab & Haryana 502). It was observed:
“The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretension that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark…..”
9. The action for injunction on the ground of passing off is part of the common law right in tort. It is also well settled that in a passing-off action based on the use of a mark, the plaintiff should show that the disputed mark has become by user distinctive of the plaintiff's goods so that the user in relation to any of the goods of the kind dealt in by the plaintiff of that mark will be understood by the trade and the public as indicating the plaintiff's goods. It is not necessary to prove that all persons or substantially all persons in the market are aware of his mark. However, the plaintiff must show that, to a substantial proportion of persons who are purchasers or probable purchasers of goods of the kind in question,- the name indicates the goods of the plaintiff; and it is not necessary that all such purchasers, must entertain that view. Where the defendant's use complained of is limited to a particular area, it is not necessary for the plaintiff to prove that his mark is recognised by everyone in the area, it is sufficient if there is user in the area of the mark exclusively in connection with the plaintiff's business. The party alleging passing-off, should prove in the first instance that any name which he claims as his trade name has been so exclusively used in connection with his manufacture, or with the goods which he sells, that his goods have come to be known in the market by that name, that any one using that name would intend to refer to his goods; and that anyone to whom the name was used would understand that his goods were referred to. (Trade Marks and Passing Off by K. Narayanan, 4th Ed, Para 25.40). Plaintiff must show that at the date of the user by the defendant of which he comnplains, he has a proprietory right in the goodwill of the name, or, in other words, the use by the defendant of the name is calculated to deceive. The adoption of the name by the defendant is to bring about a tangible risk of damage whether in the form of diversion or customers or confusion of the plaintiff's business and defendant's business or both. Confusion in itself is held to import a sufficient risk or damage to make an action to be maintained. (Ibid, para 25.42).
10. Having regard to the prima facie facts mentioned in the impugned order, -which we have summarised earlier,—we do not think that the learned Single Judge has committed any error which requires to be corrected in appeal pending suit.
11. The decision of the Supreme Court in Durga Dutt's case (supra) relied on by the appellant and the passage therein which we have already quoted, points out the difference between an action for infringement and one for passing-off. We do not see how the impugned order can be said to be not in accord with it for here the appellant has no “added matter” and is using the same word “Pakwan”. The learned Single Judge has referred to the prior user and the goodwill of the plaintiff in the market and has not merely relied upon a comparison of the names. There is not much for comparison of the names as such because the appellant has been using, since 1993, the identical name “Pakwan” which was being used by the plaintiff since 1984. We shall refer to other cases cited for the appellant.
12. Judgment of the Delhi High Court in J & P Coats Ltd v. Chadha & Co., AIR 1975 Delhi 130 follows the Supreme Court case, and the plaintiff there was a registered owner of a trade mark suing for infringement. On facts, it was held that there was no infringement having regard to the shape, get up and general look of the containers. The dispute there was in regard to the similarity of various aspects of the boxes, 13 in number, in which the defendant was selling his goods. That case, therefore, has no relevance. The decision of the Andhra Pradesh High Court in Teji Singh v. Shanti Devi (AIR 1974 A.P 274) was a common law action for “passing off, and the parties were doing dry-cleaning business. While allowing the defendant's appeal, the Court held that the user of the words “one day”, even according to plaintiff, was only to notify the public as to the time of delivery, that the words were words of common use and were not distinctive. The case is distinguishable. Khemraj v. Garg & Co. (AIR 1975 Delhi 130) relied on by the appellant is also distinguishable. That was a plaintiff's appeal which Was allowed and Was a “passing-off action” based upon prior user of the name of a panchang by the plaintiff which was there for 80 years with a distinctive title, images of Gods etc. The one published by the defendant was exactly similar, except in one aspect. Hence it was held to be deceptive. This case in fact goes against the appellant.
13. A contention was raised that “Pakwan” has no distinctive meaning and is a word of common use and hence there was no infringement. Reference was made to Coca Cola case in Coca Cola v. Pepsi Cola (1942 (1) All E.R 615 (PC). There the plaintiffs, Coca Cola were owners of a trade mark Coca Cola and were marketing from 1930 and respondents were marketing Pepsi Cola from 1934. The contention of Coca Cola that the word “Cola” was distinctive was rejected. It was proved that there were 22 registered marks which included the word Cola or Kola as part of a compound name and hence the use of the word “Cola” by the respondent was held not to be an infringement.
14. But here, the word “Pakwan”, prima facie does not mean refined oil. The learned Single Judge notices that the Dictionary meaning of “Pakwan” is cooked food, bread-cake, pastry or sweet fried in Ghee e.g Puri, Kauchauri (Oxford Hindi-English Dictionary, 1993, Ed, p. 588). Obviously, it does not connote ‘refined oil’. That would prima facie mean that “Pakwan” is a distinctive name adopted by the plaintiff and it could not be adopted by another oil manufacturer.
15. There are, therefore, no merits in this appeal. However, it is made clear that what we have stated here or the learned Single Judge in the impugned order, will not be treated as a final view of the matter and in the suit, the Court will decide the issues on such material as may be produced therein, without being influenced by anything said in this appeal or in the impugned order. The F.A.O is dismissed.