Mahmood Ali Khan, J.:— This application has been filed under Order 39 Rules 1 and 2 read with Section 151 CPC for grant of ad interim injunction order restraining the defendant from manufacturing, selling and/or offering for sale, directly or indirectly dealing in stationery products including pens/ball pens/jotter pens or pens of any nature or any other stationery items/goods as may be cognate or allied to the plaintiff's goods or the goods of the same description and/or goods having similar trade channels and/or goods as are dealt with by similar class of traders and purchasers under the mark ‘SOLO’ and/or any other mark which may be identical and/or deceptively similar to the plaintiff's trade mark ‘SOLO’ and/or from doing any other act as is likely to cause confusion and or deception amounting to passing off defendant's goods and/or business as the goods and/or business of the plaintiff.
2. The case of the plaintiff is as follows. The plaintiff Company was incorporated in 28.5.1996 to carry on the business for the manufacture and sale of stationery products. It commenced its business activities in March, 1997. It is manufacturing and selling variety of stationery products including presentation holders and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CM ROM holders and zipper wallets, conference holder, which includes writing pads and pens, office stationery, adhesives, packaging, paper and paper products etc. In September, 1996, the plaintiff adopted the trade mark SOLO in respect of stationery items of its manufacture and sale and has continuously and extensively used the same in the course of trade since March, 1997. The goods as are manufactured and marketed by the plaintiff are of high quality and are identified and recognized as a quality product originating from the plaintiffs source of manufacture. The trade mark SOLO has continuously and extensively been used in the course of trade by the plaintiff ever since 1997 so much so that the trade mark has come about to be exclusively identified and recognized by the purchasing public and the members of the trade with the products of the plaintiff. The plaintiff has acquired an exclusive right to the use of the said trade mark as a proprietor thereof in respect of the stationery products including presentation holders and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CM ROM holders and zipper wallets, conference holder, which includes writing pads and pens, office stationery, adhesives, packaging, paper and paper products and printed publications and/or all other cognate or allied goods or goods of same description. The plaintiff has been marketing writing instruments including pens bearing the trade mark SOLO as a part of its presentation holders, conference holders etc. The plaintiff has filed an application for registration of the trade mark SOLO before the Registrar of Trade Marks, Mumbai on 23.9.1996, which is pending. The plaintiff had been spending substantial amount of money for advertising of the said trade mark and in the year 1997-98, he has spent an amount of Rs. 11.33 lacs, which has increased to Rs. 37.76 lacs during the year 2002-03. It has also sold its goods of the value of Rs. 14 crores since 1997 and has spent Rs. 90 lacs for promotion of its trade mark SOLO. The plaintiff has been participating in trade fairs/exhibitions since 1997 held in New Delhi, Mumbai, Ahmedabad, Chennai, Patna and Hyderabad.
3. The defendant, M/s. Rotomac Pens (Guj.) Private Limited is a Company incorporated under the Indian Companies Act and is engaged in manufacture and sale of inter-alia, stationery products including pens. Its house mark is Rotomac in respect of the goods of its manufacture and sale. With a view to trade upon the reputation of the plaintiffs trade mark SOLO, the defendant has dishonestly and mala fide adopted an identical mark SOLO in respect of stationery goods like pens/ball point pens/jotter pens of its manufacture and sale with the sole purpose to cause confusion and deception in the minds of unwary class of purchasers and to earn profits by passing off and/or enabling others to pass off its inferior quality goods as and for the goods of the plaintiff. The mark SOLO adopted by the defendant is identical to the plaintiff's well established and reputed mark SOLO and is bound to cause confusion and deception in the normal course of trade. The use of ROTOMAC house mark in conjunction with the mark of SOLO on the part of the defendant is immaterial for determination of the question of likelihood of confusion and deception. The defendant had full knowledge about the prior adoption, use, reputation and extensive publicity given to the trade mark SOLO on the part of the plaintiff at the time of adoption of identical mark on their part. The products of the parties are the products as one used by all sections of the purchasers including school going children, clerical work force etc. The probability of confusion and deception in the facts and circumstances of the case particularly keeping in view the class of purchasers is extremely high. The plaintiffs business is thus being diverted and is further likely to be diverted to the benefit of the defendant on account of defendant's unlawful activities causing pecuniary loss to the plaintiff's reputation and wrongful gain to itself. Actual amount of profit earned by the defendant after its ac-_count is rendered, will be at least Rs. 20 lacs. In the third week of April, 2003, the plaintiff sent a letter to the defendant ascertaining details of the period as to when the defendant commenced illegal trade activity and also the variety of goods for which the impugned trade mark was used and the quantum of its use. There was exchange of correspondence between the parties. The defendant is not desisting from continuing to use the trade mark SOLO and hence the suit. The plaintiff claimed the relief of decree of permanent injunction similar to the prayer made in the interlocutory application. The plaintiff has also prayed in the suit to direct the defendant to deliver the infringing material containing the impugned trade mark, catalogues, cartons, stencils, dies, blocks, films, plates and publicity material etc. for the purpose of destruction erasers and for rendition of account earned by the defendant by use of the impugned mark and decree of the amount so found due.
4. The defendant contested the suit and the application. Its case is that the defendant carries on the business of manufacturing and marketing the pens. It is using the trade mark Rotomac. The word Rotomac forms prominent part of its name. Alongwith its main mark or house mark Rotomac, the defendant Company uses a sub-brand, so as to indicate the kind variety, type of pen having particular features, characteristics and functions. The defendant had been using the trade mark ‘Rotomac 07’, ‘Rotomac Fighter’, ‘Rotomac Glasse’, ‘Rotomac Solo’ and ‘Rotomac Selino’. The use of the house mark alongwith suffix sub-brand to indicate the particular kind of pen is the common practice of the pen trade followed by all the manufacturers of the pen. The defendant Company is the sister concern of Rotomac Pens Private Limited, Kanpur. Kanpur Company started manufacturing and selling various kinds of ball pens in 1992 under the trade mark ‘Rotomac’. With the passage of time and publicity and promotion, it has become its valuable house mark. The trade mark and house mark Rotomac formed the genus, i.e the main and distinguishing part of Kanpur Company's name ‘Rotomac Pens Pvt. Ltd.’ and the defendant Company's name ‘Rotomac Pens (Guj.) Pvt. Ltd.’. Both Kanpur Company and the defendant Company used Rotomac house mark as genera on each of their pens. In addition, they used specific suffix as indicative mark which is described as a sub-brand in the trade of pens. More often then not, the prices of pens vary according to the features, kinds of pens and their sub-brands. Rotomac trade mark or the house mark has now acquired tremendous value, reputation and goodwill among the trade and public. The goods manufactured and marketed by the defendant Company and the Kanpur Company under the trade mark Rotomac are associated with the defendant and the Kanpur Company. The sub-brand, however, is used for the sake of convenience of customers, i.e traders and sellers of these pens. Rotomac pen has acquired popularity, as would be clear from the fact that Kanpur Company has spent over Rs. 45 crores on advertisement in the electronic, movies, print and other promotions so as to popularize the trade mark Rotomac and its total sales of Rotomac pens are over Rs. 269 crores. As compared to the defendant, the total sales figures of the plaintiff and the money spent on advertisements by it are nowhere near the sales and advertisement figures of the Kanpur Company.
5. The defendant Company used ‘Rotomac Solo’ as sub trade mark in respect of the jotter pen since 6.2.2003 In addition to the advertisement expenses incurred by the Kanpur Company, the defendant has also spent Rs. 89,942 on publicity of Rotomac Solo jotter pens on 24.4.2003 During the period from 6.2.2003 to 31.7.2003, the defendant Company's sales of Rotomac Solo jotter pens were Rs. 1,04,42,678.23p. The allegation of the plaintiff that the defendant Company had selected ‘Solo’ sub-brand to take advantage of the reputation of the plaintiffs ‘Solo’ trade mark in respect of files, folders, data binders etc. The defendant's house mark ‘Rotomac’ itself has its own independent reputation. Even otherwise, the word ‘Solo’ is an ordinary well understood English word, having a definite dictionary meaning as ‘performance by a single person’ or ‘unaccompanied’ or alone. ‘Solo’ is not a coined or an invented word whereby its selection/adoption/use as a sub-brand by the defendant “can be suspected. The defendant has used this word as sub-brand to indicate a particular kind of pen. The plaintiff itself has referred to the defendant's sub-brand ‘Solo’ as ‘a variety of Rotomac pen range’. Furthermore, the defendant's goods are pens whereas the plaintiff's goods are presentation and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CDROM holders and zipper wallets, conference folders, bcok rack, paper and file tray file and magazine rack, desk organizer and multi pen holder. The plaintiff does not manufacture pens, but it purchases pens from eight pen manufactures, who use their own trade marks on those pens, which are Line Star-view, EN-A.ONE 07, Starview, Wright A-One Gel and A ONE O.B.G The pens thus purchased by the plaintiff are merely inserted in the plaintiffs two items bearing Codes Nos. CC 101 and CC 103, which are described in its catalogue as ‘Conference Companion’ and ‘Secure Companion’ and not as ‘Solo’. The unit price paid by the plaintiff for pen is Rs. 2.50p The unit price of the defendant's pen is as high as Rs. 15. The plaintiff is not marketing any pen bearing ‘Solo’ as the trade mark. The case of the parties are completely distinct and different. The class of purchasers is different. The plaintiff's goods are purchased not by individuals, but by corporates. The defendant's jotter pens being costly, are purchased by highly educated and discerning people. The defendant's name and fill address is duly printed prominently on all its packings. Other allegations have also been refuted and it is prayed that the suit may be dismissed. The application for interim injunction order is also resisted for the same reasons.
6. An action for passing off is a common law remedy being in substance an action for deceit, i.e, a passing off by a person of his own goods as those of another. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off. But where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the; sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. Passing off one's own goods as that of another is a unfair competition and injures the goodwill and business of the person who had acquired propriety right in the exclusive use of a particular trademark. In a passing off action if the defendant shows that the getup, packing or other writing or marks on the goods or on the packets in which the goods are offered for sale are different or indicate clearly a trade origin different from the opponent, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff (Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC (980).
7. The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.., 2001 PTC 541 (SC) observed as follows:—
“As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion.”
8. It is further observed:
“The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of somebody. In other words a man is not to sell his goods or services under the pretence that they are those of another person.”
9. In paragraph-35, in relation to the passing off on the basis of un registered trademark, it is observed that generally for deciding the question of deceptive similarity, the following factors are to be considered;-
(a) The nature of the marks i.e whether the marks are word marks or label marks or composite marks i.e both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a decree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
10. It was further held that:—
“For deceptive resemblance two important questions to be decided are (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists”.
11. It was further held that :—
“As to the confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to perfect recollection.”
12. In Parle Products (P) Ltd. v. J.P and Co. Mysore, PTC (Suppl. 1) 346 (SO, it was held that “in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.’
13. In Corn Products Refining Co. v. Shangrila Food Products Ltd , (1960) 1 SCR 968, the Supreme Court held that “the question whether the two marks are likely to give rise to confusion or not is a question of first impression and that it was well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole”.
14. In M/s. Anglo Dutch PC & v. Works Pvt. Ltd., AIR 1977 Delhi 41, this Court had observed that “the Supreme Court in Corn Products Refining Co. (supra) and Amritdhara Pharmacy v. Satya Dev Gupta, AIR 1963 SC 449, has laid down the test fpr comparing the two marks as under :—
(i) The question whether the two marks are so similar as likely to cause confusion or deceive is one of the first impression. It is for the Court to decide this question.
(ii) The question has to be approached by applying the doctrine of fading memory, i.e, from the point of view of a man of average intelligence having imperfect recollection.
(iii) Whether the overall visual and phonetic similarity of the two marks is likely to deceive such a man or cause confusion that he may make mistake the goods of the defendant for those of the plaintiff.
(iv) The other questions which are:—
(i) Who are the persons who are likely to be decided, and
(ii) What rules of comparison are to b‘e adopted in judging whether such resemblance exists.
15. The facts of the present case now may be considered in the backdrop of the principles of law laid down in the above-cited cases. The dispute is about the trade mark Solo for which the plaintiff claims propriety right by prior and exclusive use in respect of stationary item with which pen is also supplied. It is stated that on account of wide and extensive advertisements and publicity over a number of years starting from March, 1997 the word ‘Solo’ gets immediate association with the plaintiff and a person who happens to see the goods marketed under the trademark ‘SOLO’ recognizes it as a product of the plaintiff. The plaintiffs proprietary right to use the trade mark Solo in respect of the stationery items like presentation holders and envelopes, presentation clear books, clip files, ring binders, report files and covers, business card holders, expansion cases, document cases, CD ROM holders and zipper wallets, conference holder which includes writing pads and pens, office stationery, adhesives, packaging, paper and paper products and printed publications and/or all other cognate or allied goods or goods of same description, is not in dispute. The dispute is about the pen. The plaintiff is claiming exclusive rights to use the trade mark ‘Solo’ in respect of the pens, which are sold as part of the above-mentioned stationery items with word ‘Solo’ printed over them. The defendant prima facie has not disputed seriously that the plaintiff is in prior use of the trade mark Solo, but it has repudiated the claim of the plaintiff that it is marketing the pens under this trade mark. It is alleged that the plaintiff is not manufacturer of pens nor is it selling the pens under the trade mark Solo. Rather it is asserted that the pens are purchased by the plaintiff from eight other manufacturers and they are inserted by the plaintiff in file covers and they carry the trade mark or trade name of their own manufacturer. The defendant has further alleged that even otherwise it is manufacturing and selling it pens under the trade mark/house mark Rotomac, which on account of prior use and wide publicity has acquired the reputation of high quality product and that its pens are sold with sub brand names added to the word Rotomac in order to distinguish the different variety of pens and marketed by it to facilitate the customers to buy the pens of a particular sub brand of his choice. It is alleged that the trade mark/house mark Rotomac printed on the pens distinguishes it from other pens or products, which my carry the word Solo printed on them. According to the defendant, the customers buy the pens of the plaintiff with the trade mark/house mark Rotomac and it is only to choose a particular variety of pens that they ask for a sub-brand from the traders. There is no likelihood for confusion or deception in the minds of consumers of the pens or its traders that the goods manufactured by the defendant are the products originated from the plaintiff.
16. As noticed above, the test in passing off action is not by comparison of the two products by placing them by side-by-side to ascertain similarities and dissimilarities in them but the test is whether an unwary buyer who wanted to buy a product of the plaintiff, would be confused or may be deceived on seeing the goods of the defendant and believe that goods is originated from the plaintiff and buys it.
17. Certain important features of the trade mark of the goods of the plaintiff and that of the defendant are worthwhile to note here. The plaintiff is selling the stationery and pens are also part of its stationery items. The defendant, on the other hand, is exclusively dealing in pens. The pens are thus sold by both the parties. The plaintiff is selling these goods not as a separate item, but as a part of its stationery items, but the defendant is selling it individually. The right of the plaintiff over the use of trade mark ‘Solo’ in respect of the stationery items is prima facie accepted by the defendant. The defendant, however, claims a superior right to use the word ‘Solo’ as sub-brand of its own reputed trade mark/house mark ‘Rotomac’. The case of the plaintiff is that the pen is a cognate and allied good to the goods manufactured and sold by it under trademark SOLO. The defendant, on the contrary claims that suffixing its own trademark/house mark Rotomac to word SOLO is sufficient to distinguish it from the pens of plaintiff. Whether use of word SOLO with the trade mark/house mark Rotomac, prefixed or suffixed to the word Solo will infringe the trade mark of the plaintiff, is a crucial question to be decided.
18. The customers, consumers and traders of the goods of the plaintiff and the defendant are the same and user of the product/goods of the parties are office goers, school going children and students, who use pen in offices or schools or homes. The word ‘Solo’ used by the defendant as sub-brand of its product of pen under the trade mark/house mark Rotomac is an exact imitation of the infringed trade mark Solo adopted by the plaintiff for its own goods. The class of purchasers who are likely to buy the goods bear the marks and their education, intelligence and the degree of care they are likely to exercise in purchasing the goods is at par. The mode of purchase of the goods from the traders is also the same. A buyer who is not so discerning and careful would prima facie be influenced in purchasing the pens bearing the word ‘Solo’ believing it to be the goods which has originated from the plaintiff.
19. In B. K. Engineering Co.… v. Ubhi Enterprises (Regd.) & Anr…S, 1985 PTC the plaintiff and defendant both were manufacturing and marketing cycle bells. The plaintiff house mark/trademark was ‘B.K’. The defendant adopted ‘BK-81’ as its trademark. In a passing off action it was held that the infringing trademark is confusingly/deceptively similar. This Court allowed the appeal and granted injunction against the defendant. In K.R Chinnikrishna Chetty v. K. Venkatesa Mudaliar and another, AIR 1974 Madras 7 the dispute was about registration of trademark. Appellants applied for registration of trademark “Radha's Sri Andal” snuff manufactured by them. The respondent No. 1 opposed the application claiming it to be the registered proprietor of trademark “Sri Andal” sniff. The court held that there was tangible danger that a substantial number of persons will confuse the applicant's “Radha's Sri Andal” mark applied for with the opponents legend “Sri Andal” snuff. The matter was taken to Supreme Court in K.R Chinnikrishna Chettiar v. Sri Ambal and Co., AIR 1970 SC 146. The Supreme Court observed that the word “Ambal” is the distinctive and essential feature of the trademark and the word “Andal” has striking similarity and affinity between the words “Ambal” and “Andal” and it may lead to confusion in the mind of a majority of the customers. In Rupa and Co. Ltd v. Dawn Mills Co. Ltd., 1999 PTC (19) 334 it was observed comparison in the two trademarks has to be concerning essential features of the marks which an average person with imperfect recollection remembers. The plaintiff's trademark in this case was “DAWN” and “DAWN HOSIERY”. The defendant adopted trademark “DON” for its hosiery articles. It was held to be phonetically deceptively and confusingly similar.
20. In Kamal Trading Co. Bombay and others v. Gillette U.K Limited, Middle Sex, England, 1988 PTC 1 the plaintiff registered trademark was “7 O'clock” for safety blades, safety razor, shaving brushes etc. The defendant adopted same trademark for toothbrushes. Defendants contention that goods are different was rejected and the order of injunction was upheld in appeal. In Honda Motors Co. Ltd.…Plaintiffs; v. Charanjit Singh & Ors.…Defendants., 101(2002) DLT 359 in a passing off action it was held that two traders need not necessarily operate in same field so as to suffer injury on account of goods of one trader being passed off as those of other. Plaintiff's reputed trademark HONDA used in relation to automobiles was adopted by the defendant for goods like rubber goods, batteries, pesticides, door latches etc. The defendant was restrained from using the trademark by an injunction order.
21. Similar law was laid down in some other judgments like Super Seals India Pvt. Ltd v. Mantri Brothers, 1986 PTC 341, wherein the infringed trademark was “SUPERSEAL”; M/S. Kumar Electric Works…Plaintiff; v. Anuj Electronics…Defendant., 1990 PTC 26 wherein the trademark involved was “OLYMPUS”; Creative Handicrafts v. Sedana Electric Co. and another, 1988 PTC 348 in which infringed trademark was “CHOICE”; Ceat Tyres Of India Ltd.…Plaintiff; v. Jai Industrial Services…, 1996 PTC (16) 720 wherein the infringed trademark was “CEAT” and the plaintiff used it for tyres which defendant used it for marketing v. belts and fan belts. Judgments in Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 SC 142, Sham Lal v. Interads Advertising (P) Ltd and others, AIR 1978 Delhi 27 and Century Traders… v. Roshan Lal Duggar & Co… and Co., AIR 1978 Delhi 250 may also be referred which lay down the same principle of law.
22. In United Brothers… v. United Traders…, 1997 PTC (17) 603 the plaintiffs registered trademark was “United” in relation to pressure cooker etc. The defendant used it for marketing table ware, forks, knives and spoons etc. it was held that defendant's goods cannot be said to be allied or cognate to the goods of the plaintiff. In a passing off action once the plaintiff has established its proprietary right over the trademark the protection is to be granted to him even though the infringing trademark is used for cognate and allied goods and sometime even if it is used for a totally different article. Each case has to be decided on its own merit.
23. A feign attempt was made at the hearing of the arguments that the plaintiff is not in prior use of the infringed trade mark ‘Solo’ in respect of its stationery goods. Attention was also invited to various invoices, at pages 49 to 202 of document file. It was argued that the word used by the plaintiff in respect of its goods was filex and not the word ‘Solo’. It is also argued that the word “SOLO” printed on the invoices pertained to the year 2002 and 2003 (pages 203 to 226 and 230 to 258). It is also submitted that a rubber stamp with word “SOLO” has been affixed on some of them. The argument does not seem correct, as pointed out by learned counsel for the plaintiff. Rubber stamp of the word ‘Solo’ has been affixed to attest true copy of invoices. Anyway, a careful scrutiny of the invoices and other documents placed on record will prima facie show that the plaintiff using the word ‘Solo’ in respect of the stationery items much prior to the defendant starting its use as sub-brand in March, 2003 even as per the defendants own argument. In this connection documents at pages 271 to 444 may be perused which lead to same conclusion.
24. One of the contentions raised on behalf of the defendant was that the plaintiff was not manufacturing the pens, but was buying from other manufacturers and was inserting those pens in his stationery items sold by it under the trade mark ‘Solo’. However, it has not been argued that the plaintiffs claim of proprietary right over the trade mark Solo would be sustainable only when it is manufacturing the pens itself and not buying the products from the market. The argument, therefore, is not tenable.
25. The next argument of learned counsel for the defendant is that the stationery items manufactured/sold by the plaintiff under the trade mark are not allied or cognate to the goods sold by the defendant. It is further argued that the consumers of these goods are different. The argument is devoid of any force. The pens are undoubtedly allied and cognate to the stationery items which the plaintiff is selling. Case law in this regard has already been cited in forgoing paragraphs and need not be reproduced Pens and other stationary items sold by the plaintiff can by no stretch of reasoning could be said to be so different that there was no likelihood of any confusion to be caused to the consumers of these goods.
26. It is also argued on behalf of the defendant that the word ‘Solo’ is not an invented word, but a common dictionary word and the plaintiff cannot claim proprietary right or exclusive right to the user of the word Solo. It is argued that the dictionary meaning of the word ‘Solo’ is “performance by a single person” or “unaccompanied” or “alone”. However, it cannot be denied that a common English word like ‘Solo’ may also become a trade mark giving exclusive right to its adopter on account of long user and the extensive publicity and the reputation created among the consumers and the traders, who may buy the goods on mere look or hearing of the word will associate the product with a particular manufacturer or trader.
27. Lastly, it is submitted that the defendant is not using the word Solo as, its trade mark for its pens, but it is using it as a sub-brand and the defendant's trade mark/house mark Rotomac is also printed on it, which makes it sufficiently distinct from other similar goods available in the market. A look at the pen which the plaintiff is selling as part of the stationery and the pen of the defendant sold in the market, which have been produced at the hearing, do not show that the word or trade mark Rotomac used as prefix or suffix to the word ‘Solo’ will make it so different from the pen of the plaintiff that an ordinary consumer of the pen or trader cannot be deceived or is not likely to be deceived. The word ‘Solo’ printed over the pens of the defendant is printed in bold letters with the house mark Rotomac printed in small size letters over the word “SOLO”. The word “SOLO” being in bold letters is eye catching and one who sees the article will remember this word. When two marks are compared side by side the prefix or suffix word may not necessarily make vital difference because where imperfect collection is relevant it is to be considered as to whether addition word, prefix or suffix is sufficient to prevent the confusion in the two competing mark.
28. Having regard to the above discussion, prima facie, I have no hesitation in holding that use and adoption of the word ‘Solo’ by the defendant in relation to its own goods, i.e, pen manufactured and sold by it in the market will infringe the proprietary rights of the plaintiff in its trade mark ‘Solo’ and the defendant would be guilty of committing passing off its own goods as those of the plaintiff. It will be an unfair trade practice which cannot be allowed to be continued.
29. The principles governing grant of adinterim injunction are now well settled. They are (i) whether the applicant has made out a prima-facie case meaning thereby that there is a bona fide dispute and serious contentions which require interrogation and trial; (ii) whether balance of convenience is in favour of the applicant, that it to say, whether it would cause greater inconvenience to the applicant if interlocutory injunction is not granted than the inconvenience to which the affected party will be subjected if it is granted, and (iii) whether the applicant would suffer irreparable loss and injury if the prayer for grant of the interlocutory injunction is refused. All these considerations must be conjointly satisfied before the order of ad interim injunction is passed by the court.
30. Following the principles of law, as discussed above, the plaintiff has made out a good case for grant of adinterim injunction, as prayed for in the application. Not only prima facie case for grant of adinterim in junction in its favour has been established by the plaintiff, but refusal of adinterim injunction at this stage-would result in irreparable loss of money and reputation to the plaintiff and further the plaintiff would suf fer greater inconvenience if the defendant is not restrained from continuing to infringe the trade mark of the plaintiff rather than the inconvenience which would be caused to the defendant if the adinterim injunction is granted since according to the defendant's own case, it is using the mark ‘Solo’ as sub-brand and not as a trade mark or house mark, which is quite different and distinguishable from the infringed trade mark.
31. Accordingly, the application is allowed and the defendant is restrained from manufacturing, selling and/or offering for sale, directly or indirectly dealing in stationery products including pens/ball pens/jotter pens or pens of any nature or any other stationery items/goods as may be cognate or allied to the plaintiff's goods or the goods of the same description and/or goods having similar trade channels and/or goods as are dealt with by similar class of traders and purchasers' under the mark ‘SOLO’ and or any other mark which may be identical and/or deceptively similar to the plaintiff's trade mark ‘SOLO’ and/or from doing any other act as is likely to cause confusion and/or deception amounting to passing off defendant's goods and/or business as the goods and/or business of the plaintiff.
32. It is clarified that observation made in this order are for deciding interlocutory application and they shall not influence the decision on the questions involved on merit after trial.
33. The application stands disposed of accordingly.