MANMOHAN SINGH, J.

1. By this order, I shall dispose of the application filed by the plaintiff under order xxxix, rules 1 & 2 and section 151 cpc, read with section 38 of the specific relief act, 1963 being IA No. 16747/2009.

2. The plaintiff has filed the present suit for permanent injunction restraining passing off and infringement of trade mark, rendition of accounts, delivery up etc. restraining the defendant from manufacturing, selling, offering for sale, advertising or in any way dealing in goods falling in Class-30 bearing the trade mark “MARVEL TOUCH” or any other mark which is identical or deceptively similar to the plaintiffs' trade mark “MARVEL”.

Plaintiff's Case

3. The plaintiff-company is a part of the Marvel Group of Companies who are dealing with the manufacturing and marketing of good like tea, soaps, detergent etc in Class-30, bearing the trade mark “MARVEL” which, according the plaintiff, was conceived and adopted by it in the year 1994. The plaintiff is the registered proprietor of the trade mark “MARVEL” for tea in Class-30 and various other classes, the details of which are given in paragraph-3 of the plaint. The following relevant registered trademarks are necessary for the purpose of deciding the present application:-

(a) Trade Mark: MARVEL

Registration No. 625297 as of 15.04.1994 in Class-30 in respect of “Tea”

(b) Trade Mark: MARVEL

Registration No. 1247534 as of 04.11.2003 in Class-30 in respect of “Spices, Salt, Tea, Coffee, Noodles, Dalia, Bakery Products, Biscuit, Cake, Confectionery and Namkeen”

(c) Trade Mark: MARVAL

Registration No. 1280137 as of 22.04.2004 in Class-30 in respect of “Tea, Coffee, Cocoa, Rice, Sugar, Salt, Pulses, Spices, Sauces, Noodles, Maida, Suji, Besan, Honey, Ices, Bread, Biscuit, Confectionery, Cake, Namkeen, Pastry, Treacle, Yeast, Baking Powder, Vinegar and Mustard”

4. The plaintiff is also the registered copyright holder of the artistic work of the word “MARVEL” vide registration No. A-70955/2005. The details of applications filed by the plaintiff in various classes for registration of copyright “MARVEL” is given in paragraph-4 of the plaint.

5. The case of the plaintiff is that the plaintiff has been carrying on its business with the trade mark, brand name/trade name “MARVEL” in respect of the Tea, Soaps, detergent etc. and the said business has over expanded owing to the hard work, networking, promotional work and technical expertise. Due to such long and continuous use, the trade mark “MARVEL” of the plaintiff acquired distinctiveness, reputation and goodwill for its products mentioned above. The plaintiff also has a sale turnover in crores and spent huge amount over the publicity and advertisement of its trade mark “MARVEL”. Due to such long, continuous, prior use, huge sale turnover, wide networking of area of operation, distinctiveness, appreciable expenses on publicity and advertisement coupled whit the registration of the trade mark in class 30 and 29 in India and Class 30 in Nepal, the trade mark “MARVEL” of the plaintiff becomes well known trade mark and has acquired secondary meaning. The sue of the identical, similar and deceptively similar trade mark and trade name MARVEL by any third party including the defendant herein for the same or any class of goods as that of plaintiff herein, results in the violation of plaintiffs statutory and common law rights. The plaintiff company has acquired statutory and exclusive right to use of the trade mark and copyright MARVEL in the tin, pouches and carton of its goods and claims to be the proprietors thereof. The use of any identical with and/or deceptively and confusingly similar trade mark by somebody else in relation to goods falling in Class 30 is bound to cause confusion and deception in the minds of purchasing public and trade people which amounts to infringement of the registered trade mark of the plaintiff and also amounts to passing off the goods and business as that of the plaintiff. The purchasing public and trade have come about to identify and recognized the trade mark “MARVEL” as indicating exclusive and quality products of the plaintiff and none-else. The plaintiff has established large and extensive sales of its products and have sent substantial amount on its publicity of the trade mark “MARVEL” over the past years. The year wise sale and publicity expenses of the goods of the plaintiff are given as below:

Year

Sales (Rs.)

Publicity Expenses

1994-95

9431

9431

1995-96

88504

88504

1996-97

36225303

196033

1997-98

88966345

849429

1998-99

200111762

7692091

1999-2000

282242688

7719160

2000-01

292161864

12681548

2001-02

393051349

30179775

2002-03

386528147

46231752

2003-04

441041928

69714184

2004-05

451242200

47680348

2005-06

54,95,89,547

63,43,597

2007-08

867264705

- Not given -

2008-09

1159531705

- Do -

2009-10

1077152419

- Do -

6. It is further submitted that on account of superior quality of goods of the plaintiff and due to continuous use of the trade mark “MARVEL” and its copyright in the pouches, boxes/carton, the goods of the plaintiff have acquired tremendous reputation and goodwill in the public and trade and the goods of the plaintiff are demanded and recognized by the purchasing public at large. The aforesaid trade mark and copyright in the packing, pouches, tin and goods is exclusively associated with the plaintiff in the minds of purchasing public and they purchased the goods of plaintiff bearing the trade mark “MARVEL” as a guarantee of excellence plaintiff's manufacture and none-else. It has no obvious meaning and cannot be identically copied.

Case Against the Defendant

7. The case of the plaintiff against the defendant is that in the first week of November, 2009 it came to know that the defendant is manufacturing and marketing goods like spices and wheat flour etc. falling under Class-30, bearing trade mark MARVEL TOUCH. On further inquiry, the plaintiff came to know that the defendant has applied for registration of the trade mark MARVEL TOUCH on 22.05.2008 vide application No. 1690263 wherein he has claimed to be the proposed user.

8. It is submitted by the plaintiff that the resemblance between the two trademarks, i.e “MARVEL” and “MARVEL TOUCH” is so close that it is likely to cause confusion in the mind of the purchasing public. Further, it is submitted by the plaintiff that these acts of the defendant are causing immense injury to the business and reputation of the plaintiff and it will also cause hindrance in expansion of plaintiff's business. The use of the trade mark and trade name MARVEL TOUCH by the defendant is nothing but a dishonest and illegal attempt to thrive upon the goodwill and reputation of the plaintiff.

Defendant's Case

9. The defendant has filed his written statement, stating therein that the present suit is not maintainable, as the plaintiff is carrying on its business from Haryana and Delhi and has not mentioned other specific places where it has appointed its distributors and the defendant is carrying on its business in Bhopal (MP) where there is no business of the plaintiff. Further, the trade mark of the plaintiff has a different artistic style than the trade name of defendant under MARVEL TOUCH, so, the question of confusion in the mind of the buyers does not arise. The plaintiff cannot bifurcate the whole expression of trade name MARVAL TOUCH in two separate words to highlight just one word, when the trade name of the defendant is complete one expression “MARVEL TOUCH” and reading the whole expression would not create any confusion vis-à-vis the expression “MARVEL” being used by the plaintiff. The plaintiff cannot have monopoly with respect to the goods which, the plaintiff is not even using/selling.

10. It is submitted by the defendant that wherever the defendant is using the trade name MARVEL TOUCH it is followed by the expression ‘GKT’ which refers to ‘Gurukripa Traders’, therefore, there can be no question of confusion. It is also submitted by the defendant that there can be no question of passing off, since the defendant is using the trade name “MARVEL” as a part of their corporate name and not as a trade mark. The trade mark of plaintiff is phonetically, visually and even structurally different from the trade mark MARVEL TOUCH of the defendant which has to be read as a whole.

11. Two samples of images of products used by the parties are as follows:

(a) Picture of plaintiff's one of the products:

(b) Picture of defendant's one of the products:

12. In view of the defence raised by the defendant as well as the case of the plaintiff, the following are the points which are to be determined for the purpose of disposing of this injunction application:-

(a) Whether this Court has got the territorial jurisdiction to entertain and try the present suit.

(b) Whether in view of the registration granted in favour of the plaintiff in Class-30 in relation to various goods including spices being used by the defendant amounts to infringement of the registered trade mark.

(c) Whether the defendant who is dealing with allied goods is guilty of passing off its business as that of the plaintiff.

(a) TERRITORIAL JURISDICTION

13. In order to invoke the jurisdiction of this Court, the plaintiff in paragraph-17 of the plaint has specifically alleged that the defendant is carrying on his illegal activities clandestinely in Haryana, Rajasthan and Delhi. An additional ground is also taken that since the plaintiff is carrying on its business from Delhi, i.e 89-90, Pocket B-6, Sector-8, Rohini, New Delhi, therefore, this Court has also the jurisdiction under Section 134 of the Trade Marks Act, 1999 (hereinafter called the “Act”). Section 134(2) of the Act provides an additional form of jurisdiction. If at the time of institution of the suit or other proceedings, the plaintiff is actually or voluntarily resides or carrying on business or personally works for gain, the suit for infringement of trade mark etc. can be instituted in any Court inferior to a District Court having jurisdiction to try the suit. In the present case, the specific statement has been made by the plaintiff that the plaintiff has its office in Rohini, Delhi and the jurisdiction is invoked under Section 134 of the Act. There is no argument addressed by the defendant to counter the submission of the plaintiff, therefore, prima-facie at this stage, the plaintiff's statement in this regard has to be taken as correct. Further, in paragraph-17 of the plaint, a specific statement has been made that the defendant is carrying on illegal trade activities clandestinely in Haryana, Rajasthan and Delhi.

14. In view of the above, the contention of the defendant, at this stage, cannot be accepted. But, it is clarified that the plaintiff has to prove its case about territorial jurisdiction of this Court at the time of trial of the suit.

(b) INFRINGEMENT OF TRADE MARK

15. It is the admitted position that the plaintiff is the registered proprietor of the trade mark “MARVEL” in respect of Tea and large number of other goods including spices, pulses and Besan. The contention of the defendant is that at present the plaintiff is not marketing products i.e spices, pulses and Besan. On the other hand, the learned counsel for the plaintiff has argued that the plaintiff is using the trade mark “MARVEL” in respect of tea, soap, detergent etc. and the plaintiff may expand its business in near future. However, one fact is very clear which cannot be denied by the defendant that the trade mark of the plaintiff “MARVEL” is registered in respect of the spices, pulses and Besan. The registration of the said registered trade mark has not been challenged by the defendant. By virtue of the registration, the plaintiff has an exclusive and statutory right under Section 28 of the Trade Marks Act, 1999. Under Section 31 of the Act, the registration is a prima-facie evidence of its validity.

16. The law relating to infringement of a registered trademark has been envisaged u/S 29 of the Trade Marks Act, 1999 and exclusive rights granted by virtue of registration under Section 28 which reads as under:-

“29. Infringement of registered trademarks —

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect f which the trade mark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.”

“28. Rights conferred by registration —

(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”

17. By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.

18. So far as infringement qua different goods is concerned, separate enactment of Section 29(4) makes it clear that the strict rigors are prescribed as against the ordinary case of similar goods wherein a registered proprietor has to establish that the registered trademark has reputation in India and is of such a nature wherein the use of the mark by the other side without due cause would tantamount to taking unfair advantage or detrimental to the distinctive character or repute of a trademark.

19. A reading of Section 29(4) of the Act would reveal that the said protection qua different goods is earmarked by the Legislature for the trademarks which are either highly reputed or well known or famous trademarks and enjoy either high level of distinctiveness or the marks which are inherently distinctive in nature or has become distinctive due to their repute; the use of which will cause detrimental to the distinctive character and repute of the trademark only when the ingredients of Section 29(4) are satisfied conjunctively which is sub sections (a), (b) and (c) the infringement qua Section 29(4) in relation to different goods is attracted. In the present case, no doubt, in view of the goodwill, reputation, huge sale and advertisement, prime facie, it establishes that the trade mark “MARVEL” has acquired a unique name in the market and by virtue of that it is satisfied that it comes within the meanings of Section 29(4) of the Act.

20. It is settled law that in order to prove the case for infringement of trade mark, the plaintiff has to show that the essential features of the registered trade mark which has been adopted by the defendant has been taken out from the plaintiff's registration. Only the marks are to be compared by the Court and in case the registration is granted in favour of the plaintiff, he acquires valuable right by reason of the said registration. The following are the judgments which are relevant to be referred for the purpose of infringement of the trade mark:

i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 - at 989-990 page wherein it was held that:

“The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods”

“if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the getup, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial”

ii.In the case of American Home Products v. Mac Laboratories AIR 1986 SC 137 in Para 36 it was held as under:

“When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction….”

iii.In the case of National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898 at page 903 it was held as under:

“On registration of a trade mark the registered proprietor gets under Section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark.”

iv.Avis International Ltd. v. Avi Footwear Industries, reported in AIR 1991 Delhi 22, the relevant paras of which read as under:

“14. At this stage of the case, we have no affidavit against another affidavit, and in view of the statutory provisions of Ss. 28 and 31 of the Trade and Merchandise Marks Act, it would be appropriate to rely upon contentions of the plaintiffs.

15. It is apparent that the word AEVI is not a commonly used word. The word is not in a dictionary. Its adoption by the defendants, therefore, needed to be explained, which the defendants have not explained in the pleadings before the Court.

16. Phonetically the word AVIS, which is registered mark for footwear, and the word AEVI'S have to be pronounced identically. The business name of the defendants is known as AVI Footwear Industries. Prima facie, if it was the intention of the defendants by affixing the label AEVI'S on the footwear made by them was to indicate that the footwear carrying that label is made by the AVI Footwear Industries, then the mark they would have adopted would have been AVI, but that they have not done. They have tried to bring their mark/label as close as possible phonetically to the registered mark AVIS.

17. In my view, the statutory monopoly which has been conferred upon the plaintiffs in connection with use of the mark AVIS for any other consideration in relation to grant or non-grant of an injunction, especially when the matter is at an interlocutory state, and is yet to be tried, and it cannot be foreseen as to whether the defendants who seek rectification of the plaintiffs mark, on account of nonuser would be able to prove their case. The statutory registration establishes prima facie case in favour of the plaintiffs.

18. In this view of the matter, I think that the balance of convenience would be in favuor of the plaintiffs, to ensure that by concurrent user, during the period of the trial, no other rights come into existence. In my view, it is very convenient, if the defendants are so minded, to adopt any other label that establishes a connection in the course of trade with respect to the footwear manufactured by them.”

21. There is no force in the submission of the defendant that the word “Touch” has been added after the word “Marvel”, or the expression GKT is also used, therefore, the two trademarks are not deceptively similar. The said submission is without any substance. It is clear from examining the two packaging of the parties that essential features from the same is “MARVEL”. By adding the word “GKT”, i.e the initial of the plaintiff-firm or the word “Touch” underneath the word “MARVEL” is totally immaterial.

22. The Supreme Court in the case of Ruston and Hornby Ltd. v. Zamindara Engineering Co., reported in AIR 1970 SC 1649, also upheld the similarity and resemblance between the two trademarks “RUSTON” and “RUSTAM”. It was also held that even an addition of the word “India” was not sufficient, to distinguish the goods from that of the plaintiff.

23. The judgment passed in the case of Midas Hygiene v. Sudhir Bhatia, reported in 2004 (28) PTC 121 (SC) Para-5, it was held as under:

“The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.”

24. From the above said facts and circumstances, it is clear that the plaintiff has been able to make out a prima-facie case for infringement of the trade mark and, therefore, the plaintiff is entitled for the relief claimed for.

(c) PASSING OFF

25. The following are the essential characteristics of an action of passing off:-

(A) In Erven Warnink B.V v. J. Townend & 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 or 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 forseable 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 timet action) will probably do so.”

(B) The essentials of passing off action in Halsbury's Laws of England Vol. 38 (3rd Edition) para 998 as given 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 ex hypothesi, 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.”

26. The judgment passed in the case of Laxmikant Patel v. Chetanbhai Shah, reported in (2002) 3 SCC 65, the relevant para 10 of which reads as under:-

“The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.”

In this case, the Apex Court further observed that:

“Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.”

27. The judgment passed in the case of B. K. Engineering Co.… v. Ubhi Enterprises (Regd.) & Anr…S, reported in 1985 PTC 1, Para-57, it was held as under:-

“Trading must not only be honest but must not even unintentionally be unfair.”

28. In yet another case, L.R.C International Limited v. Lilla Edets Sales Company Limited, 1983 RPC 560, an action of passing off held to a maintainable by a manufacturer of household gloves and plastic pants for babies, employing the trade mark “Marigold” against a party that had adopted the said trade mark for toilet tissues and prayer for interlocutory injunction to restrain this passing off was allowed upholding the contention that the goods were sold through the same shops on the same counter and bought by house-wives and also taking into consideration the plea that the plaintiffs planned to extend the area of their operations by going in future in to manufacture of toilet tissues also and they were thus entitled to protection. In this case, the plea that when placed side by side, the respective trademarks could be observed to be not exactly similar was also rejected, on the view that where there is general similarity in details, particularly when the marks are not seen side by side, and when those similarities are striking then the party adopting the trade mark or trading style at a later point of time has to be restrained, and that it was not possible to imagine that confusion would not in fact result.

29. There are various other judgments where action for passing off has been held to be maintainable even in respect of goods which were even not seemingly of allied category. For instance, it was held in the case reported as Lego System Aktieselskab v. Lego M. Lemeistrich Ltd., Fleet Street Reports (1983) page 154 that once it is shown that the plaintiff had acquired high reputation in the trade mark (Lego in the case) which were trading in toys and construction kits, there could be no limitation in respect of parties' field, and activities so far as passing off action was concerned and in case there was likelihood of a person being misled that the goods marketed by the defendant were products of the plaintiff or connected with them, injunction should issue. The contention as to actual damages being proved as an essential ingredient for getting relief was also rejected, although defendant's activity consisted of manufacturing of irrigation equipment including garden sprinklers for the reason that both sets of goods were made of coloured plastic material and it was held on the basis of judgment in the case of Advocate that as a necessary ingredient to found a cause of action in passing off, there was no limitation as to the relation of field of activity of the defendant to that of the plaintiff.

30. In the case of Banga Watch Company v. N.V Philiphs, reported in AIR 1983 P&H 418, the plaintiff N.V Philliphs was using the trade mark PHILLIPHS, which had become a household mark and acquired enviable reputation in India and throughout the world dealing in electrical and electronics goods. The defendant was using the trade mark PHILLIPHS in request of watches and clocks.

31. In the case of Bata India Ltd. v. Pyare Lal & Co., reported in AIR 1985 All. 242, 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 favor of the plaintiff despite the fact that the same trade mark was being used for different goods.

32. In the case of Essel Packaging Ltd. v. Essel Tea Exports Ltd., reported in 1999 PTC (19) 521, the High Court of Bombay after considering Kirloskar Diesel Recon Pvt. Ltd. v. Kirlosker Proprietary Ltd. and Bajaj Electricals Pvt. Ltd. v. Metals and Allied Projects, 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 mis-representation, 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.

33. The learned counsel for the defendant has relied upon the following judgments:-

(a) Lakbir Singh v. Bakhat Singh, AIR 1973, Delhi 225

(b) J.R Kapoor v. Micronix India., 1994 (Supp.) (3) SCC 215

(c) F. Hoffmann-LA Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd.1969 (2) SCC 716

(d) Malhotra Tyre Service Co. v. Malhotra Tyres Pvt. Ltd. AIR 1991 Delhi 94

(e) Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd. Hyderabad(1997) 4 SCC 201

(f) Lakshmi Narayan Karva v. Satyanarayanan Khubchand Karva AIR 1975 Madras 112

(g) Kirloskar Proprietary Ltd. v. Kirloskar Dimensions Pvt. Ltd. AIR 1997 Karnataka 1

(h) Cadila Laboratories Ltd. v. Dabur India Ltd. 66 (1997) DLT 741

(i) Sunstar Lubricants Ltd. v. Federal Chemical Industries 65 (1997) DLT 725

(j) Parle Products Ltd. v. Bakemans Industries Ltd. 1998 PTC 18

(k) Mazdoor Soap Mills, Delhi v. Gian Soap Factory, Karnal 1986 PTC 175

(l) United Brothers v. United Traders 1997 PTC 17

(m) Roshan Lal Oil Mills Ltd. v. Assam Company Ltd. 1996 PTC 16

(n) Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd. 1996 PTC 16 SC

(o) BDA Breweries and Distilleries Ltd. v. Shree Durga Distillery 2002 (25) PTC 704 (Karnataka)

(p) Thomas Bear & Sons (India) Ltd. v. Prayag Narain AIR 1940 PC 1986

(q) Nestle's Products Ltd. v. Milkmade Corporation 1974 Delhi 40

34. All the aforesaid authorities relied upon by the learned counsel for the defendant were decided as per their own facts. These authorities are not applicable to the facts of the present case. In the present case, the plaintiff is the registered proprietor of the trade mark “MARVEL”, in respect of the goods in which the defendant is carrying on its business. Therefore, the case of infringement is ipso facto made out by the plaintiff. The judgments referred to by the learned counsel for the defendant are totally in different context and facts are also materially different. Further, it is always said that in trademark matters, each case depends upon its own circumstances. After having gone through these authorities referred, I am of the considered view that none of them is applicable to the present case, as 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).

35. The contention of the defendant is also without any force that the trade mark “MARVEL” is not a distinctive trade mark, therefore, no protection can be given to the plaintiff. In a way, the defendant has challenged the validity of the trade mark in the present proceedings. It is pertinent to mention here that on the one hand, the defendant has raised challenge to the validity of the registered trade mark “MARVEL” and on the other hand, the defendant himself has applied for registration of the trade mark “MARVEL TOUCH”. I am of the considered view that once the person himself apply for registration of the trade mark is not entitled to attack the registration of the trade mark of the rival party who has initiated the infringement proceedings on the same very trade mark. Thus, the plaintiff has been able to make out a clear case of passing off in its favour and against the defendant.

36. Having regard to all these circumstances, the present application is allowed. Thus, till the disposal of the present suit, the defendant is hereby restrained from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in goods Dhania, Mirchi, Haldi, Atta, Maida, Besan, Suji, Aachar, Masala, Rawa, Sabudana, Singhada Atta and Rajgira Atta, falling in Class-30 bearing the trade mark “MARVEL TOUCH” as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to the plaintiff's registered trade mark “MARVEL” which results in infringement of trade mark of the plaintiff so as to pass off or enable others to pass off the defendant's goods/product and/or business and/or services as and for the goods/products/business and service of the plaintiff and/or some way connected with the plaintiff. The application is accordingly disposed of.

37. The findings given herein are tentative which shall not have bearing in any manner when the matter would be considered by the Court after the trial.