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  • K. Ramamoorthy, J.
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Smart Summary

Judgment Summary: K. Ramamoorthy, J.

Factual and Procedural Background

The plaintiffs claim rights to the trade mark "GOLDEN CRUISER 1200" and the defendants use the trade mark "SUN CRUISER 2001" (at times referred to by the defendants as "SUPER SUN CRUISER 2001"). Both parties manufacture and sell automobile coolant and related products. The plaintiffs instituted the suit on 28.8.1990 originally pleading passing off. On 7.1.1991 the plaintiffs applied (IA. 210/91) to amend the plaint to add a claim for infringement, alleging their mark had been registered under the Trade Marks Act, 1958 (Registration No. 455304). The amended plaint sought various reliefs including permanent injunctions (for infringement and passing off), accounts of profits, delivery up/destruction of infringing material and costs.

After amendment the plaintiffs moved IA.8594/91 for an injunction. The plaintiffs adduced documents including deed of assignment dated 25.8.1989 (whereby the second plaintiff assigned rights to the first plaintiff), sales and advertising material from 1986 onward, copies of containers showing the parties' marks, and the Certificate of Registration (filed with the amendment). The amended plaint did not explicitly state the date on which the Registrar issued the certificate, and the plaint did not disclose a disclaimer entered before the Registrar stating: "Registration of this Trade Mark shall give no right to the exclusive use of the numeral '200'."

The defendants contended they began business in June 1989 (a fact disputed by the plaintiffs), that their mark derives from the corporate name Sun Cruiser Lubricants Ltd., that they used distinct get-up, packaging and logo, and that many other similar marks exist in the market. The defendants filed numerous advertising and commercial documents and photographs showing multiple products on the market (including both GOLDEN CRUISER 1200 and SUN CRUISER 2001). They also filed an application for rectification of the plaintiffs' trade mark and sought a stay of the suit under Section 111 of the Trade Marks Act, 1958.

The court heard arguments on the injunction application (IA.8594/91) under Order 39 Rules 1 & 2 CPC and reserved further procedural directions (including posting the matter on April 10, 1997). The judge ultimately dismissed the injunction application and recorded "no order as to costs." The shorthand order reads: "Application dismissed."

Legal Issues Presented

  1. Whether the defendants' use of "SUN CRUISER 2001" (or "SUPER SUN CRUISER 2001") is identical with or deceptively similar to the plaintiffs' registered trade mark "GOLDEN CRUISER 1200" so as to constitute infringement under Sections 28 and 29 of the Trade Marks Act, 1958.
  2. Whether the defendants' use of their mark constitutes passing off or a misrepresentation in the course of trade that would justify interim injunctive relief.
  3. Whether the plaintiffs had made out a prima facie case and balance of convenience in favour of grant of an interim injunction under Order 39 Rules 1 & 2 CPC.
  4. Related procedural point raised by the defendants: the effect of the assignment (deed dated 25.8.1989) and whether the change in the Register required under Section 44(2) of the Trade Marks Act, 1958 affects the plaintiffs' right to sue in the name asserted.

Arguments of the Parties

Plaintiffs' Arguments (as presented in the opinion)

  • The plaintiffs asserted statutory rights flowing from registration of the trade mark "GOLDEN CRUISER 1200" (Registration No. 455304) and relied on Sections 28 and 29 of the Trade Marks Act, 1958 for protection against infringement.
  • The plaintiffs contended the defendants' mark ("SUN CRUISER 2001") is deceptively similar — the numeral "2001" is a jumble of "1200", and "Sun" conveys substantially the same idea as "Golden" (both implying golden sun rays), causing confusion and deception.
  • The plaintiffs relied on the definition of "deceptively similar" in Section 2(d) and on precedent (Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.) concerning disclaimers; they urged that the disclaimer related only to the numeral and that the entire mark must be considered for infringement.
  • The plaintiffs argued the defendants admitted starting business in June 1990 (a point relied on to establish priority) and therefore the plaintiffs were entitled to injunction against the defendants' allegedly infringing use.

Defendants' Arguments (as presented in the opinion)

  • The defendants contended they began business in June 1989 (earlier than the date relied upon by plaintiffs) and denied dishonest intent.
  • They asserted their mark ("SUPER SUN CRUISER 2001") does not resemble "GOLDEN CRUISER 1200" and highlighted differences in get-up, colour scheme and logo.
  • The defendants pointed to numerous other similar trade names in the market (e.g., CAR CRUISER 2100, GOLDEN CROWN 1200, SILVER CRUISER 5000, etc.) to argue that "Golden" or "Cruiser" are not unique in this trade and the plaintiffs could not claim exclusive rights.
  • They produced extensive advertising and commercial materials (newspapers, magazines, invoices, approvals) to establish their market presence and prior use, and noted that their product had been approved by Apex Defence Laboratory.
  • Procedurally, defendants argued that the registration remained in the name of the second plaintiff (not the first) and invoked Section 44(2) of the Trade Marks Act, 1958 to contend the first plaintiff could not claim rights without the change in the Register having been effected; they also filed a rectification application and sought a stay under Section 111.
  • The defendants also placed affidavits and an advertisement before the court that, according to them, contradicted the plaintiffs' account of original adoption of the name by the plaintiffs.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., 1955 S.C. 558 Authority on the effect of disclaimers (decision under Section 13 of the Trade Marks Act, 1940; analogous to Section 17 of the 1958 Act). The plaintiffs relied on the decision to contend that the disclaimer relates only to the numeral and does not nullify consideration of the whole mark for infringement. The plaintiffs relied on this authority to argue that the disclaimer filed before the Registrar (referenced in the plaint) did not defeat the infringement claim because it related only to the numeral; the court recorded the plaintiffs' reliance but the ultimate decision turned on the court's assessment of similarity and other factors rather than on this precedent alone.
Century Traders… v. Roshan Lal Duggar & Co…, AIR 1978 Delhi 250 Relied upon by the plaintiffs for the proposition that the essential part of a compound trade mark (here argued to be "Cruiser") if used by another would amount to infringement. The plaintiffs relied on this decision; however, the court expressly stated disagreement with the plaintiffs' contention and concluded the marks were phonetically different with different get-up and colour schemes, so the court did not accept the reliance as establishing infringement in the present case.

Court's Reasoning and Analysis

The court examined the competing contentions and evidence presented for the purpose of deciding the interim injunction application (IA.8594/91). The judge noted procedural and pleading deficiencies in the plaintiffs' amended plaint (e.g., the plaint did not mention the date when the Registrar issued the certificate of registration and did not disclose the disclaimer recorded before the Registrar).

On the central question of similarity/infringement the court considered:

  • The visual and phonetic qualities of the competing marks ("GOLDEN CRUISER 1200" versus "SUPER SUN CRUISER 2001" / "SUN CRUISER 2001").
  • Market facts and evidence of other similar marks in trade, as shown by photographs and advertising material filed by the defendants (multiple products in the market bearing variations on "Cruiser" and "Golden").
  • Distinctive features of packaging and get-up including colour schemes and logos.

The judge explicitly stated that he did not agree with the plaintiffs' contention that the defendants' mark was deceptively similar. The reasons given by the court were: the two trade marks are phonetically different; the get-up and the colour schemes of the boxes are entirely different; and therefore there was no question of infringement or passing off on the material before the court. The judge observed that it was unnecessary to dwell at length on case law to reach that conclusion.

On balance, the court found the plaintiffs had not established a prima facie strong case justifying the grant of an interim injunction under Order 39 Rules 1 & 2 CPC. The defendants' evidence of advertising, market presence, and the multiplicity of similar marks in trade weighed against the plaintiffs' application for interlocutory relief on the record before the court.

Holding and Implications

Holding:

IA.8594/91 (application for interim injunction) is dismissed.

Implications and consequences:

  • There will be no interim injunction restraining the defendants from using "SUN CRUISER 2001" / "SUPER SUN CRUISER 2001" on the basis of the material before the court at this interlocutory stage.
  • The court recorded "there shall be no order as to costs" in relation to the injunction application.
  • The judgment indicates that, on the facts before the court, no prima facie case of infringement or passing off was made out; the court did not treat the matter as creating or laying down any new legal precedent beyond its application to these facts.
  • Procedurally, the matter was posted for further attention on April 10, 1997; the shorthand concluding line in the record is: "Application dismissed."
Application dismissed.
Show full summary ...

    Sunstar Lubricants Ltd. v. Federal Chemical Industries

    K. Ramamoorthy, J.— The plaintiffs claim to the trade mark GOLDEN CRUISER 1200. The defendants claim the trade mark SUN CRUISER 2001.

    2. The plaintiffs and defendants are engaged in the same business of manufacturing and selling automobile coolant and other attendant products. The suit was instituted by the plaintiffs on 28.8.1990 In the original plaint, the plaintiffs claimed the relief of injunction on the ground of passing off. On 7.1.1991 the plaintiffs filed IA. 210/91 for amendment of the plaint claiming the relief of infringement of trade mark on the ground that the trade mark claimed by the plaintiffs have been registered by the Registrar under the Trade Marks Act, 1958 and, therefore, they are entitled to the injunction on the ground of infringement of trade mark also. The following are the reliefs claimed in the amended plaint:

    “(aa) An order for permanent injunction restraining the defendants, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in automobile coolants under the trade mark SUN CRUISER 2001 or any other mark as is identical to or deceptively similar with the plaintiffs' trade mark GOLDEN CRUISER 1200 or from doing any other thing amounting to infringement of registered Trade Mark No. 455304 of the plaintiffs.

    (a) An order for permanent injunction restraining the defendants, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in automobile coolant and brake and clutch fluids or any other cognate or allied goods under the trade mark or trade name SUN CRUISER 2001 or any other mark or name as is identical to or deceptively similar with the plaintiffs' trade mark GOLDEN CRUISER 1200 or from doing any other thing as is likely to leading to passing off of the defendants' goods or business as the goods and business of the plaintiffs.

    (b) An order for rendition of accounts of profits illegally earned by the defendants and a decree be passed in the amount so ascertained.

    (c) An order for delivery up of all infringing materials including unused containers, blocks, dies etc. for purposes of destruction and/or erasure.

    (d) An order for costs in the proceedings.”

    3. After the amendment of the plaint the plaintiffs filed IA. 8594/91 for injunction on the basis of the averments in the amended plaint. The case of the plaintiffs tersely stated is this:

    4. The first plaintiff Sunstar Lubricants Limited is registered under the Indian Companies Act having its registered office at Suite 2, 10, Hailey Road, New Delhi. The second defendant Livingpoint Sales Pvt. Ltd. is a Company having its registered Office at 203, Defence Colony Flyover Market, New Delhi. Plaintiff No. 2 commenced business of manufacturing and selling of automobile coolants since May 1986 under the trade mark GOLDEN CRUISER 1200. The word “Cruiser” means a worship of high speed and medium armament and it was chosen by the second plaintiff being a fancy trade mark in relation to automobile coolants. By deed of assignment dated 25.8.1989 the second plaintiff transferred the right, title and interest in the trade mark to plaintiff No. 1. The trade mark was registered under Registration No. 455304. Though the Registrar of Trade Marks issued a Certificate of Registration on the 15th day of November, 1990, the plaintiffs do not say in the amended plaint the date on which the Registrar issued the order. Perhaps the attempt was from reading of the plaint one should get the impression that even before the date of plaint the reader should get the impression that it was registered. The mark GOLDEN CRUISER 1200 has been extensively advertised and a lot of money has been spent by the plaintiffs. Another point to be noted is there has been a disclaimer to the following effects before the Registrar:

    “Registration of this Trade Mark shall give no right to the exclusive use of the numeral “200”.”

    This disclaimer is also not mentioned in the plaint.

    5. The defendants had commenced to manufacture and the sale of automobile coolants under the trade mark SUN CRUISER 2001. The numeral 2001 is a jumble of the numeral 1200 used by the plaintiffs. The use of the word ‘Sun’ instead of ‘Golden’ does not alter the impression since ‘Sun’ is a part of the plaintiff No. 1's name and Sun and Golden signify similar meaning. Sun rays are referred to as golden. The SUN CRUISER 2001 has the effect of creating tremendous confusion and deception in the mark. The trade mark SUN CRUISER 2001 which is deceptively similar to GOLDEN CRUISER 1200 is violative of the statutory rights of the plaintiffs and amounts to infringement of the trade mark. Further, the mark SUN CRUISER 2001 amounts to a misrepresentation in the course of trade and the use of the trade mark by the defendants would create confusion and deception resulting in passing off. The defendants have malafide and dishonest intention to create confusion.

    6. The defendants in the written statement, filed after the amendment of the plaint, have stated that they have got a particular reason to have the name Sun and there is no dishonest intention. They have also added Super to that name to give an impression that their product is better than the rest. The trade mark SUPER SUN CRUISER 2001 does not resemble GOLDEN CRUISER 1200. The defendants have been making very good business and out of shear jealousy the plaintiffs have come forward with this suit. There are other coolants in the market under the name of CAR CRUISER 2100, GOLDEN CROWN 1200, AUTO CRUISER 1800, SILVER CRUISER 5000, CAR CRUISER AND DISMOND CRUISER etc. The defendants also point out that the word ‘Golden’ is not unique qua the product automobile coolant. There are other trade names Golden Scissor 2100, Golden Crown 1200. The defendants have different style of packing, different get up, colour combination and distinct logo and they have also mentioned that the coolant is processed by Sun Cruiser Lubricants Ltd. The defendants have also spent a lot of money for advertising in national newspapers, regional newspapers, leading magazines like India Today/Auto Bharati, Auto Spark, Bombay and project etc. apart from advertisement in Nestrak Video Cassette, in one or two films, on National Network before the programme TIPU SULTAN and broadcast on Delhi Station of All India Radio. The plaintiffs were well aware of the business of the defendants and inspite of it they were keeping quiet for sometime and all of a sudden they have filed this suit. The products of the defendants have been approved by Apex Defence Laboratory. The name Super Sun Cruiser has been derived from the corporate name of the defendant-Company Sun Cruiser Lubricants Ltd. as registered with the Registrar of Companies, Delhi and Haryana. The other allegations in the plaint are denied and I do not want to advert to them at this stage.

    7. The plaintiffs have filed the following documents:

    “1. Photo copy of deed of assignment dated 25th August 1989.

    2. Statement of sales of plaintiffs' goods with effect from 1986.

    3. Sales expenses of the plaintiffs with effect from 1986.

    4. Photo copies of excise gate passes pertaining to sale of plaintiffs' goods for 1987-1990.”

    5. Photo-copies of invoices issued by the plaintiffs to various parties with effect from 1986.

    6. Photo copies of orders received by the plaintiffs from various parties for the period 1986-1990.

    7. Photo copies of advertisements issued by the plaintiffs in various newspapers and magazines with effect from 1987.

    8. Article pertaining to plaintiffs in Business Times dated 24th June, 1990.

    9. Letter dated 22nd July, 1990 from Hotel Sixer to plaintiff No. 1.

    10. Letter dated 15th June, 1990 addressed by K. Lalnghakaliana to plaintiff No. 1.

    11. Photo copies of advertisements of the defendants appearing in ‘VIGYAN’ dated June 1990 and ‘INDIA TODAY’ dated 31.7.1990

    12. GOLDEN CRUISER 1200 container of the plaintiffs (in box)

    13. SUN CRUISER 2001 container of defendants (in box).”

    8. Along with the amendment of the plaint the Certificate of Registration, as mentioned above, was filed.

    9. The defendants have filed the following documents to show that advertisement, their business from 1989:

    “1. dated 1.6.1989 Photo copy of declaration form under Excise Rule.

    2. dated 10.8.1989 photo copy of advertisement in T.O.I

    3. dated 10.8.1989 photo copy of advertisement in Sandhya Times.

    4. dated 10.8.1989 photo copy of advertisement in Economic Times.

    5. dated 10.8.1989 photo copy of advertisement in Mid-Day.

    6. dated 21.8.1989 photo copy of advertisement in Herald.

    7. dated 21.8.1989 photo copy of advertisement in Assam Tribunal.

    8. dated 21.8.1989 photo copy of advertisement in Deccan Herald.

    9. dated 21.8.1989 photo copy of advertisement in Times of India.

    10. dated 22.8.1989 photo copy of advertisement in Statesman.

    11. dated 22.8.1989 photo copy of advertisement in Hindu.

    12. dated 24.8.1989 photo copy of advertisement in Hindustan Times.

    13. dated 15.9.1989 photo copy of advertisement in Evening News.

    14. dated 24.9.1989 photo copy of advertisement in Hindustan Times.

    15. dated 15.10.1989 photo copy of advertisement in Amar Ujjala.

    16. -do- (Bareilly)

    17. -do- (Moradabad)

    18. -do- (Meerut)

    19. dated 25.10.1989 photo copy of advertisement in Punjab Kesari.

    20. dated 31.10.89 Photo copy of Invoice of Radiospot.

    21. dated 6.12.1989 photo copy of advertisement in Punjab Kesari (Delhi)

    22. dated 30.12.1989 photo copy of advertisement in Hindustan Times.

    23. dated 18.1.1990 photo copy of Form A.L 4.

    24. dated March 1990 photo copy of advertisement in Auto Bharati (Magazine).

    25. dated 21.4.90 photo copy of invoice.

    26. dated 7-20 June 90 Photo copy of Advertisement in ‘Bombay’ (Magazine).

    27. dated 11.6.90 photo copy of invoice.

    28. dated 21.6.90 photo copy of I.O.C letter.

    29. dated 22.6.90 photo copy of invoice.

    30. dated 28.6.90 photo copy of invoice.

    31. dated July 1990 photo copy of Advertisement in ‘AUTOSPARE’ (Magazine).

    32. dated July 1990 photo copy of Advertisement in ‘Project’ (Magazine).

    33. dated 6.7.1990 photo copy of invoice.

    34. dated 6.7.1990 photo copy of I.O.C's letter.

    35. dated 7.7.90 photo copy of invoice.

    36. dated 13.7.90 photo copy of invoice.

    37. dated 14.7.90 photo copy of invoice.

    38. dated 20.7.90 photo copy of Excise Licence.

    39. dated 28.7.90 Photo copy of Advertisement in Hindustan Times (newspaper).

    40. dated 31.7.90 photo copy of invoice.

    41. Coloured photographs.

    10. At page 61 the defendants have shown the photographs where the coolant is sold in different names including that of the plaintiffs. They are at page 62 also. The photographs of the boxes of the products sold by different persons are shown as under:

    “GOLDEN CROWN 1200

    SILVER CRUISER 5000

    GOLDEN SCISSOR 2100

    CAR CRUISER 2100

    SUN CRUISER 2001

    GOLDEN CRUISER 1200”

    11. The defendants have also filed an application for rectification of the Trade Mark of the plaintiff and that is pending and the defendants have also prayed for the stay of the suit under Section 111 of the Trade Marks Act, 1958.

    12. Mr. Praveen Anand, learned Counsel for the plaintiffs, submitted that the registration of the trade mark GOLDEN CRUISER 1200 gives a statutory protection to the plaintiffs under Sections 28 and 29 of the Trade Marks Act, 1958. Section 28 refers to rights conferred by registration. Section 29 speaks of how a registered trade mark is infringed. The plaintiffs' trade mark is registered in Part A. He relied upon the decision of the Supreme Court in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., 1955 S.C 558 about the disclaimer which I have referred to above. The Supreme Court rendered the judgment under Section 13 of the Trade Marks Act, 1940. The provisions similar to it is Section 17 of 1958 Act. He submitted that as per the decision of the Supreme Court the disclaimer would relate only to the number 1200 and for the consideration of the question of infringement the entire trade mark has to be considered. He also relied upon Section 2(d) which defines what is deceptively similar. The learned Counsel submitted that the defendants themselves admit they started the business in June 1990 and in August 1990 the plaintiffs approached this Court and, therefore, they are entitled to the relief on the ground that the trade mark of the defendants are deceptively similar to that of the plaintiffs.

    13. Mr. Kapur, learned Senior Counsel for the defendants submitted that the defendants started the business in June 1989 and the trade marks are not similar and the plaintiffs cannot claim any relief in this suit. The first plaintiff claims rights and user by assignment from the second plaintiff on 25.8.1989 The trade mark was registered in the name of the second plaintiff on 13.9.1990 The defendants have made thorough search in the office of the Registrar of Trade Marks. The registration still stands in the name of the second plaintiff. The learned Senior Counsel submitted that in view of Section 44(2) of the Trade Marks At, 1958 for the purpose of showing that the first plaintiff in order to succeed must have the change in the Register of Trade Marks before the Registrar and Section 44 imposes a bar to the first plaintiff claiming any right and admittedly second plaintiff does not claim any right of user. On 4.9.1996 an affidavit has been filed by the defendant to show that the name Cruiser cannot be an invented name by the plaintiff. On 17.2.1994 eight manufacturers have filed affidavits. The learned Senior Counsel Mr. Kapur brought to my notice an affidavit of Mr. Prince Mohan Chugh dated 4.9.1996 to show that on 4.8.1996 in Sunday Edition Times of India an advertisement was issued by the plaintiffs which read as under:

    “Liqui Moly Engine Oils from Germany and Golden Crusier from Japan are manufactured in India by Sunstar Lubricants Ltd.”

    14. There is also an advertisement filed along with the affidavit also shows that Liqui Moly Engine Oils from Germany and Golden Cruiser Coolant from Japan are manufactured in India by Sunstar Lubricants Limited. This is only to contradict the case of the plaintiff that the word GOLDEN CRUISER was chosen by them by chance for the first time.

    15. The learned Senior Counsel also submitted that as stated in the written statement there are so many persons carrying on the same name with reference to the same product and the plaintiffs cannot claim any right on the basis of the registration and there is no deceptively similarity at all.

    16. Section 2(d) of the Trade Marks Act, 1958 defines deceptively similarity to mean a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

    17. Section 28 of the Trade Marks Act, 1958 speaks of the rights that flow from the Registration of Trade Mark in Part A or Part B. Section 29 speaks of the infringement by a person who uses in the course of a trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

    18. Mr. Praveen Anand in reply to the arguments of Mr. Kapur relied upon the decision of this Court in Century Traders… v. Roshan Lal Duggar & Co…, AIR 1978 Delhi 250 in paragraphs 9, 10, 14 and 20 that the defence raised by the defendants is no defence at all; that word Cruiser is an essential part of the trade mark and if that essential part is used by any person it would amount to infringement.

    19. Having regard to the words which are now used as trade mark, I do not at all agree with Mr. Praveen Anand that the trade mark Super Sun Cruiser 2001 is deceptively similar to Golden Cruiser 1200. I need not dwell at length on the case law to come to the conclusion because I am very clear in mind that these two trade marks are phonetically different and the get up, the colour scheme of the boxes are entirely different. Therefore, there is no question of any infringement and no question of passing off also arises. The plaintiffs have not established, prima facie, strong case for the grant of injunction. Therefore, the application IA.8594/91 under order 39 rules 1 & 2, cpc is dismissed. There shall be no order as to costs.

    IA. 10144/93

    20. Post the matter on the April 10, 1997.

    Application dismissed.
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    Comments

    Sunstar Lubricants Ltd. v. Federal Chemical Industries
    (Nov 1, 1996)