S.K Mahajan, J.— The plaintiffs, a partnership firm claiming themselves to be the prior user of trade mark ‘Gopal’ since about February 18, 1979 in respect of the mathematical instruments, geometry boxes, etc. has filed this suit for passing off of their trade mark and infringement of copyrights by the defendants. The allegations made by the plaintiffs are that they have been manufacturing the geometry boxes under the trade mark ‘Gopal’ which has a distinctive and unique characteristic, artistic work and design. The alleged distinctive features of the Plaintiff's trade mark include printing of the geometry box in multicolours, having a lake in the background with the stream flowing at the left top corner below the trade mark ‘Gopal’, while there are mountains appearing at the right top corner of the said box, below which is a tree. On the left side there are bushes and three lotus flowers in the lake. On the bottom right side of the box, the logo of the plaintiff, with the first word of the trading style of the plaintiff namely ‘Plasticians’ appears. In the centre a boy with long hair wearing a peacock feather in his hair appears feeding something to a cow with his right hand, while he has kept his left hand at the neck of the cow, holding a flute. On the back side panel of the cover lid of the box the name of the plaintiff with complete address appears, while on the front side panel of the said cover lid, the retail price of the box has been mentioned. The plaintiffs have used the design/artistic work on the card board cover of the geometry box in the same manner as on the box. On the card board the design has been printed with the background colour yellow. On the front side panel of the said cover, the trade mark ‘Gopal’, the description of the goods and the name and address of the plaintiff appears in red ink. The plaintiff claims copyright in the said artistic work relating to the geometry box and its card board cover and claims to be the owner thereof. The aforesaid trade mark and packing is alleged to be continuously, openly, extensively and exclusively used by the plaintiff without interruption since 16th February, 1979. Plaintiff is alleged to have given wide publicity to the aforesaid mark including advertisements in the trade journal ‘Paper and Stationery Samachar’ and also in the Members Directory of the ‘Delhi Stationers’ Association (Regd.)’ of which the defendant is also a member. It is, therefore, alleged that defendant had complete knowledge that the said trade mark and artistic work belonged to the plaintiff. Plaintiff claims to have acquired goodwill and reputation in the trade mark and the artistic work in respect of the aforesaid goods. The plaintiffs are also alleged to have filed an application for registration of the trade mark ‘Gopal’ with the Registrar of Trade Marks on 12th April, 1991 under No. 548898 in Class: 16 and the application is stated to have been accepted for advertisement in the Trade Marks Journal.
2. It is alleged that in the first week of July, 1994 the plaintiff came across a geometry box with an identical trade mark and similar artistic features as that of the plaintiff. On the cover lid of the said geometry box the name of the defendant appeared. However, on the card board cover it was written as ‘Manufactured by High Class Mathematical Instrument Boxes.’ On enquiries alleged to have been made by the plaintiff it came to their knowledge that the said geometry box were being manufactured and sold by the defendant only recently. On being requested by the plaintiff to stop infringing their rights the defendant threatened to flood the market with infringed goods.
3. It was in these circumstances that plaintiffs filed the present suit for passing off. Along with the suit an application under order 39 rules 1 & 2 read with section 151 cpc was also filed. By an ex-parte order passed on September 21, 1994 this Court restrained the defendant from using their trade mark ‘Gopal’ for mathematical drawing instruments. It is this application which I propose to dispose of by the present order.
4. An action for infringement of trade mark is a statutory remedy conferred on the registered proprietor of a registered trade mark for the enforcement of his right to use the trade mark in relation to the goods for which the mark has been registered. An action for passing off, however, is an action for deceit for colourable imitation of a mark adopted by a person in relation to his goods which has acquired distinctive reputation in the market as referring to the goods belonging to or produced by that person only. In such a case evidence of actual deceit is not necessary. In order to succeed in an action for passing off, the plaintiff has to establish user of his mark prior in point of time than impugned user by the defendant. As held in T. Oertti A.G v. E.J Bowman (London) Ltd., 1959 RPC 1, in an action for injunction on the ground of passing off, the plaintiff has to prove that the disputed mark has become by user distinctive of his goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark will be understood by the trade and the public as meaning that the goods are his goods. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods, has acquired a quasi proprietary right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark, or get up in relation to goods not of the plaintiff's manufacture, induces customers to buy from him goods not of the plaintiffs manufacture as goods of the plaintiff's manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff. Proof of actual damage or fraud is unnecessary in passing off action. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. Under Section 27 of the Trade and Merchandise Marks Act, a person is not entitled to institute any proceedings to prevent an infringement of an unregistered trade mark. However, the same shall be deemed not to affect the rights of action against any person in passing off goods as the goods of another person or remedies in respect thereof. Section 106 of the Act provides for reliefs in suits in infringement or for passing off. Under Section 106 of the Act, the relief which a Court may grant m a suit for infringement or for passing off their goods referred to in Section 105 includes injunction. A fair and honest trader will not give misleading name to his product to the continuing detriment of the plaintiff which has built up his goodwill in the business after years of hard work. It is this intangible right to property which the law seeks to protect. As was held in B.K Engineering v. U.B.H.I Enterprises, 27 (1985) DLT 120, “competition must remain free, it is true. This is the life blood of free enterprise system. Yet it is essential that trading must not only be honest but must not even unintentionally be unfair. If it is shown that a product or a business of a trader has acquired a distinctive character, the law will restrain a competitor from using that other's name. A line must be drawn somewhere between honest and dishonest trading, between fair and unfair competition.”
5. With this background we have to see whether the defendant is passing off his goods as that of the plaintiff and whether there is a similarity in the name, label and get up in the products of the parties and whether the plaintiff is a prior user of the goods marketed by him under the trade mark ‘Gopal’ and if so to what relief the plaintiff is entitled? The case of the defendant in the written statement is that the plaintiff being neither the proprietor of the trade mark nor owner of the copyright, has no right to institute the suit. While the defendant does not deny that he is using almost the same artistic work and design as is being used by the plaintiff and is also using the same name ‘Gopal’ for its mathematical instruments as is being used by the plaintiff, however, the defence taken by the defendant is that the said trade mark is common to the trade as many manufacturers and merchants were invariably using the same trade mark and artistic work in relation to mathematical instruments and geometry boxes and the plaintiff, therefore, cannot claim exclusive rights in either the trade mark or the artistic work. I have not been shown any other manufacturer of mathematical instruments or geometry box who may be using same trade mark, label or artistic work as is being used by the plaintiff, as is contended by the defendant. I have, therefore, not been able to make myself agreeable with the contention of the defendant that the trade mark ‘Gopal’ is common for the manufacturers of mathematical instruments and geometry box or that they use almost similar artistic work and labels for their products. The defendant has not been able to show anything to me as to how they have adopted this word ‘Gopal’ for their product. The word Gopal is not found in the dictionary but is the name of a person. Lord Krishna is also sometimes known as Gopal and the photograph of the boy which appears on the labels of the geometry box with a peacock feather on the head, one hand feeding the cow and other hand holding a flute gives an impression as if it was of the childhood of Lord Krishna. There must be some reason for the defendant to adopt the same trade mark as is being used by the plaintiff. In the absence of any reasons coming from the defendant, I have no hesitation to hold that prima facie the same was adopted with a view to trade upon the name, goodwill and reputation of the plaintiff and to pass off his goods as those of the plaintiff.
6. The plaintiffs have placed sufficient material to show that they have been using the trade mark ‘Gopal’ and the artistic work as shown on the geometry boxes since about 1979. The copies of ‘Directories of Delhi Stationers Association’ as well as ‘Paper and Stationery Samachar’ have been placed on record to show that the plaintiffs have been advertising their product under the name and style of ‘Gopal’ with the artistic work on the geometry box. The defendant has not denied that they were also members of the said associations and I have no reasons to disbelieve the plaintiff that the defendants were aware of the user of the said mark and the design work by the plaintiff since long.
7. One of the main arguments raised by the defendants for not granting injunction is that sales of the plaintiff are so meagre that they cannot claim the right to the exclusive user of the trade mark ‘Gopal’ or the artistic work/design on the geometry boxes and the cartons. In my opinion, the argument of the defendant is wholly fallacious. As held in Consolidated Foods Corporation v. Brandon and Company Private Limited, AIR 1965 Bombay 35, which was cited with approval by a Division Bench of this Court in Century Traders v. Roshan Lal Duggar and Company, AIR 1978 Delhi 250 “for the purpose of claiming such proprietorship of a mark, it is not necessary that the mark should have been used for a considerable length of time. As a matter of fact, a single actual use with intent to continue such use e.o eustiti confers a right to such mark as a trade mark. 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 sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such 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. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific articles of goods.”
8. I have no reason to deviate myself from the aforesaid observations. In my opinion, by continuous user of the mark, design and artistic work, a right is conferred upon the plaintiffs to use it as a trade mark and any person who tries to infringe upon the said right of the plaintiff can be restrained by injunction from using the said mark.
9. For all the above reasons, I am, prima facie, satisfied that the defendants with a view to encash upon the good will and reputation of the plaintiffs have copied the trade mark ‘Gopal’ and their design and art work for the similar type of products as are being manufactured by the plaintiffs. In my opinion the defendants have copied the trade mark and the artistic features of the geometry box and the cartons used by the plaintiff with a view to pass off their goods as that of the plaintiffs'. I, accordingly, allow the application and confirm the ex-parte order passed on September 29, 1994 till the decision of the suit.
10. Any observation made in this order will have no bearings on the merits of the case.
I.A allowed.