A.K Sikri, J.— This application is filed by the plaintiff invoking the provisions of Order XXXIX Rules 1 and 2 as well as Section 151 of the Code of Civil Procedure. Ad-interim injunction is prayed for during the pendency of the main suit filed by the plaintiff. Main suit is for permanent injunction, restraining passing off, rendition of accounts or profit, delivery up, etc.
2. The plaintiff, PLASTINDIA FOUNDATION, is a registered trust under the Bombay Trust Act, 1950 having registration No. F-12156. The plaintiff trust was organised and formed in the year 1987, as an apex body of associations of all the leading organisations and institutes concerned, directly or indirectly with the manufacture, sale and/or promotion of plastics, their related materials and products in India. The membership of the plaintiff organisation consists of:
(i) Founder Members, who are associations, organisations or institutions which are interested, directly or indirectly, in serving the wider objectives and sectors of the plastic industry, related materials and their products. These members have an All-India character as their members are drawn from all over the country. There are, in all, seven founder member organisations, associations and institutions, which together have a membership of around 8500 individual members or companies.
(ii) Patron members, are Undertakings, incorporated or otherwise, connected directly or indirectly with the plastic and/or related material industry. In all, there are 12 such members.
3. It thus claimed that all known and reputable manufacturers, marketeers, traders, processors, mould and machinery manufacturers of plastics and related products, are directly or indirectly connected with the plaintiff foundation. The plaintiff trust, as part of its main objectives is involved in the rendering of the following services:
(i) The promotion, development, co-ordination and guidance of the growth of the plastic industry, comprising of manufacturers of raw materials, additives and other related materials, manufacturers, processors, machinery and auxiliary equipment manufacturers, mould designers and mould makers, and activities concerned directly or indirectly with plastic industry.
(ii) The improvement, advancement, expansion and widening the use of plastics and related materials and their products, to serve and consuming industries and to benefit the consumers of plastic products as a whole.
(iii) Assisting and co-ordinating the efforts of the Indian Plastic Industry in the advancement/improvement of manpower development, research and development, technological standards, product design and education and training in the plastic industry.
(iv) To provide assistance and encouragement and bring about co-operation amongst various associations, organisations, agencies, Government/semi-Government authorities, educational and training institutions and R&D establishments for the growth and projection of an appropriate image of the plastic industry.
4. It is stated in the plaint that the plaintiff foundation has been carrying on the above activities and services under the mark/trade mark PLASTINDIA ever since its formation in the year 1987. One of the major activities of the plaintiff is the organisation of International Exhibitions on Plastics at regular intervals, to focus, project and promote the Indian Plastic Industry. These exhibitions are held under-the mark PLASTINDIA. The plaintiff also claims that it organises conferences with participants and speakers drawn from all over the world. Thus, the name and PLASTINDIA, has acquired a national and international reputation and good will and is well known among all those directly or indirectly associated with the plastic industry. The name and mark PLASTINDIA is exclusively associated with the plaintiff and none else and any reference to the said name, in the context of the plastic industry, would connote and denote an association or connection with the plaintiff. The plaintiff has good visibility in India, in respect of its name PLASTINDIA through the print and electronic media. The plaintiff has also registered a domain name called www.plastindia.org and has a website at this domain. The e-mail address of the plaintiff is plastindia@vsnl.com which is an address all participants at the PLASTINDIA Exhibitions and members of the plaintiff Foundation are very familiar with. According to the plaintiff, the word PLASTINDIA is an invented/coined expression having no meaning in the English language or any other Indian language. The said word has been coined using the words Plastic and India. The combination and collocation of the two words is unique thus forming an inherently distinctive mark connoting and denoting the plaintiff foundation exclusively. On account of prior adoption and use of PLASTINDIA the plaintiff foundation is the proprietor of the said mark/trademark. It has also made an application on 25th February, 1999 for the registration of the mark PLASTINDIA FOUNDATION together with its logo, under the provisions of the Trade and Merchandise Marks Act, 1958, in Class 16 in respect of printed material, publishing material and stationary. It is also publishing since 1996 a news letter by the name PLASTINDIA FOUNDATION which is circulated to over 20000 people in India and abroad.
5. According to the plaintiff, the cause of action for filing the present case arose when in May, 2001 the plaintiff came across a journal by the name PLAST INDIA. It is published by the defendant No. 2 and edited by the defendant No. 1. It is also stated in the plaint that the plaintiff started receiving letters from those in plastic industry, inquiring as to whether the plaintiff had launched any other magazine. Thus the magazine of the defendants is causing confusion by adoption and use of the name PLAST INDIA. It is not even a case of likelihood confusion but actual confusion in view of the various queries made by the plaintiff's members. It is the further case of the plaintiff that the defendants have adopted this name with mala fide intentions of misappropriating the goodwill’ and benefit of the plaintiff. The defendants are guilty for their publication as that of the plaintiff. It is also stated that the fraudulent intention of the defendants is further evident from the fact that the defendants have adopted a domain name which is deceptively similar to the plaintiff's domain name the www.plastindia.com. They have also adopted the e-mail address into @ the plastindia.com which is again deceptively similar to the e-mail address of the plaintiff. The plaintiff is therefore seeking, inter alia, the decree for permanent injunction restraining the defendants, their agents, distributors stockists and all others acting on their behalf from printing, publishing, selling, offering for sale, distributing, advertising, or directly or indirectly, dealing in any publication under the mark PLASTINDIA or any deceptive variant of the plaintiff's mark/trade mark PLASTINDIA, or from using the mark PLAST INDIA or any deceptive variant as part of its trading style, or as a domain name, or as website or as part of their e-mail address or in any manner pass off their goods, services and business as those of the plaintiff. The decree for rendition of accounts of profits and delivery up to the plaintiff for destruction the entire stock of magazines and mandatory injunction directing the defendants to transfer the domain name in favour of the plaintiff is also prayed for.
6. Ad-interim prayer sought in this application is almost in same terms as prayer (a) of the main suit and noted above.
7. The defendants have filed the written statement and reply to this application. They have stated that the plaintiff has not come to the Court with clean hands and manipulated the letters from the various persons alleging confusion inasmuch as those persons had specifically booked the advertisements with the defendants after paying for the same. It is also attempted to explain in detail as how the name of the defendants' magazine which is ‘PLAST INDIA’ is different from that of the plaintiff's which is ‘PLASTINDIA FOUNDATION’. The defendants have sought to highlight the features of distinction between the two publications qua the nature of publication, contents, purpose etc. It is highlighted that whereas the plaintiff's publication is a news letter, the defendants' publication is a magazine which consists advertisements. Their logos are different whereas the plaintiff's publication is meant for private circulation among its members. The defendants' publication is in the nature of magazine which is sold in the market at a price. Thus it has commercial purpose; it contains the advertisements of the various plastic manufacturers, dealers etc. It is also stated the there is no cause of any confusion in view of the aforesaid different features and further that in the defendants' magazine specific information in respect of publishers, their address etc. is provided. Subscription form or booking the advertisements also provides all necessary information and details from which one can clearly infer that they are totally different from the plaintiff's and that this magazine is published by the persons who are not the plaintiff's. It is also stated that the word PLASTINDIA is a descriptive word and it denotes the Plastic Industry of India and no person can have monopoly over this trade mark. There are others in the market who are using this trade mark.
8. During the arguments, learned Counsel for the plaintiff led stress on the various averments made in the plaint and recorded above and on the basis thereof, the following submissions were made:
(1) That the plaintiff was prior user of the trade mark PLASTINDIA was not disputed.
(2) That PLASTINDIA was an invented word. The plaintiff could coin this word after combining the words Plastic and India and the word PLASTINDIA was not a word of English language which is defined in English dictionary anywhere.
(3) It was inherently distinctive trade mark adopted by the plaintiff. Because of reputation of the plaintiff's consumers and persons belonging to industry identify the trade mark PLASTINDIA with the plaintiff only.
(4) The plaintiff, which is a trust of all leading manufacturers, traders etc. in the industries as its members, had established world wide reputation. It was organising various exhibitions under the trade mark PLASTINDIA and exhibitors from across the world were participating. They make enquiries and book the exhibition space through the plaintiff's website and e-mail.
(5) Likewise the plaintiff had started news magazine PLASTINDIA. No doubt it was termed as news letter it was meant for circulation among its members and those who are connected with this industry/trade and they book their advertisements in the magazine of the plaintiff. The defendants' magazine also contains the advertisements only of various manufacturers/dealers in plastic industry. Therefore, the contents and purpose of the two magazines were same. The defendants who were themselves using PLASTINDIA as trade mark cannot adopt double standards and permitted to say that it is a descriptive word.
(6) The trademark adopted by the defendants was not only likely to cause confusion but was actually causing confusion.
(7) The adoption of the trade mark PLASTINDIA by the defendants, which was inseparable and integral part of the plaintiff's name i.e PLASTINDIA FOUNDATION was malicious and intentional with the purpose of encashing upon the reputation of the plaintiff's and clearly amounted to passing off their magazine as that of the plaintiff's.
9. On the other hand, the submissions of learned Counsel for the defendants were as under:
(1) The plaintiff had not come to the Court with clean hands and therefore was not entitled to ad-interim injunction.
(2) The trade marks were dissimilar. It was PLASTINDIA of the plaintiff's and PLASTINDIA FOUNDATION of the defendants. The contents and purpose of two publications were also dissimilar.
(3) There was no question of any confusion or likelihood of confusion as the defendants had given all necessary details in respect of publisher and publication etc. including the company's address from which everybody could clearly infer that it was not the magazines published by the plaintiff.
(4) The word PLASTINDIA was descriptive word showing that it represented Plastic Industry of India, and therefore, the defendants had right to use the said name as plaintiff had no monopoly over a descriptive word.
(5) The plaintiff had also failed to establish the balance of convenience in its favour. Further the defendants being commoner, if the publication is stopped, it is the defendants who were going to suffer irreparable loss or injury.
10. Various judgments were also cited by the learned Counsel for defendants in support of his submissions reference to which would be made at the appropriate stage.
11. After considering the arguments of Counsel for both the sides, I am of the opinion that the plaintiff has been able to make out a case for ad-interim injunction. It is not disputed that the plaintiff adopted the trade mark PLASTINDIA of which it is the prior user. The trade mark PLASTINDIA cannot be treated as descriptive word but is a coined/invented word which is the combination of two words Plastic and India. Admittedly no such word ‘PLASTINDIA’ finds place in the English dictionary. In the case of Globe Super Parts v. Blue Super Flame Industries, 1986 PTC 235, this Court has examined and discussed in detail as to which words can be treated as ‘coined’ or ‘fancy’ words which are to be treated differently than those common words which are part of language. The Court further held, after examining the available case on law point, that sometimes even the words which are descriptive words or part of the language can acquire a secondly signification inasmuchs by the adoption of the trade mark they loose their primary meaning and come to connote particular products. This aspect is dealt with in para 42 of the judgment reading as under:
“Para 42: The House of Lords examined the case, and held that even “descriptive words” like ‘Camel Hair Belting’ were capable of exclusively appropriation, that the words ‘Camel Hair Belting’ have acquired a secondary signification with respect to the beltings in the sense that the words ‘Camel Hair’ with respect to the trade in beltings had lost their primary meaning, to indicate belting made of camel hair, but has acquired a secondary significance or meaning in the trade, and came to connote the products of the plaintiffs. The House of Lords found that there was ample evidence to justify the finding that amongst those who were the purchasers of such goods, the words “Camel Hair” were not applied to beltings made of that material in general; that in short, it did not mean in the market belting made of a particular, material, but belting made by a particular manufacturer. The House of Lords thus came to the conclusion that common words of a language can be exclusively appropriated to a particular manufacturer as they had acquired a special meaning as denoting the goods of a particular manufacturer/trade.”
12. The judgment of the House of Lords which was being referred to in the aforesaid paragraph was the case of Reddaway v. Banham, (1896) 13 RPC 218, from the same judgment. The discussion about ‘coined words’ was adopted in paragraph 43 which reads as under:
“Para 43: Lord Herschell also dealt with “coined” words, that did not have any meaning in the language; and at page 228 line 19, said that “words never in use before, and meaningless, except as indicating by whom the goods in connection with which it is used were made, there could be no conceivable legitimate use of it by another person”. Thus the “coined” “created”, “Fancy”, or “new” words which were not in use in any language before, and which did not have any meaning in the ordinary language, as evidenced by their absence in authoritative and standard language dictionaries, were the exclusive property of the person who first “coined”, or created them and adopted them for use, and used it in connection with any article the only reason why a hitherto meaningless word would be used by another in connection with his activities would be to deceive the public, that the latters' article, thing or goods or the articles, thing, or goods of the former. He also observed that ‘he was unable to see why a man should be allowed in this way, more than in any other, to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival’.”
13. The test of determine whether a particular word is a descriptive word or coined word has been stated in paragraph 45. What is required is to be seen is: Whether the word is a word of ordinary language, or whether the word is a fancy, invented or coined word. In the former case what is required to be further established whether the common word or phrase has acquired secondary signification or not. As we are dealing with the question as to whether the word PLASTINDIA as a coined word, the test is to see as to whether this word is of ordinary language. Learned Counsel for the defendants could not dispute that the word PLASTINDIA is not a word of ordinary language which is found in English dictionary. In that case the following observations of the aforesaid judgment of Globe Super Parts (supra) give us the further guidance:
“Para 45. …..In case of fancy, invented, coined word the case is much easier, as a reference to the authoritative dictionaries of the language would clearly establish whether the word in question, exits in the language dictionaries, if not, it is a coined, fancy, invented word which is not a part of the language. Such word must be found to be owned by the person who has to devised the word, by applying the skill and labour rest, laid down in inter alia in AIR 1924 PC 75; (1960) 1 Mad. LJ 53 : (AIR 1961 Mad. 111), which test is applicable in all copyright cases. The test being based on the principle that what is protected is what has originated from the author (1964) 1 All ER 465 Ladbroke Football, relying upon (1894) AC 335). What originates from the author as a result of exercise of his skill and labour, is his “expression” which is protected by the law of copyright. The “skill and labour” does not depend upon the time taken by the author as grater is the skill of the author less will be the time taken what would be relevant would be whether what has originated from the author is new, or distinctive, even a successful adaption from another language.”
14. From the material placed on record by the plaintiff its reputation and goodwill in its trade mark PLASTINDIA FOUNDATION cannot be disputed. In ‘PLASTINDIA FOUNDATION’ the word Foundation denotes some sort of society or trust with main emphasis on the PLASTINDIA. This PLASTINDIA is inseparable and integral part of plaintiff's trade mark. Among other activities-of the plaintiff, important activity is the publication of the news letter with the name PLASTINDIA FOUNDATION. The defendants have started their publication with the trade mark PLASTINDIA. Once it has held that PLASTINDIA is not a descriptive word but a coined word which is now associated with the plaintiff because of its reputation and goodwill and further that the word PLASTINDIA is inseparable and integral part of the plaintiff's name, the defendants' adaption of the name PLASTINDIA for their magazine would be an infringement of the plaintiff's right and would amount to passing off of the defendants' publications that of the plaintiff's. Similar argument of the defendants as advanced here was rejected in the case of Hidesign v. Hi-Design Creations, 1991 PTC 178, where the defendants tried to distinguish the trade mark Hi-Design Creations from the trade mark Hidesign. I am not convinced by the attempts of the defendants in trying to state the dissimilarities between the two marks or the nature and contents of two publications. In fact it is an attempt made in desperation after the defendants have adopted the same trade mark as that of the plaintiff for their publication by knowing fully well the reputation and goodwill which the plaintiff enjoys. The defendants cannot be allowed to ride upon the reputation of the plaintiff's trade name. The primary purpose of the two publications is same. By trying to allege some dissimilarities which are not of much consequence, the defendants are in fact travialising the whole issue. The intention of the defendants in encashing upon the reputation and goodwill of the plaintiff would be amply dear from the fact that even the domain name and e-mail address chosen by the defendants is deceptively similar to that the plaintiff. Confusion is bound to arise. It is not necessary to go into the instances stated by the plaintiff alleging actual confusion which are denied by the defendants. In a suit for passing off injunction can be granted on evidence of prior user without proving actual loss. Parkash Metal Works v. Square Automation Pvt. Ltd., Cases and Material on Trade Marks 734. Even if that is ignored, it is a clear case of causing likelihood of confusion. It is a matter of common knowledge that the advent of computers and internet has changed the entire complexion and the manner in which the business is transacted. There can be a booking of advertisements on website and e-mail and knowing that advertisers may confuse the magazine of the defendants as that of the plaintiff's, the defendants have even chosen confusing similar domain name and e-mail. Although at the time of arguments, learned Counsel for the defendants stated that the defendants were ready to change the website, domain name as well as e-mail address and are also ready to give an undertaking that its activities would confine only to publication and would not indulge in any other activity which is the plaintiff is carrying on, it is too late in the day to make such a concession. By adoption of the trade mark PLASTINDIA for its magazine along with domain name and e-mail address identically similar to that of me plaintiff's, the defendants have exposed themselves of their intentions. As per the defendants' own showing they are commoners. When they wanted to start the magazine, they chose the name of the magazine, domain name and e-mail address with clear motive to ride on the reputation of the plaintiff as they were entering the arena for the first time as commoners. This argument of the defendants also does not gel with the Court that the name of their publication is registered with the Registrar of Newspapers or that they had given five names to show their bona fides and it is the registration authorities which allotted them the trade mark in question out of those five names. May be five names were given. However, fact remains that name PLASTINDIA was also included knowing fully well that the plaintiff had the publication with the similar name. They could have avoided to give this name if the intentions were bona fide. Insofar as question of right to use the mark because of registration of their trade name under the Press Act is concerned, such a contention was negatived by this Court in the case of Ziff-Davis Inc. v. Dr. D.K Jain, 1998 PTC 739. To the same effect is the judgment of this Court in the case of Montari Industries Ltd. v. Montari Overseas Ltd., 57 (1995) DLT 771 : 1995 PTR 45. It has been held in these cases that:
“The Companies Act make provision for companies not being registered with the undesirable names and have change and rectification of the names of the company. These provisions do not exclude the right of a person adversely effect to maintain an action in passing off. Such action is founded on civil right of the aggrieved party having been wronged. Where there is a wrong, there is a remedy this Court is complete answer to the defendant's contention that the right of the plaintiff to file civil suit or the discretion of the Court to grant ad interim injunction was in any manner eclipsed or pre-empted by Sections 20 to 22.”
15. The Court also held that:
“The trend of judicial opinion appears to be that reputation or goodwill in business generally attaches with the trade name adopted by a house. Such reputation or goodwill would be protected by the Court. Copying of the name by a competitor is likely to cause an injury to its business. No one is entitled to commence or carry on business in such a way as to represent it to be the business of someone else or at least associated with such someone else. If a person or house uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business house, then the impugned action or intended action would be prevented by the Courts on the same principles which are applicable to ordinary cases of passing off relating to sale of goods. Also innocence of the defendant is no defence. The law applies with more rigour when the defendant is an inanimate person such as a company and when the name consists of a coined word.”
16. Heavy reliance was placed by the learned Counsel for the defendants on the judgment of this Court in the case of Samsonite Corporation v. Vijay Sales, 1998 PTC 372 and particularly the following quote from Benchairs Ltd. v. Chair Centre Ltd., (1974) RPC 429, CA.
“The essence of passing off is the false representation by the defendant that his goods are those of the plaintiff as has been laid down by the authorities for well over a century in numerous cases. (1974 RPC 429 at 435). If there is no such false representation there can be no passing off, and the mere copying of the shape of the plaintiffs' article is not in itself such a representation. Anyone is entitled, subject to some monopoly or statutory right preventing him, to copy and sell any article on the market, and false representation and passing off only arise when a defendant does something further which suggests that the article which he is selling is that of the plaintiff. This he may do by a direct representation to that effect such as by the use of the plaintiff's name or mark, or by an indirect representation such as by imitation or get-up by enclosing the article in a distinctive package which is similar to that used by the plaintiff.
Graham, J. said:
These cases are binding on this Court and make it quite clear in my judgment that there must be something more than mere similarity between the goods themselves to amount to a representation constituting passing off… The only qualification I would wish to make to the propositions of law set out above is that I think there might be a case where an article itself is shaped in an unusual way not primarily for the purpose of giving some benefit in use or for any other practical purpose, but in order purely to give the article a distinctive appearance characteristic of the particular manufacturer's goods. In such an event it seems to me possible that such manufacturer must be able in course of time to establish such a reputation in such distinctive appearance of the article itself as would give him a cause of action in passing off if his goods were copied, because in the circumstances assumed the putting of the copy on the market would amount to a representation that it emanated from the plaintiff. Such a possibility is no doubt remote but it is not impossible, and the holding of passing off would not be inconsistent with any of the cases cited above.’
In the instant case he rejected passing off and therefore the summary of law was not called upon to be considered on appeal, but it is suggested that the traditional scope of the tort of passing is accurately and amply set out in that judgment.”
17. The learned Counsel read that portion of this para where it is stated that the essence of passing off is “the false representation by the defendant that his goods are those of the plaintiff and that false representation and passing off only arise, when a defendant does something further which suggests that the article which he is selling is that of the plaintiff. This judgment is clearly not applicable to the facts of the present case because of the view I have taken as stated above.
18. Learned Counsel for the defendant also relied upon the case of Indo-Pharma Pharmaceutical Works Ltd., Mmbai v. Citadel Fine Pharmaceuticals Ltd., Madras, 1998 PTC (DB) 775, with emphasis on conclusion No. (c) of para 56 thereof at page 792 reading as under:
“(c) The word ‘ENERJ’ is an abbreviation of a generic name ‘energy’. The word ‘energy’ is a commonly used word and would be the description of energising product. A generic name of a product cannot be treated as a trade mark to indicate the origin. The prefix for both the marks, viz., ‘ENERJ’ is common to-the-trade and cannot be a proprietary name. Nobody can claim exclusive right to use such an abbreviation.”
19. This case is also of no help to the defendants as the generic word ‘energy’ was only spelt out differently as ‘ENERJ’ although phonetically both the words would be pronounced in the same manner and in these circumstances, the Court treated ‘ENERJ’ as a prefix of generic word ‘energy’. It is not the case here where the word PLASTINDIA is coined from the two words Plastic and India and the word PLASTINDIA is admittedly not a generic word.
20. For same reason judgment of Madras High Court in the case of Asiatic Government Security Life Assurance Co, Ltd. v. New Asiatic Insurance Co. Ltd., AIR 1939 Madras 555 or Andhra Pradesh High Court in the case of Teju Singh v. Shanta Devi, AIR 1974 AP 274, cannot be of any avail to the defendants.
21. This application is accordingly allowed, Ad-interim injunction is passed restraining the defendants, their agents, distributors, stockists and all others acting on their behalf from printing, publishing, selling, offering for sale, distributing, advertising, or directly or indirectly, dealing in any publication under the mark PLAST INDIA or any deceptive variant of the plaintiff's mark/trade mark PLASTINDIA, or from using the mark PLAST INDIA or any deceptive variant as part of its trading style, or as a domain name, or as website or as part of their e-mail address or in any manner pass off their goods, services and business as those of the plaintiff till the disposal of the suit. However, it is made clear that there is no injunction on the publication of the defendants and the defendants can continue the publication by changing the mark/name PLASTINDIA to that of any other name. The defendants had submitted the application to the Registrar of Newspapers for India in which five names were suggested including PLASTINDIA. Other four names were ‘PLAST WORLD, WORLD PLAST, THE PLASTIC NEWS OF INDIA AND PLASTIC TIME’. It would be open to the defendants to adopt any one of these names, get the same registered and publish their magazine under the said changed name.
22. Needless to mention, what is stated above is only a prima facie view and a tentative expression which will have no bearing on the final outcome of the present suit.
Suit decreed.
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