Sharda Aggarwa, J.— The plaintiff is a company incorporated in Japan. The plaintiff's line of operation includes manufacture and sale of motorcycles, motor cars, power equipments etc. It also provides financial services. It is pleaded that the company is manufacturing and marketing its products all over the world under the trade mark HONDA, which is of international repute. It is one of the largest producers of automobiles in the world and has over 100 production facilities in 39 countries of the world including India and its products bearing the mark HONDA are sold in more than 160 countries. The plaintiff is known for its innovative techniques and is committed to produce quality products. It takes keen interest in promoting clean environment, low emission and low fuel consumption. These coupled with traffic safety requirements of international standard has made it one of the most prominent and responsible multinational corporations in the world. It has acquired international dimensions. It started exporting its motorcycles under the mark HONDA to U.S.A as early as in the year 1959. Later on it also developed the manufacturing operations in U.S.A for motor cars. A number of manufacturing units were also developed in various countries of Europe. It started retailing and exporting of motorcycles in various countries of Asia since late fifties. It is averred that it has been using the trade mark HONDA for its products in India since 1957. Its quality products and marketing the same tinder the mark HONDA has helped it to achieve a very high turn over. The plaintiff in para No. 7 of the plaint has given a statement showing the net sales and other operating revenues of the company between the years 1974 and 1997. On account of its initial adoption and its extensive use, the mark HONDA became exclusively associated with the plaintiff in the eyes of the consumers. It in fact, became a house mark of the plaintiff. It is averred that the plaintiff's products bearing the mark HONDA are being advertised in well known journals having international circulation e.g Asia Inc., Asia Week, Forbes etc. Its products bearing the mark HONDA have also been advertised in many international magazines including “National Geographic” having considerable circulation in India. It also entered into collaboration arrangements in India with Indian companies. In 1983, it entered into a joint venture with Hero Cycles Pvt. Ltd., a company belonging to Punjab based Munjal Group for manufacturing motorcycles. The joint venture company, “Hero Honda Motors Limited” was permitted to use the mark HERO HONDA. Another joint venture company was promoted in the year 1985 named Shriram Honda Power Equipment Ltd., presently known as Honda Siel Power Products Ltd. This company is engaged in the manufacturing of generator sets. The mark “HONDA” was allowed by the plaintiff to be used as part of the trade mark of the said company “SHRIRAM HONDA”. Lately in the year 1997, the plaintiff promoted another company Honda Siel Cars India Ltd., which is engaged in the manufacture and sale of motor cars under the house mark HONDA and the sub-brand City. The plaintiff's cars otherwise are being sold in India for the last many decades. The plaintiff has also obtained several registrations of the trade mark HONDA in India in various classes under the Trade and Merchandise Marks Act, 1958. It has also applied for registration of the trade mark HONDA in all the classes contained in 4th Schedule to the Trade and Merchandise Marks Rules, 1959. The plaintiff's case is that the goodwill and reputation of its mark HONDA has made the said mark distinctive of the plaintiff being a symbol of high quality products.
2. In April, 1991, the plaintiff came to know from the Trade Marks Journal dated 1st April, 1991 that an application for registration of trade mark HONDA in respect of pressure cookers (non-electric) had been filed in the name of M/s. Steel India, defendant No. 5. The plaintiff opposed the said application by taking out opposition proceedings before the Registrar, Trade Marks. Vide a detailed order dated 19th October, 1995, the Registrar allowed the opposition application of the plaintiff and rejected the application for registration of the defendants. The said order is alleged to have become final against the defendants as no appeal was preferred. The plaintiff assumed that after the rejection of their application, the defendants had discontinued the use of mark HONDA on their goods. The plaintiff was, however, shocked to see an advertisement in the Trade Mark Journal in the year 1999 about defendants moving another application for registration of trade mark HONDA in Class 21. That application is being contested by filing opposition before the Registrar. When the plaintiff came to know that the defendants were still using the trade mark HONDA in respect of their goods, a cease and desist notice was served on them to which they did not reply. Left with no option, the plaintiff filed the present suit for permanent injunction, passing off, rendition of accounts and delivery up etc., against the defendants alleging that the defendants, by using the mark HONDA in respect of their goods pressure cookers, are passing off the same as the goods of the plaintiff and encashing upon the plaintiff's goodwill and reputation attached to its mark HONDA. The plaintiff has prayed for restraining the defendants, their servants, agents, stockists and all other persons acting on their behalf, from using the trade mark HONDA in respect of pressure cookers or other goods or any other alleged and cognate goods or any other trade mark/mark identical with or deceptively similar to the trade mark HONDA of the plaintiff and in any manner passing of their goods as that of the plaintiff. On the same lines, interim injunction is prayed against the defendants by moving an application under Order 39 Rules 1 and 2, CPC. No ex-parte ad-interim injunction was granted as the defendants had filed a caveat. Accordingly, they were put to notice. It is this application, which I propose to dispose of by this order.
3. The names of defendants 2, 3 and 4 were deleted at the request of the learned Counsel for the plaintiff as defendant No. 5, M/s. Steel India, was stated to be the proprietorship concern of defendant No. 1.
4. Defendants resisted the present application. They contend that they are carrying on the business of manufacturing the marketing of ‘pressure cookers’ under the trade mark HONDA since the year 1985. It is pleaded that the impugned trade mark is registered in the name of the plaintiff for the goods which are entirely different from the goods of the defendants. Also the visual presentation of the mark HONDA, under which the defendants' products are being marked, is such that no confusion and deception of any kind can arise. Defendants further plead that the goods of the parties are vastly different physically and no consumer can take the defendants' goods as that of the plaintiff. They also claim to be the prior users of the trade mark/lable HONDA in respect of pressure cookers. Another defence raised is that the trade marketed, HONDA is common to the trade and is a common surname for which the plaintiff cannot claim any exclusive proprietary rights. It is also contended that the plaintiff has not used the mark HONDA in India independently but is using it with some added matter as HERO HONDA, SHRIRAM HONDA, HONDA CITY etc. The plaintiff's action is also contested on the ground that there is delay on the party of the plaintiff in initiating action against the defendants and thus on account of inordinate delay, laches, waiver and acquiescence, the plaintiff is not entitled to any relief in the suit. According to the defendants, their business is confined to Punjab, Himachal Pradesh, Jammu and Kashmir and Bihar and their products are not sold in Delhi. Defendants have, however, not denied that they had earlier moved an application for registration of trade mark HONDA for their products, which was opposed by the plaintiff and their application was dismissed by the Registrar, Trade Marks. Even the moving of second application in the year 1999, for registration of trade mark HONDA for their product is not disputed.
5. I have heard Mr. Rajiv Nayyar, learned Senior Counsel for the plaintiff and Mr. S.C Chadha, learned Counsel for defendants at length.
6. The plaintiff's suit is an action for passing off, on the basis of alleged unfair practice of the defendants, who have appropriated the renowned trade mark HONDA of the plaintiff for their goods causing deception and confusion in the minds of purchasers, so as to pass off their goods as that of the plaintiff. The substantive law of passing off is entirely based on common law i.e case law. In an action for infringement of a trade mark, title of the plaintiff is established by evidence of registration whereas in a passing off action, title is established by the evidence of reputation and goodwill of the business acquired by the use of a mark, symbol or other badge. The concept of passing off has undergone considerable changes in the course of time. It is applied to many forms of unfair trading and unfair competition where the activities of one person cause damage or injury to the goodwill associated with the activities of another person or group of persons. The concept of passing off has come up for consideration in a catena of English and Indian decisions. A classic decision on “passing off” is the case of Singer Manufacturing Company v. Loog, (1880) 18 Ch.D 395, when it was held as under:
“No man is entitled to represent his goods as the goods of another man; and no man is permitted to use any mark, sign or symbols, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate consumer.”
7. The above principle was followed in the case of Thomas Bear and Sons (India) Ltd. v. Prayag Narain, (1941) 58 RPC 25 (AIR 1940 PC 86). Yet in an earlier case in Perry v. Truefitt, (1842) 6 Beav. 66, Lord Langdale observed as under:
“A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practise such a deception nor to use the means which contribute to that end. He cannot, therefore, be allowed to use names, marks, letters or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person.”
8. It is clearly indicated from the above observations that the action in passing off is an actionable wrong where a person passes off his goods as the goods of another.
9. What are the essential characteristics of an action of passing off has also come up for consideration in umpteen number of judgments. In Erven Warnink B.V v. J. Townend and Sons (Hull) Ltd., 1980 RPC 31, Lord Diplock stated the essential characteristics of a passing off action as under:
“(1) misrepresentation, (2) made by a person in the course of trade, (3) to prospective customers of his or ultimate consumers of goods of services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably forcible consequence, and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timt action) will probably do so.”
10. The essentials of passing off action as stated in Halsbury's Laws of England Vol. 38 (3rd Edition) para 998 as reproduced below are worth noting:
“998. Essentials of the cause of action.—The plaintiff must prove that the disputed name, mark, sign or get up has become distinctive of his goods in the sense that by the use of his name or mark, etc. in relation to goods they are regarded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff's firm should be known……….. The plaintiff must further prove that the defendant's use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill and the plaintiff's business, as for example, by depriving him of the profit that he might have had by selling the goods which exhypothesi, the purchaser intended to buy. Thus, the cause of action involves a combination of distinctiveness of the plaintiff's name or mark and an injurious use by the defendant of the name or mark or a similar name or mark, sign, picture or getup does or does not amount to passing off is in substance a question of evidence; the question whether the matter complained of is likely to deceive is a question for the Court.”
11. In Bata India Ltd. v. Pyare Lal and Co., AIR 1985 All. 242, it was observed as follows:
“Where a trader uses the name or mark or sign deceptively similar to that of the second trader in relation to goods marketed by the former even though it may not be the same goods or the same type of goods as produced by the second trader, yet a question of passing off may arise. The main consideration will be whether there is a misrepresentation.”
12. It is also well settled that the plaintiff in passing off action does not have to prove that he has actually suffered damage by loss of business or in any other way. A probability of damage is enough but the actual or probable damage must be damage to him in his trade or business i.e, damage to his goodwill in respect of that trade or business. It was so observed in Bulmer v. Bellinger, (1978) RPC 79 (CA).
13. It has further been observed in Apple Computer v. Apple Leasing, 1993 IPLR 63 [1992 (1) Arb. LR. 93 (Delhi)], that it is not even necessary in the context of the present day circumstances of free exchange of information and advertising through newspapers, magazines, video, T.V Movies, freedom of travel between parts of the world to insist that a particular plaintiff must carry on business in a jurisdiction where improper use of its name or mark can be restrained by the Court. It was also observed that in a case of passing off action, the main consideration is the likelihood of confusion and consequential injury to the plaintiff, and the need to protect the public from deception, deliberate or otherwise.
14. In a nutshell, in an action for passing off, the plaintiff has to establish that his business or goods has acquired the reputation he is claiming, by showing that, his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The plaintiff is, however, not required to establish fraudulent intention on the part of the defendant. Causing of actual confusion amongst the customers is also not to be proved. What is required to be established is the likelihood of deception or confusion in the minds of the public at large. The likelihood or probability of deception depends on a number of factors, which necessarily, is a question of fact and varies in the circumstances of each case. The plaintiff has also to establish that the defendant's user of the plaintiff's marks, letters or other indicia with regard to his goods is likely to lead to confusion in the minds of public, and such confusion is likely to cause damage or injury to the reputation, goodwill and fair name of the plaintiff. The plaintiff has also to show his prior user of the trade mark, in point of time than the defendant. The plaintiff, however, need not prove actual loss or damage in an action of passing off. Also registration of the trade mark is inconsequential in such an action.
15. For grant of interim injunction, what is to be seen is as to whether the plaintiff has a prima facie case. The mark HONDA is not only the trade mark of the plaintiff, but it also forms part of its corporate name. With the passage of time, the word “HONDA” has attained world wide recognition and is associated with the plaintiff company. The plaintiff's products specially cars and motorcycles are known all over world for their superior quality and the mark HONDA has acquired substantial international reputation and goodwill.
16. It is contended by the learned Counsel for the plaintiff that the plaintiff's products are being imported into India since late fifties which has made HONDA a household name with the consumers in India. It is also contended that the plaintiff's goodwill and reputation also reached India through various advertisements, published by the plaintiff in many international journals. Even the cars, manufactured by the plaintiff, are in use in India for the last many decades. The plaintiff has placed on record documents to prima facie show that the mark HONDA is of international repute and is also being used in India for the last about five decades. Photocopies of the journal “Business Week” placed on record shows the international ranking of HONDA. The photocopies of the magazines “Asia Inc.” and “Asia Week” show some write ups about the plaintiff's business activities signifying its world wide reputation. Some extracts from the magazine “National Geographic” having considerable circulation in India, more particularly from some of its issues pertaining to the period from 1971 to 1979 containing advertisements of HONDA have been placed on record. Extracts from some issues of Asia Inc., Asia Week and Forbes carrying on advertisements of HONDA have also been placed on record. All these magazines are having circulation in India. These documents prima facie show that the name of HONDA has been known in India for the last five decades. Photocopy of the annual report of HERO HONDA (at pages 45 to 66 of the documents file) show that the company HERO HONDA MOTORS LTD. was promoted by the plaintiff in joint venture with HERO CYCLES PVT. LTD., which was prior to 1985. A document at pages 67-68 (documents file) shows that public issue of SHRIRAM HONDA POWER EQUIPMENTS LTD. was opened on 31st August, 1987. Not only this, some invoices of HONDA products showing its sales in the year 1982-1983 have also been placed on record. A list of persons owing HONDA cars in India from 1965 to 1990 is also placed on record. Some other documents like statement of account and documents pertaining to commission paid to “T.I.M and Sales Ltd.” and “Giriraj and Associates”, for sale promotion expenses, have been placed on record. These documents indicate that sale promotion activities of plaintiff's products were going on in India even during the period 1982-1983. Reference has also been made to a statement mentioned in para 7 of the plaint giving the net sales of the plaintiff between 1974 to 1997. The plaintiff has also placed on record the registration certificate and their renewals which the plaintiff had obtained for the trade mark HONDA. Not only that, the plaintiff has also applied for registration of trade mark HONDA in all classes contained in 4th Schedule of Trade and Merchandise Marks Rules.
17. The learned Counsel for the plaintiff brought to my notice that trade mark HONDA came for consideration by Indian Courts on suits filed by the plaintiff for its user by other various traders for allied and cogent goods like rubber parts, paints etc. and some of the Courts have even passed interim orders and some have even decreed the suits. My attention has also been drawn to a number of cases in which offending traders illegally using the plaintiff's mark HONDA have given an undertaking that henceforth they will not use the plaintiff's mark after they were served with ‘cease and desist’ notice. Documentary evidence has been placed on record by the plaintiff. To my mind, the material placed on record, prima facie show that the plaintiff's mark HONDA has acquired substantial international reputation and goodwill and the consumers in India are aware of the same for the last several years. It is prima facie established that the mark HONDA has become distinctive of the goods of the plaintiff and the purchasing public at large associates the plaintiff's name with the said mark.
18. Learned Counsel for the plaintiff contends that the defendants, have used the mark HONDA for their product ‘pressure cookers’, in order to encash upon goodwill and reputation of the plaintiff by inducing the customers to buy their products taking them as those of the plaintiff. The defendants are thus passing off their goods as that of the plaintiff's. It is, therefore, urged that defendants should be restrained from using the mark HONDA for their products. It is submitted that this user by the defendants also dilutes the plaintiff's reputation and goodwill, which is known for its high quality products.
19. Learned Counsel for the plaintiff has further emphasized the manner in which the mark HONDA is used by the defendants for their product pressure cooker. It is pointed out that from the defendants' application for registration of the trade mark HONDA, which is available on documents filed it is apparent that the trade mark HONDA has been shown in a circular device. The added matter is “SI PRODUCTS’ perhaps indicating the name of the defendants firm “Steel India Products”. In this representation the mark HONDA is so prominent that the added matter “SI PRODUCTS” is likely to be over-looked by the producer and he would purchase the product pressure cooker, taking it to be of the plaintiff or associated in some manner with the plaintiff. In the second application for registration of the trade mark, which is pending consideration before the Registrar of Trade Marks, the defendants have even removed the added matter “SI PRODUCTS” and the mark HONDA has been shown prominently in a circular device, which in all respects is identical to the plaintiff's mark. Apparently the defendants have done so with dishonest intention so as to create a deception in the minds of the public and pass off their products as those of the plaintiff, encashing upon its goodwill and reputation. This representation of the mark HONDA appears on page 2 of the list of documents dated 12th January, 2001 filed by the defendants. Another label showing the mark HONDA used or intended to be used by the defendants has been placed on record by the defendants at page 2A of the above stated list. This shows the mark HONDA prominently in the same style, which is used by the plaintiff with the added matter “Steelindia” above and “pressure cooker” below the mark HONDA. The added matter is in italics and the font is so small that it can hardly be noticed. The whole prominence is taken by the mark HONDA. It is submitted that such depiction of the mark HONDA in the labels used by the defendants are likely to lead the public to believe that the goods offered by them are the goods of the plaintiff. It is further contended that the plaintiff is likely to suffer damage by reason of the erroneous belief likely to be entertained by the public, that the source of the defendants' goods is the same as that of the plaintiff or the defendants' goods are in some manner associated with the plaintiffs.
20. The main contention of the defendants is that the defendants have been using the mark HONDA for their product pressure cooker since 1985 and the visual presentation of the mark of their product is such that no confusion and deception of any kind can arise in the minds of the purchasers. It is contented that the impugned mark HONDA of the plaintiff is entirely for different goods, as compared to those of the defendants.
21. The defendants have placed on record a search report for the trade mark HONDA and copies of the defendants invoices issued to their purported customers, to indicate that the defendants had been using the trade mark HONDA for pressure cooker for many years. Learned Senior Counsel for the plaintiff points out that the plaintiff took action against the parties whose names and addresses are provided in the search report. Cease and desist notices have been served upon most of them and even suits have been filed against some of them. No response was received from some of them and on inquiry, it transpired that they had already stopped the business, some gave undertaking that they would discontinue the user of the trade mark HONDA. Some instances, against whom action is taken by the plaintiff, are shown in the replication to the amended written statement. Out of the 234 documents purported to be invoices issued by the defendants to show that they have been dealing with sale of pressure cookers under the mark HONDA, for many years, the plaintiff has issued 64 letters to the persons/entities, to seek confirmation as to whether in fact they have been purchasing the goods from the defendants or not. Only a few have responded, who have denied having any trade relation with the defendants. Only one person has stated that he had some relation about 10 years ago. The invoices of any case relate to the period 1988 onwards.
22. As discussed above, the plaintiff has prima facie placed sufficient material on record to indicate that it had been using the mark HONDA for the last about five decades. The plaintiff has also placed on record prima facie evidence that its mark HONDA is of international repute and is known for its quality products. There is also material placed on record which prima facie shows that the mark HONDA is known, not only internationally but even in India since late 1950's through advertisements in various international journals and magazines. Prima facie it also appears that the plaintiff is using the mark HONDA prior to that of the defendants. Though the plaintiff has placed on record sufficient material to prima facie show its prior user of the mark HONDA, the learned Counsel for the plaintiff submits that even otherwise the plaintiff's action for passing off is maintainable as the goodwill and reputation of its mark HONDA is not confined to one country, as it has travelled and spread all over the world. Reference in this respect is made to N.R Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300, case, where it was observed that the goodwill is not limited to a particular country as in the present days the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. It was also observed that the goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are easily available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other media. It also observed that the trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. Another authority on this proposition is 1996 PTC (16) 293; Calvin Klein Inc. v. International Apparel Syndicate.
23. Learned Counsel for the defendants contend that the plaintiffs are dealing in automobile products and power generated equipment, whereas the defendants product is pressure cooker and as such the two sets of goods are neither allied nor cognate, much less identical and as such there is no likelihood of any deception or confusion being caused in the minds of the public to purchase the defend ants' goods as those of the plaintiff's.
24. The case of the plaintiff is in fact based on passing off action and not for infringement of the trade mark. It has never been the case of the plaintiff that the two sets of goods are identical. The concept of passing off, which is a form of tort has undergone changes with the course of time. The plaintiff now does not have to be in direct competition with the defendant to suffer injury from the use of its trade name by the defendants.
25. Learned Senior Counsel for the plaintiff contends that the trade mark HONDA has a unique goodwill and reputation all over the world and the use thereof by the defendants will dilute plaintiff's goodwill and reputation, as the public while purchasing any product under the said trade mark would believe that the said item might have come from the house of HONDA. The distinctiveness of the mark HONDA of the plaintiff is likely to be eroded and debased. In Taittinger v. Allbev Ltd., (1993) FSR 641 (CA), per Peter Gibson LJ, observed:
“By parity of reasoning it seems to me no less obvious that erosion of the distinctiveness of the name champagne in this country is a form of damage to the goodwill of the business of the champagne houses.”
In the same judgment Sir T. Bingham said that:
“Champagne” has an exclusiveness which is impaired if it is used in relation to a product (particularly a potable product) which is neither champagne nor associated or connected with the business which produce champagne. The impairment is a gradual debasement; dilution or erosion are not demonstrable in figures of lost sales but that they will be incrementally damaging to goodwill is in my opinion inescapable.”
26. Learned Counsel for the plaintiff to support the proposition that in passing off action it is not material if the plaintiff and the defendant trade in the same field or trade in different products, has relied upon the following judgments:
27. Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Del. 239; Ciba-Geigy Ltd. v. Surinder Singh, 1998 PTC (18) 545; Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bombay 24 (V 56 C 5); Lego System Aktieselskab v. Lego M. Lemelstrich Ltd., Fleet Street Reports (1983); The Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Co., 1899 (16) RPC 12; Surjit Singh… v. Alembic Glass Industries Ltd.…., AIR 1987 Delhi 319; Essel Packaging Ltd. v. Essel Tea Exports Ltd., 1999 PTC (19) 521; Banga Watch Company v. N.V Philiphs, AIR 1983 Punjab and Haryana 418; Bata India Ltd. v. Pyare Lal and Co., AIR 1985 Allahabad 242; C.A Shimer (M) SDNBHD, 2000 RPC 484; Harrods Ltd. v. R. Harrod Ltd., (1924) 41 RPC 74.
28. In all the aforesaid decisions relied upon by the plaintiff, injunction was granted in favour of the plaintiff on the basis of an action of passing off even though the plaintiff and defendant were trading in altogether different products. I would deal with some of the afore-noted decisions.
29. In Daimler Bern's case (supra), the plaintiff was using the trade mark MERCEDES BENZ in relation to vehicles, whereas the defendant had started using the trade mark BENZ in respect of undergarments. The Court granted injunction restraining the defendant from using the trade mark BENZ as well as “three pointed human being in a ring”. The judgment was upheld by the Supreme Court. The following observations made in this judgment are worth-noting:
“There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. “Benz” as name of a car would be known to every family that has ever used a quality car. The name “Benz” as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognize the name “Benz” used in connection with cars. Nobody can plead in India, where “Mercedes Benz” cars are seen on roads, where “Mercedes” have collaborated with TATAs, where there are Mercedes Benz-Tata trucks have been on roads in every large number, (known as Mercedes Banz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word “Benz” as used with reference to car or trucks.
In my view, the Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide.”
30. In Ciba Geigy Ltd.'s case (supra), the plaintiff was using the mark CIBA, CIBACA in relation to goods different than those of the defendant's. The defendant was using the trade mark CIBACA in relation to filters for motor vehicles. The case of the defendant was that the goods in question were entirely different and as such there was no question of any deception being cause in the minds of the public, when trade mark CIBACA was used in relation to altogether different goods. While coming to the conclusion that the defendant had adopted the mark CIBACA deliberately with the intention of creating confusion in the minds of the public so as to pass off its goods as those of the plaintiff, the Court granted injunction restraining the defendants from using the plaintiff's trade mark by the defendants for altogether different goods, as the use of the trade mark CIBACA by the defendant was held not to be honest.
31. Again in Sunder Parmanand Lalwani v. Caltex India Ltd. case(supra), the goods were totally different having no trade connection between them. The matter was in appeal before the High Court from the orders of the Registrar, Trade Marks. The dispute related to mark CALTEX used by the applicant for watches for which he had applied for registration, whereas the defendant, Caltex India Ltd., who used it for their products like lubricants, grease, oils, etc. filed opposition before the Registrar Trade Marks. The Registrar dismissed the opposition holding the applicant to be the proprietor of the trade mark. Though the competing marks were held to be identical but the application was rejected on the ground that ??? competing goods were entirely different. Caltex (India) Ltd. appealed to the High Court, which was allowed. One of the points for decision before the High Court was as to whether the use of the mark was likely to deceive or cause confusion i.e, whether there was any tangible danger of deception or confusion being caused by the word/mark “CALTEX” in the minds of the purchaser. The High Court after considering the respective pleas of the parties held as under:
“In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark “Caltex” are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches, the class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap.”
32. In Lego's case (supra), the plaintiff was using the trade mark Lego in respect of toys, whereas defendant started using the trade mark LEGO in relation to irrigation equipment. Even though the trade mark LEGO was being used for different products, the Court granted injunction against the defendant holding that the plaintiff had established high reputation for the mark Lego which extended beyond the field of toys and construction kits and the mark Lego had acquired distinctiveness as the products of the plaintiff. It had become a house-hold word. It was also observed that in the law of passing off, there was no limitation in respect of parties field of activity.
33. In Dunlop's case (supra), the plaintiff was using the trade mark DUNLOP in respect of tyres whereas the defendant was using the same in respect of oil and lubricants. On a suit for passing off action filed by the plaintiff, defendant was restrained from using the mark DUNLOP for its products and for its business name.
34. In Alembic Glass Industries Ltd.'s case (supra), the respondent used the trade mark YERA in respect of glassware including jars and bottles, whereas the appellant Surjit Singh started using the same in respect of perfumery and cosmetics. The appellant lost before the Registrar of Trade Marks and filed an appeal before the High Court. while dismissing the appeal it was held as under:
“Held, the word ‘YERA’ was being copied by the petitioner in order to take advantage of the reputation acquired by the trade mark. Perfumery and cosmetics manufactured by the petitioner are sold in bottles and glass containers and if the trade mark “YERA” appears on these bottles and glass containers, there is likelihood that a common man who would go to buy these perfumery and cosmetics would be led to believe that these goods were manufactured by the opponent company. The petitioner was, therefore, not entitled to registration under Section 11(a). Case law discussed.”
35. In Essel Packaging Ltd. v. Essel Tea Exports Ltd. case (supra), the High Court of Bombay after considering Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd. and Bajaj Electricals Pvt. Ltd. v. Metals and Allied Projects, AIR 1988 Bombay 157, held, that common field of activity is not conclusive for deciding whether there can be passing off action, although at one point of time the said test was treated as conclusive. It was held that with the passage of time the law of requirement of common field of activity in a passing off action has undergone a radical change and as such there was no requirement for a common field of activity to found a claim on passing off action, because the real question in each of such cases is, whether there is, as a result of misrepresentation, a real likelihood of confusion or deception of the public and consequent damage to the plaintiff is likely to be caused and if that is taken to be the test then the focus is shifted from the external objective test of making comparison of activities of the parties, to the state of mind of public, in deciding whether it will be confused. Applying these principles the injunction in favour of the plaintiff was granted.
36. In Banga Watch Co. v. N.V Philliphs case (supra), the plaintiff N.V Philliphs was using the trade mark PHILLIPHS, which had become a household mark and had acquired enviable reputation in India and throughout the world dealing in electrical and electronic goods. The defendant was using the trade mark PHILLIPHS in respect of watches and clocks.
37. In Bata India Ltd.'s case (supra), the plaintiff was using the trade mark in respect of canvas, rubber, leather shoes, rubber footwear, etc. Whereas the defendant started using the trade mark Bata and Batafoam in relation to mattresses. The Court after discussing in detail the law on passing off action granted injunction in favour of the plaintiff despite the fact that the same trade mark was being used for different goods.
38. In the light of the above pronouncements, the proposition pleaded by the defendants held since they are dealing in entirely different products, there is no likelihood of any confusion or deception in the minds of the consumers, is rejected.
39. Learned Counsel for the defendants on the contrary has placed reliance on the following authorities:
40. Nestle's Products Ltd. v. Milkmade Corporation, AIR 1974 Delhi 40; The Procter and Gamble Co. v. Satish Patel, PTC (1996) 646; Kedar Nath Gupta… v. J.K Organisation…., 1998 PTC (18); United Brothers… v. United Traders…, PTC 1997 Delhi 603; Sony Kabushiki Kaidha v. Shamrao Masker, AIR 1985 Bom. 327; Vishnudas v. The Vazir Sultan Tobacco Co. Ltd., AIR (1996) 2275; Thomas Bear and Sons v. Prayag Narain, AIR 1940 Privy Council 86; S.M Dyechem Ltd. v. Cadbury (India) Ltd., PTC 2000 397 (SC); Relaxo Rubber Ltd. v. Aman Cable Industries, PTC 1998 Delhi 758; London Rubber v. Durex, AIR 1963 SC 1882.
41. The aforesaid authorities relied upon by learned Counsel for the defendants are to be considered on their own facts. In fact none of the authorities can be applied on facts to the present case. Whether there is a misrepresentation by the defendant amounting to passing off or misrepresentation is such as to be likely to pass off his goods as the goods of the plaintiff is in each case a question of fact. No previous case can, therefore, be an authority for any other case, each case must depend upon the facts applicable to that case alone. It was so observed in Cellular Clothing v. Nexton, (1899) 16 RPC 397(HL).
42. In the present case the plaintiff's mark HONDA has acquired a global goodwill and reputation. Its reputation is for quality products. The name of HONDA is associated with the plaintiff's especially in the field of automobiles and power equipments on account of their superior quality and high standard. The plaintiff's business or products under the trade mark HONDA has acquired such goodwill and reputation that it has become distinctive of its products and the defendants' user of this mark for their product “Pressure Cooker” tends to mislead the public to believe that the defendants business and goods are that of the plaintiff. Such user by the defendants has also diluted and debased the goodwill and reputation of the plaintiff.
43. As observed above, the concept of passing off is a tort and with the passage of time, with the developing case law it has changed and now the two traders need not necessarily operate in the same field so as to suffer in jury on account of the goods of one trader being passed off as those of the other.
44. With the changed concept of passing off action, it is now not material for a passing off action that the plaintiff and the defendant should trade in the same field. I find that some business are truly international in character and the reputation and goodwill attached to them cannot in fact be held being international also. The plaintiff's business is of international character and obviously the reputation and goodwill attached to its trade mark HONDA is also of international repute. The plaintiff's trade mark HONDA, which is of global repute, is used by the defendants for a product like pressure cooker, to acquire the benefit of its goodwill and reputation so as to create deception for the public who are likely to buy defendant's product believing the same as coming from the house of HONDA or associated with the plaintiff in some manner. By doing so, it would dilute the goodwill and reputation of the plaintiff and the wrong committed by the defendants would certainly be an actionable wrong and the plaintiff is within its rights to ask for restraint against the defendants from using its mark HONDA for their products.
45. Further contention of the defendants is that the trade mark HONDA is common to trade and common surname. The defendant has filed an affidavit to the effect that the name of his uncle is S. Honda Singh. However, no documentary evidence is produced by the defendants in this respect to show that the alleged S. Honda Singh was the uncle of defendant No. 1. The affidavit of defendant No. 1 in this respect is nothing but a self-serving document. Such an affidavit cannot take place of cogent documentary evidence. Two persons with the surname have been shown as members APAA. It does not establish that the mark HONDA has become a common surname. The defendants have also placed on record a few pages of the telephone directory of the year 1999 published by MTNL, Delhi, which gives some names with HONDA as surname but in the given facts and circumstances of this case no weightage can be given to the same. From the entire record the trade mark HONDA does not appear to be a common name in India as submitted by learned Counsel for the plaintiff. It is possible that since the plaintiff's trade mark is in existence for the last more than 50 years in more than 140 countries of the world there a possibility that few persons have adopted and used the name HONDA in temptation. Even the said fact does not give any legal right to use the same in relation to merchandised goods. As a matter of fact, it is borne out from the record that HONDA is not a dictionary word. It is pertinent to note that it is not only the trade mark of the plaintiff but it is also, part of its corporate name. The word ‘HONDA’ in fact appears to be an invented word being unusual and having no meaning.
46. Learned Counsel for the defendants further contends that apart from the defendants there are other traders/businessmen, who have been using the mark HONDA for different products and have even applied for their registration under the Trade and Merchandise Marks Act, 1958. Learned Counsel for the plaintiff submits that registration and pending applications of different parties is of no consequence. The plaintiff has already taken action against all those parties who have either applied for registration of the trade mark or used the same in relation to their goods. Various Courts in this respect have already protected the trade mark HONDA in favour of the plaintiff. The plaintiff has placed on record some of the orders, where the Courts have granted injunction against various defendants restraining them from using the mark HONDA in relation to different goods like rubber goods, batteries, pesticides, door latches, etc. It is pointed out that in view of the search report placed on record by the defendants, the plaintiff has already written letters and given notices to various persons whose names have been shown in the search report and some of them have been found non-existant, some have already closed down their business and some have given an undertaking not to use the plaintiff's trade mark HONDA.
47. It is also submitted by learned Counsel for the plaintiff and rightly so that user of plaintiff's trade mark illegally by others does not give a right to the defendants to use plaintiff's trade mark and to encash upon its goodwill and reputation. It is also submitted that simply moving application for registration of a trade mark does not show its user of the mark. It is submitted that the alleged user of mark HONDA by some other persons is no defence to the suit. Reference in this respect is made to 1998 PTC 698; Indian Shaving Product Ltd. v. Gift Pack, wherein it was held as under:
“The said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence, the said defence, that other persons are also using the said trade mark is not available to the defendants. The Court is called upon to decide disputes in between the parties which are before it. The Court cannot be expected to adjudicate upoin a dispute which is not before it.”
48. Yet another contention raised by the defendants is that the plaintiff is not using the trade mark HONDA independently rather there is some added matter with the mark HONDA as H-Honda, Shriram Honda, Hero Honda, etc. The contention raised by the defendant on the face of it appears to be devoid of any substance. In view of the material placed on record, it cannot be argued that the plaintiff is not using the trade mark independently. The monogram ‘H’ is separately registered and the relevant documents appear at pages 55-56 of the plaintiff's documents. In fact letter ‘H’ is the logo of the plaintiff's company which is separately registered. As regards ‘SHRIRAM HONDA’, it has already come in pleadings that the plaintiff had a joint venture agreement with Shriram group of companies and allowed them to use their mark HONDA in India in relation to generator sets. As regards the mark CITY along with HONDA it only distinguishes the types of car sold by plaintiff.
49. The defendants have also raised an objection to the maintainability of the suit alleging that it suffers from delay and laches. The facts, prima facie do not show that suit is barred by time. This issue would be decided on merits after trial. In any case, it is apparent from the record that the plaintiff came to know in April, 1991 about the defendant's filing an application for registration of the trade mark HONDA in respect of ‘Pressure Cooker’ for which the plaintiff filed opposition which was decided by the Registrar of Trade Marks vide orders dated 19.10.1995 in favour of the plaintiff by rejecting the defendant's application. The plaintiff expected and assumed, that the defendants had stopped the user of the mark HONDA for their product after the rejection of their application, but when they again came across an advertisement in the trade marks journals about a fresh application of the defendant's for registration of the mark HONDA in Class 21 in the year 1999, it served upon them a ‘cease and desist’ notice to which the defendants did not reply. Instead, they filed caveat application in the Court. The plaintiff was, therefore, constrained to file the present suit. Under these circumstances, prima facie, it cannot be argued that the plaintiff's suit suffers from delay or laches. Otherwise also the plaintiff's suit is for passing off action as the defendants are allegedly passing off their goods under the trade mark of the plaintiff with a view to encash upon its goodwill and reputation and the defendants user of the plaintiffs trade mark is a continuing wrong which gives rise to a recurring cause of action. It was so held by the Apex Court in Bengal Waterproof Ltd. v. Bombay Waterproof Co., (1997) 1 SCC 99 : AIR 1997 SC 1398.
50. In view of the above discussion, I find that the plaintiff has placed sufficient material on record to show that it has acquired distinctiveness and goodwill in the mark HONDA which has become a household mark, of the plaintiff. The mark HONDA connotes distinctiveness, reputation, quality and and goodwill acquired by the plaintiff over a number of years and is understood by the consumers as associated with the plaintiff. Defendants started using the mark HONDA to derive benefit from the reputation and good will enjoyed by the plaintiff and their products under the said mark, thereby perpetrating fraud and deception on the unwary customers by passing off their goods as those of the plaintiff. I have no hesitation in taking a prima facie view that the defendants have adopted the mark HONDA deliberately with an intention of creating a subtle association between their activities and that of the plaintiff. The user of the trade mark HONDA by the defendants cannot be said to be an honest and concurrent user, as claimed by them. The trade mark HONDA being of global reputation, its user by the defendants is likely to cause not only deception in the minds of ordinary customers but may also cause injury to the plaintiff company. In this view of the matter, it will be necessary to restrain the defendants from using the trade mark HONDA for their products till the matter is decided on merits after trial. Accordingly the defendants, their agents, servants, stockists, shopkeepers etc. or any other person acting on their behalf, are restrained from using the mark HONDA in respect of pressure cookers or any other allied and cognate goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off their goods as the goods of the plaintiff till the disposal of this suit. The application is, accordingly, allowed.
51. It is, however, made clear that my observations in this order are prima facie in purport and are not to be taken as the final expression of opinion on merits.
Application allowed.
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