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AMICUS AI
Citation Codes
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citation codes
Case Number
Attorney(S)
  • Mr. A.K Goel, Advocate for Petitioner.
  • Mr. S.K Bansal, Advocate for Respondents.
Judges
  • S.K Mahajan, J.
Acts
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Citation Codes
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citation codes
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Attorney(S)
  • Mr. A.K Goel, Advocate for Petitioner.
  • Mr. S.K Bansal, Advocate for Respondents.
Judges
  • S.K Mahajan, J.
Acts
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Smart Summary

Judgment Summary — S.K. Mahajan, J. (MITASO)

Factual and Procedural Background

The plaintiff claims to be the registered proprietor of the trade mark "MITASO" (Registration No. 404136, registered 11 April 1983) in respect of installations for heating, steam generating, cooking (including LPG gas stoves), geysers, electrical household equipment and related goods. The plaintiff alleges prior adoption and continuous use of the mark since 1982, extensive publicity and substantial sales, and that the mark has acquired a reputation and exclusivity in the trade.

The plaintiff filed a suit seeking an injunction restraining the defendants from manufacturing, selling or otherwise dealing in goods under the trade mark "MITASO" or deceptively similar marks, alleging trade mark infringement, passing off and copyright infringement (counterfeit labels, cartons, dies, etc.). Along with the suit the plaintiff filed an application under Order 39 Rules 1 and 2 for a temporary (interim) injunction. The court's order disposes of that application for interim relief.

According to the materials on record, the plaintiff produced sales bills and newspaper advertisements dating from 1983–1993. The defendants, according to the plaint and evidence, commenced manufacture/marketing of electronic gas lighters under the mark "MITASO" from 1990 (the earliest defendant bill produced is dated 11 December 1990). The plaintiff contends that the defendants' use duplicates the plaintiff's get-up and is calculated to trade on the plaintiff's reputation; the defendants deny infringement and assert bona fide adoption (described as a Japanese style of writing adopted to reflect import of piezo element).

Legal Issues Presented

  1. Whether, on the prima facie material, the defendants' use of the mark "MITASO" on electronic gas lighters constitutes infringement of the plaintiff's registered trade mark and/or passing off.
  2. Whether this Court (Delhi High Court) has territorial jurisdiction to entertain the suit, in light of the defendant's contention that no part of the cause of action arose in Delhi.
  3. Whether the plaintiff is entitled to interim injunctive relief under Order 39 Rules 1 and 2, pending trial.

Arguments of the Parties

Plaintiff's Arguments

  • The plaintiff is the registered proprietor of the trade mark "MITASO" (Regn. No. 404136, 11 April 1983) and was the first adopter and originator of the mark (use since 1982).
  • The mark has acquired a distinct reputation and is associated exclusively with the plaintiff's goods; the plaintiff has significant sales and has extensively advertised the mark (documents from 1983 onward were placed on record).
  • The defendants have recently begun manufacturing and marketing electronic gas lighters under an identical or deceptively similar mark and get-up, thereby infringing the plaintiff's statutory and common-law rights and passing off their goods as the plaintiff's.
  • The defendants have counterfeited labels/cartons and infringed copyright in the get-up; the plaintiff seeks an injunction restraining such use.

Defendants' Arguments

  • The court lacks territorial jurisdiction because no part of the cause of action arose in Delhi and the defendant does not carry on business in Delhi.
  • The plaintiff's registration is alleged to be illegal or irregular and liable to rectification; the artwork, get-up and lettering are common to the trade and not original.
  • The defendant has been using the mark "MITASO" in a Japanese style in relation to electronic gas lighters as its proprietor since 1990, purportedly bona fide to denote goods containing piezo elements imported from Japan; there was no mala fide intention to infringe the plaintiff's rights.
  • The plaintiff allegedly knew of the defendant's use and delayed, so the suit is barred by delay, estoppel, acquiescence, waiver and laches.
  • The plaintiff, it is alleged, is not the original owner of the particular written style and itself copied the writing style; hence the plaintiff cannot claim copyright in the get-up.
  • Because the plaintiff manufactures LPG gas stoves and the defendant manufactures electronic gas lighters (different goods), there is no infringement of the plaintiff's registered trade mark as contended by the plaintiff.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
American Home Products Corporation v. Mac Laboratories Private Limited and Another, AIR 1986 SC 137 Registration of a trade mark confers exclusive rights to use the mark in connection with the goods for which it is registered; the registered proprietor can seek injunction, damages or account of profits for invasion of that right. Used to support the proposition that the plaintiff, as registered owner, is entitled to injunction against the defendants' use of an identical or deceptively similar mark.
M/S. Kumar Electric Works v. Anuj Electronics, 1990 PTC 26 Where plaintiff's electrical/electronic goods are marketed under a mark, the plaintiff's right to restrain the defendant may extend prima facie to cognate classes of goods sold in the same trading channels. Applied to hold that electronic gas lighters are cognate to the plaintiff's goods and that the defendants' use could prima facie be restrained.
Creative Handicrafts v. Sadana Electric Company & Another (IA No. 3344/1988 in Suit No. 1347 of 1988) Support for the view that a registered proprietor's rights can prima facie extend to cognate classes of goods in the same trade channel. Referred to as reinforcing the court's view that the plaintiff's rights extend prima facie to cognate goods (supporting the Kumar Electric Works decision).
The Tata Oil Mills Co. Ltd v. Hansa Chemical Pharmacy, ILR 1979 (2) Delhi 236 Discusses territorial jurisdiction: in the Union Territory of Delhi the High Court is the principal civil court of original jurisdiction (district court) for suits above specified value; suits for copyright infringement should be filed in the court where the plaintiff resides or carries on business. Relied upon in addressing the defendants' jurisdiction objection and to show that the Delhi High Court can be the appropriate forum under Section 62 of the Copyright Act.
Nirex Industries Limited v. Manchanda Footwear, 1984 IPLR 70 Holds that where plaintiffs claim reliefs for injunction for copyright, the court will have jurisdiction under Section 62 of the Copyright Act. Used to support the court's conclusion that inclusion of a copyright cause of action brings the suit within the territorial jurisdiction of this Court.
Glaxo Operations UK Limited and Others v. Samrat Pharmaceuticals, AIR 1984 Delhi 265 A suit for infringement of copyright in the Delhi High Court will be maintainable if the plaintiff carries on business in Delhi. Applied in the jurisdiction analysis concerning the copyright cause of action.
Corn Products Refining Co. v. Shangrila Food Products Ltd, AIR 1960 SC 142 In an action for passing off, a prior user need not prove actual damage at the prima facie stage. Relied upon to hold that the plaintiff, being a prior user and registered owner, need not prove actual damage at this interlocutory stage.
Century Traders v. Roshan Lal Duggar & Co, AIR 1978 Delhi 250 Also supports the principle that in passing off, actual damage need not be proved by a prior user at an interlocutory stage. Referred to for the same purpose as Corn Products — to justify that no proof of actual damage was required at this stage.

Court's Reasoning and Analysis

The court's analysis proceeded on the evidence and established principles cited in the record:

  1. Registration and Prior Use: The court noted the plaintiff's registration of "MITASO" (No. 404136, 11 April 1983) and documentary evidence of sales and advertisements from 1983 onward, establishing prior use by the plaintiff since 1982. The defendants' earliest documentary use was shown from 11 December 1990.
  2. Identity of Get-up / Mark: The court compared the plaintiff's advertisements and the defendants' carton for the electronic gas lighter and found the writing style of "MITASO" to be exactly the same. The court observed that "MITASO" is an invented, uncommon word not found in the dictionary, increasing the weight of exclusivity for the first user.
  3. Legal Effect of Registration: Relying on the principle in American Home Products (as cited), the court treated registration as conferring exclusive statutory rights on the registered proprietor and as entitling the plaintiff to protect that monopoly (injunction, damages, account).
  4. Fraud Allegation Rebutted for Interim Purposes: Although the defendants alleged fraudulent/irregular registration, the court observed that until the register is rectified and the mark removed, the plaintiff retains the monopoly conferred by registration.
  5. Cognate Goods and Passing Off: The court rejected the defendants' submission that electronic gas lighters are not within the scope of protection simply because the plaintiff's registered goods are primarily stoves, geysers and other appliances. The court reasoned that electronic gas lighters are cognate to the plaintiff's goods (used to light LPG burners; cartons depict LPG burners) and sold in overlapping trade channels, making confusion likely. The court relied on precedent (Kumar Electric Works and Creative Handicrafts) to hold that a registered proprietor's prima facie rights extend to cognate classes of goods.
  6. Jurisdiction: The defendants challenged territorial jurisdiction. The court examined the plaintiff's claim of copyright infringement in addition to trade mark infringement and, invoking Section 62 of the Copyright Act and authority (Tata Oil Mills, Nirex, Glaxo), concluded that the High Court of Delhi is competent to entertain the suit (as the District Court for purposes of Section 62) where the plaintiff carries on business or resides; accordingly the objection to jurisdiction was overruled for the purpose of the interim application.
  7. Prima Facie Conclusion and Need for Proof of Damage: The court applied authorities (Corn Products, Century Traders) to state that, given the plaintiff's prior use and registration, there was no requirement at this interlocutory stage to prove actual damage to succeed on the passing off claim prima facie.
  8. Conclusion on Interim Relief: On the combined prima facie findings (registered mark, prior use, identical get-up, cognate nature of goods, likelihood of public deception), the court held that the defendants' use prima facie infringed the plaintiff's statutory right and that passing off was also made out on the material before the court. These findings supported grant of the interim injunction sought under Order 39 Rules 1 and 2.

Holding and Implications

Core Holding (Interim): The court, on a prima facie basis, found that the defendants' use of the mark "MITASO" on electronic gas lighters violated the plaintiff's exclusive statutory right in the registered trade mark and that the defendants were prima facie passing off their goods as those of the plaintiff. The court therefore allowed the plaintiff's interim application and restrained the defendants from using the name "MITASO" on any of their products, including electronic gas lighters.

Implications:

  • Direct effect on the parties: The defendants are restrained by interim injunction from using the mark "MITASO" (or identical/deceptively similar get-up) on their products pending final adjudication; the plaintiff's monopoly in the registered mark remains effective unless and until the register is rectified by appropriate authority or final court order.
  • On broader law: The order is based on established principles about the consequences of registration, extension of prima facie protection to cognate goods, and jurisdiction under Section 62 of the Copyright Act. The judgment does not purport to lay down a new principle of law and expressly states that opinions expressed in the order do not affect the merits of the case.

Note: This summary is strictly confined to the matters articulated in the provided opinion and does not add any information beyond that text.

Show full summary ...

    Mitaso Appliances Ltd v. Mehta Zinabhai Bhimji Bhai.

    S.K Mahajan, J.— The plaintiff claiming itself to be the registered proprietor of the trade mark “MITASO under No.404136 in respect of installations for heating, steam generating, cooking, including LPG gas stoves, geysers and electrical household equipments, fans, hot plates, toasters, etc. and parts and fittings thereof, has filed this suit for an injunction restraining the defendants from manufacturing, selling or otherwise dealing with goods item and all other goods under the trade mark “MITASO” or any other trade mark identical and/or deceptively similar to the plaintiff's trade mark “MITASO”, which may amount to infringement of the aforesaid trade mark No.404136

    2. The case of the plaintiff in short is that it being the proprietor of the registered trade mark “MITASO” and its being first adopter, originator and true owner, is entitled to its exclusive use. It is stated that the plaintiff has given wide publicity to its trade mark “MITASO” and its goods under the aforesaid trade mark connotes and denotes the goods and merchandise of the plaintiff and none else and that its sales are run in several lakhs of rupees. It is further stated that on account of superior quality coupled with advertisement of the goods and due to continuous use of the trade mark “MITASO” since 1982, the said trade mark has acquired unique reputation in public and trade and the goods in the aforesaid trade mark are exclusively associated with the plaintiff. It is also alleged that the defendant has recently started manufacturing electronic gas lighter under the identical and/or deceptively similar trade mark “MITASO” represented in the similar manner as that of the plaintiff and the same is stated to be in clear and flagrant violation of the legal and vested rights of the plaintiff in established trade mark “MITASO” and the trade name MITASO Appliances Limited and is alleged to have deliberately, dishonestly and in malafide intentions adopted the trade mark “MITASO” with similar get up and design only to trade upon the plaintiffs reputation and to gain profits in an illegal manner. The gas lighter is used to light the LPG gas stove and in case the defendant is allowed to sell its products under the name “MITASO” with similar get up, the public at large and the people in the trade are bound to be deceived. It is alleged that the public and the trade will be bonafide believing that the said lighter being marketed by the defendant is a product of the plaintiff and not that of the defendant. It is also alleged that the goods of the defendant as well as that of the plaintiff are of the same nature and/or cognate and/or allied and are being sold at the same counters to the same class of purchasers and confusion and deception is inevitable by the use of the trade mark “MITASO” by the defendant. Defendant has also been alleged to be guilty of passing off inferior and sub-standard goods as that of the plaintiff. The plaintiff has also claimed copyright in the word and trade mark “MITASO” and has sought an injunction against the defendants restraining them from counter-feiting labels, cartons, dies, etc. or infringing the copyright of the plaintiff.

    3. Alongwith the suit an application under Order 39 Rule 1 and 2 for temporary injunction was also filed and by this order I intend to dispose of the said application for an interim relief.

    4. The defendants in the written statement, besides challenging the jurisdiction of this COurt to decide the suit on the ground that no part of cause of action has arisen in Delhi, has also stated that the registration of the trade mark “MITASO” in the name of the plaintiff is not legal and regular and the same is liable to be rectified under the provisions of law. The art work involved in the get up, make up and lettering style is also not stated to be original in character and is otherwise common to the trade. It is also stated that the plaintiff all along knew that the defendant is using the trade mark “MITASO” in relation to electronic gas lighter as its proprietor and the present suit was, therefore, liable to be dismissed on account of delay, estopple, acquiesance, waiver and laches, etc. The lettering style of the word “MITASO” is stated to be the Japanese style of writing and it is denied that the plaintiff is the original owner or proprietor of the said trade mark. It is further stated in the written statement that the defendant is an established manufacturer of electronic gas lighter and is importing important element i.e Piezo from Japan and hence they have adopted and used bonafidely and honestly and without any prejudise to any one, the trade mark “MITASO” in Japanese style in the year 1990 to denote the said goods containing Piezo imported from Japan and there was no other intention on the part of the defendant to adopt and use said trade mark “MITASO”, nor the same is stated to be in violation of the alleged legal or vested rights of the plaintiff in the word “MITASO”. The plaintiff has himself alleged to have copied the written style of the trad mark “MITASO” and it is alleged that the plaintiff cannot have any copyright in the same. It is, therefore, stated that as the defendant is using the trade mark “MITASO” in respect of electronic gas lighter since the year 1990 as its proprietor and the plaintiff being not the registered proprietor of the trade mark “MITASO” in respect of electronic gas lighter, there is no question of either infringment of the trade mark of the plaintiff or passing off the defendant's goods as that of the plaintiff.

    5. The plaintiff has placed on record the copy of the trade mark registration. Word “MITASO” was registered as trade mark No. 404136 on 11th April, 1983. The plaintiff has also placed on record the bills in respect of sale of its products under the trade name “MITASO” for the period 1983 to 1993. Plaintiff has also placed on record the various advertisements appearing in the newspapers First of such newspaper is of 7th June, 1983 and thereafter various advertisements upto the year 1993 published in newspapers have been placed on record. From the documents on record, it is clear that plaintiff is manuf during LPG gas stoves, cooking ranges, electric geyser, etc. under the trade mark “MITASO” right from 1983/1984. Even as per submissions made by the defendant the defendants are manufacturing gas lighters and marketing the same only from the year 1990. First of such bill: which has been placed on record by the defendants is dated 11th December, 1990.

    6. A bare perusal of the advertisements of the products of the plaintiff company which had appeared in the various newspapers right from 1984 to 1993 and the carton of the electronic gas lighter manufactured by the defendants show that there is not the slightest difference between the writing style of the word “MITASO”. The writing style of “MITASO” by the defendants for its electronic gas lighter as well as the writing style of the word “MITASO” for the products of the plaintiff is exactly the same. It is apparent that the word “MITASO” is not a commonly used one and is not to be found in the dictionery. It is also not in dispute that the plaintiff is a prior user of the word “MITASO” and is also its registered proprietor. The word “MITASO” is an invented one and the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to protect his monopoly of the same. The plaintiff have coined the word “MITASO” and being its previous user, it was for the defendant to explain as to how they have adopted the said word “MITASO”. Plaintiff is also the registered owner of the trade mark “MITASO” and being the registered owner, it is entitled by virtue of Section 28 readwith Section 31 of the Trade and Merchandise Marks Act to an injunction restraining the defendants from using the said trade mark or any other deceptively similar mark and goods. The effect of registration of the mark has been explained in the judgment reported as American Home Products Corporation v. Mac Laboratories Private Limited and Another, AIR 1986 SC 137. It was held in the said case that “when a person gets its trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive rights to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using the mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringment in which he can obtain injunction, damages or an account of profits made by other person”.

    7. Though it is stated by the defendants that the plaintiff has obtained registration fraudulently and illegally, however till such time the register maintained under the Trade and Merchandise Marks Act is rectified and the trade mark is removed from the register, the plaintiff will continue to have a monopoly in the said trade mark.

    8. It is the case of the defendants that while the plaintiff is a manufacturer of LPG gas stoves, etc. it cannot file any suit against the defendants who is admittedly manufacturing electronic gas lighter which are not the same goods for which the trade mark has been registered in the name of the plaintiff. In my opinion, there is a falacy in the argument of the defendants. The trade mark “MITASO” is in respect of installations for heating, steam generating, cooking, including LPG gas stoves, geysers and electrical household equipments, fans, hot plates, toasters, etc. The plaintiff is marketing such goods under the trade mark “MITASO”. In my opinion, the plaintiffs right to restrain the defendants from using the trade mark will, prima facie, also extend to cognate classes of goods. Electronic gas lighter is used mainly for purposes of lighting the gas burners. Even the carton which is used by the defendants shows the lighter with the LPG gas burners. It clearly shows that electronic gas lighter is a product used for igniting LPG gas burners. Persons in the trade as well as the consumers can be carried away by the fact that “MITASO” electronic gas lighter which is the product of the defendants is manufactured by the plaintiff company and as such, prima facie, I am of the opinion that the goods of the defendants can be passed off as that of the plaintiff. In a judgment reported as M/S. Kumar Electric Works…Plaintiff; v. Anuj Electronics…Defendant., 1990 PTC 26 where the plaintiff was the registered owner of the trade mark Olympus in respect of electronic plat irons and had filed a suit for injunction against Anuj Electronics who had started manufacturing black and white television sets under the same trade mark Olympus, it was held:—

    “Admittedly the plaintiff was not using the trade mark “OLYMPUS“ in respect of televisions—the goods which the defendant was marketing under this name. However, the fact remains that, prima facie, the plaintiffs electronic and electrical goods namely electric fans, heat convector, air coolers, juicer-blender-grinder, washing machine, cooler pump, cooler fan and sand which toaster were being marketed through the trade mark “OLYMPUS“. Plaintiff's right to restrain the defendant from using the trade mark, prima facie extends to cognate classes of goods. Televisions, which are being sold by the defendant under exactly the same trade mark, prima facie, were in the same trading channel and were cognate goods. This view finds suport from the decision of this Court in Creative Handicrafts v. Sadana Electric Company & Another, IA.No 3344 of 1988 in Suit No. 1347 of 1988 decided on 19.7.1988 In the circumstances, prima facie, second requirement has also been made out.”

    9. I am, therefore, prima facie, of the opinion that not only that the trade mark is being infringed by the defendants but the defendant is also passing off its goods as that of the plaintiff.

    10. An objection has been raised by the defendant that this Court has no territorial jurisdiction, as no part of the cause of action has accrued in Delhi. The contention is that it has not been stated in the plaint that the defendant carries on business in Delhi nor any documentary evidence has been placed on record in support of the contention made in paragraph 16 of the plaint that any part of the cause of action has arisen in Delhi. A bare reading of the plaint shows that besides claiming the relief against the infringement of trade mark and passing off the goods, plaintiff has also claimed that the defendant has copied the design and get up of the trade mark and thereby infringed copyright which vests in the plaintiff exclusively. Under Section 62 of the Copyright Act 1957 every suit or other civil procedings under the Act shall be instituted in the District Courts having jurisdiction and the District Court has been defined as the Court within the local limits of whose jurisdiction, at the time of the institution of the suit or civil proceedings, the person instituting the suit or civil proceedings actually and voluntarily resides or carries on business. In The The Tata Oil Mills Co. Ltd…Plaintiff v. Hansa Chemical Pharmacy…Defendant, ILR 1979 (2) Delhi 236, it was held in respect of the Union Territory of Delhi, High Court of Delhi has the civil original jurisdiction in every suit value of which exceeds the amount mentioned in the Delhi High Court Act and as such it is the principal civil Court of original jurisdiction with respect to every suit above the specified value and as such is the District Court within the meaning of Section 62 of the Copyright Act. It was also held that the suit in respect of infringement of copyright shall be filed in the Court where the plaintiff resides or carries on business. In Nirex Industries Limited v. Manchanda Footwear reported as 1984 IPLR 70, it was held that since the plaintiffs were claiming the reliefs for injunction of copyright, this Court will have the jurisdiction in view of the provisions of Section 62 of the Copyright Act. In Glaxo Operations UK Limited, and Others v. Samrat Pharmaceuticals, AIR 1984 Delhi 265 it was held that a suit for infringement of copyright in the Delhi High Court will be maintainable by the plaintiff company if it carries on business in Delhi.

    11. In view of the fact that plaintiff has also claimed the relief against the infringement of its copyright, this Court, in view of the clear provisions of Section 62 of the Copyright Act, will have the territorial jurisdiction to entertain the present suit.

    12. In Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 SC 142 as well as in Century Traders… v. Roshan Lal Duggar & Co…, AIR 1978 Delhi 250, it was held that in an action for passing off, the plaintiff need not prove actual damage in case he is the prior user of the said trade mark. As I have already held, prima facie, it has been brought on record that the plaintiff is a prior user of the trade mark “MITASO” since 1982 and is also the registered owner, in my opinion, there is no need for the plaintiff at this stage to prove actual damage to it by the use of the said trade mark by the defendants.

    13. In view of the above discussions, I am, prima facie, of the opinion that the defendants have violated the exclusive statutory right of the plaintiff in the use of the word “MITASO” for its electronic gas lighter and such violation is illegal and the plaintiff is, therefore, entitled to an injunction. I, accordingly, allow this application and restrain the defendants from using the name “MITASO“ on any of its products including the electronic gas lighter.

    14. Any opinion expressed in this order will not in any manner affect the merits of the case.

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    Comments

    Mitaso Appliances Ltd v. Mehta Zinabhai Bhimji Bhai.
    (Oct 1, 1995)