J.S Narang, J.:— The appellant has filed a suit for seeking relief of perpetual injunction for infringement of trade mark, passing off and that for alleged such violation, damages and a declaration has been sought for rendering the account for the profits earned accordingly. An application under Order 39 rules 1 and 2 read with Section 151 CPC had also been filed. The said application has been dismissed by the learned Additional District Judge, Amritsar, vide order dated February 8, 2002.
2. The appellant has asked for temporary injunction for restraining the defendant-respondent from using the name “Mac” as prefix to “Gilz” either as its trading style or trade mark deceptively and/or confusingly similar to the trade mark of the appellant i.e “McDonald's MacFries Maharajah Mac and Big Mac”, such usage being made in relation to its business/goods so as to pass off its business/goods as and for the business of the plaintiff-appellant. The import of the suit is that the word “Mac” wherever is being used by the defendant be not used for passing off such goods as being belonging to “McDonald's”.
3. The defendant is carrying on business of running a restaurant at Amritsar under the name and style of “MACGILZ FAST FOOD”. One of the partners of the said firm is Randip Singh Gill. It is alleged that it was in 1948, Dick and Maurice (Mac) McDonald founded their first McDonald's restaurant. However, in India, such restaurant under the said name was opened for the first time on October 13, 1996, in Vasant Vihar, New Delhi. Thereafter, 24 more such restaurants have been made operational in Delhi, Mumbai, Noida and Jaipur. There are about 20000 such restaurants in about 119 countries and the territories of the world. McDonald's have become famous in the business of fast food service and their trade mark has been registered at various places. In India, such applications have been filed with the requisite authorities in the year 1983 and 1987 whereby the registered proprietor of the trade mark sought to be registered are McDonald's and Corporate logo “M” BIG MAC, Ronald McDonald and Clown figures. It is alleged that by virtue of such registrations, the plaintiff-appellant has the exclusive right to use the said trade mark. The applications filed in respect of the said registrations are still pending. The claim is that the plaintiff-appellant is proprietor of family of trade marks with the prefix or suffix “Mac and Mc” and that applications for registration of such trade marks have been filed in India in the years 1993, 1995, 1996 and 1997. These applications are also pending before the Registrar of Trade Marks. The words “Mac/Mc” is prominent and significant feature of the plaintiffs various trade marks which are being used extensively all over the world. The reputation of the plaintiff-appellant in this regard has been recognised trans border. The said trade mark has been recognised and mentioned in the book “World Class Business - A Guide to 100 most powerful Global Corporations”. McDonald's is also listed in the Guinness Book of Records as the word's largest chain of Restaurants. The sales figures run in billions of U.S Dollars and that the plaintiff-appellant spends more than a billion U.S Dollars by way of advertisements, for the promotion of business all over the world. Thus, people, who travel from all the countries to USA, form impressions and impacts so far as the service rendered by Mcdonald's is concerned. The user of the prefix and suffix “Mc and Mac” having been recognised all over the world, the other competitors have been declined the usage of the same by way of judicial pronouncements made in the respective countries. If “Mac and Mc” is allowed to be used as prefix and suffix by any one, the general public at large and the regular customers would likely be deceived/confused into believing that the defendant's restaurant with trade style “MACGILZ” have some connection with the plaintiff-appellant. Resultantly, a notice is stated to have been served upon the defendants requiring them to desist from using the prefix and suffix as above. It has been specifically required that the defendant could not and should not use the aforesaid trade mark while notifying the price of the burger, fries, pizza, Imli, nuggets etc. because in front of all these the prefix and suffix has been added as i.e “Mc/Mac.”
4. The suit has been contested by the defendant-respondent and so also the interim application. The plea is that the logo, monogram, wording, size, colours, writing and pronunciation are quite distinguishable and differ in many respects from the logo etc. claimed by the plaintiff-appellant. It has been alleged that the defendant has neither encashed nor taken any advantage of usage of the prefix and suffix i.e “Mac/Mc” as the restaurant of the defendant is showing losses. Thus, the claim of the plaintiff-appellant that the restaurant under the name as aforesaid run by the defendant can be termed as deceptively/confusingly similar to that of plaintiff-appellant is neither here nor there. The plaintiff-appellant is not running any restaurant at Amritsar neither in the State of Punjab and that the residents of State of Punjab and the residents of City of Amritsar may not even be aware of the projections of the plaintiff-appellant. Receipt of the notice has been denied and it has been stated that the defendant has neither used the word “Mac” as MacBurger and Mac-Sandwiches. It is also claimed that MAC is the nickname of the defendant and that surname of the defendant is Gill, therefore, the name of the restaurant has been given as Mac Gilz. It is also stated that the word “mac” would mean “SON OF” as is evident from the meaning ascribed in Webstor's Dictionary. Thus, the meaning of Mac Gilz would means “son of Gills”. It is further alleged that the suit has been filed to cause harassment to the defendant and making an effort to make some kind of encashment on account of the usage of the word “Mac”.
5. Learned counsel for the appellant has argued that the very usage of “Mac/MC” as the prefix and suffix by the defendant-respondent shows the clever approach to use and abuse the reputation of McDonald's. Reliance has been placed upon a judgment of the apex Court rendered in Ruston and Hornby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 : AIR 1970 Supreme Court 1649. The aggrieved person before the Hon'ble Supreme Court, had a registered trade mark “Ruston” in respect of diesel internal combustion engines. The defendant started using the trade mark as “Rustam India” for manufacturing of such similar engines. The High Court though held that there was a deceptive resemblance between “Ruston” and “Rustam” which constituted infringement of the trade mark. However, by holding that the suffix-India after Rustam was a sufficient warning to the purchaser, and that, the defendant could be allowed to use the combination. The apex Court reversed the finding of the High Court holding that the High Court did fine deceptive resemblance between the word Rustam and the word Rustom, therefore, the bare usage of the word “Rustam” constituted infringement. It has been held that if the respondent's trade mark is deceptively similar to that of the appellant, by merely adding the word “India” would be of no consequence. Resultantly, the defendant in that case had been injuncted from using the said word.
6. Reference has also been made to another judgment of the apex Court, rendered in re: Power Control Applicances v. Sumeet Machines Pvt. Ltd., JT 1994 (2) S.C 70. It has been held that it is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor, it cannot have two origins where a person proclaims himself as a rival of the other especially if they are the joint owners, then it may not be permissible in law. The joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other. In the above case the trade mark “Sumeet” was sought to be used independently by the two rival groups and that the alleged claim being that they were running the business jointly at one time and even if they have fallen apart the logo could be used by them individually. The defendants in the suit have been injuncted during the pendency of the case before the High Court.
7. Learned counsel for the appellant has also placed reliance upon another judgment of the apex Court rendered in re: Laxmikant V. Patel v. Chetanbhat Shah, 2002 (2) RCR (Civil) 357 (SC) : JT 2001 (10) SC 285. The dicta laid down is that while dealing with an application for interim injunction, the courts must opine as to whether prima facie any similarity is projectable, thus, application should be decided on such conclusions having been drawn by the Courts. If on the face of it, a similarity is discernible, the applicant cannot be denied the relief on account of buts and ifs. If the mere persual of the available facts on record, prima facie makes out a case of such deceptive similarity, denial of injunction would occasion failure of justice and such injunction which may be beneficially suffered by the plaintiff, would not be capable of being undone at a later stage. The discretion must be exercised judiciously, thoughtfully so that such act may not cause injury which may not be retrievable at all or could be compensated in terms of money.
8. Apart from the above, reliance has been placed upon re: Sarabhai International Ltd. v. Sara Exports International, AIR 1988 Delhi 134, Rainforest Cafe, Inc.…Plaintiff; v. Rainforest Cafe & Ors.…Defendants., 2001 PTC 353 (Del), American Home Products Corporn Wyeth Lab Ltd. v. Lupn Lab. Ltd., 1996 PTC (16) 44, Banga Watch Company, Chandigarh v. N.V Philliphs Eindohoven, Holland, AIR 1983 Punjab and Haryana 418, Bajaj Electricals Limited, Bombay v. Metal & Allied Products Bombay, 1988-PTC-133.
9. On the other hand, learned counsel for the defendant-respondent has argued that the bare perusal of the two words “Mcdonald's and MacGilz, does not project any deception or any similarity. It is further argued that prima facie no similarity has been found by the trial Court and resultantly declined to grant any ad interim injunction. It is the settled law that a temporary injunction should not be granted if by granting of the same, the loss suffered by the party against whom the same is granted is far more than the loss which may be allegedly suffered by the plaintiff. In the case at hand, it has not been established prima facie as to whether any monetary loss has been suffered by the plaintiff on account of the alleged deceptive similarity. The plaintiff has also not alleged any instance by virtue of which such averment could be said to have been established. Prima facie averments and arguments based upon the conjectures and surmises of the plaintiff do not make out a case for granting ad interim relief.
10. It is further argued that the word “Mac” has been used by the defendant, the dictionary meaning of which is “Sons of whereas the word “Mc” is being used by the plaintiff. It looks that the word “Mac” has not been used by the plaintiff but is being projected to be used while describing the eatables and that the registration in respect thereof has not been granted by the concerned authority. The admissions of the plaintiff make it abundantly clear that the such applications filed before the registering authority are pending as yet and that nothing has been disclosed as to whether any objections have been received against registration of such trade mark. Thus, it is too early to accept the claim of the plaintiff and resultantly injunct the defendant-respondent from using the aforesaid name, denial of which may ultimately cause fiscal loss so also the damage to the reputation of the defendant-respondent which has been earned as MacGilz.
11. In support of the contentions, learned counsel for the defendant-respondent has placed reliance upon the judgments which are noticed as under:—
Union of India v. Yeshant Agrawal, 1996 (3) Recent Civil Reports 158, Amrit Banaspati Co. Ltd. v. Suraj Industries Ltd. 1952 (2) Civil Court Cases 11, Hazrat Surat Shah Urdu Education Society v. Abdul Saheeb, 1989 Civil Court Cases 33, Man Singh v. HS. Kohli, 1997 (2) RCR (Civil) 370 (P&H) : 1997 (1) Civil Court Cases 638, Sardul Singh v. The Punjab Small Industries & Export Corporation Limited, Chandigarh, 1989 (1) Punjab Law Reporter 466 and Balbir Singh v. Sutbir Singh, 1999 (1) RCR (Civil) 108 (P&H) : 1999 (2) Civil Court Cases 412.”
12. After hearing the rival contentions of learned counsel for the parties, I have pondered over the issue.
13. Reference may be made to the word “Mac” as explained in The New Encyclopaedia Britannica (Volume 7). The word “Mac” as has been used by the defendant-respondent is in fact the word which emanated from a Vietnamese clan which established a dynasty ruling the Tonkin area of northern Vietnam from 1527 to 1592. The said family was known as Mac family and the members of the said family worked as ministers to the Le Kings of the Vietnamese. Later the same was known as Le dynasty which ruled the area from 1428 to 1787. The said dynasty later became virtually powerless and it was in 1527 Mac Dang Dung the head of the family usurped the throne and thereafter about eight years later another clan known as Nguyen re-established the Le monarchs and drove the Mac family out of central and southern Vietnam, since they had tasted the syndromes of a ruler, they established their own kingdom in the north, which was recognised as an independent State by the Chinese protectors of the region. However, on account of having been weakened by internal dissensions, the Mac family lost their territory to another family known as Trinh, who had also earlier served as ministers to the Le dynasty. Perhaps on account of some settlement, the Mac family with the support of Chinese managed to retain small amount of territory on the Vietnamese-Chinese border until 1677.
14. Yet another name which has gone down the history is Mac-Mahon, a descendant of an Irish family that flew to France during the time of the Stuart Mac-Mahon when he began his army career in 1827 in Algeria and distinguished himself in various affairs. Likewise there were number of other persons who were known by the addition of the name “Mc” such as McAdam, John Loudon, a Scottish inventor of the macadam road surface. He perhaps was the first author who wrote first document on “Remarks on the present System of Road-Making”, also wrote an eassy on the Scientific Repair and Preservation of Roads in 1819. Yet another person by the name of McAdoo, William G(ibbs), who began his career as a lawyer in USA in 1941 and from 1913-1918 remained as U.S Secretary of the Treasury. Likewise, a number of names which start with “MC” have been noticed in the aforesaid encyclopedia.
15. Thus, the usage of the words “Mac and Mc” and that the effect thereof has to be examined in the right and correct perspective upon the basis of the evidence which may be led by the parties. It shall be absolutely pre-mature to form an opinion that the two words “McDonal's and MacGilz” are deceptively similar to each other. Admittedly, the applications have been filed by the plaintiff for seeking registration of the trade mark as alleged in the plaint, which are still pending for final orders before the Registrar Trade Mark. By granting ad interim injunction at this stage would bring the business of the defendant at a grinding halt and that the damage and irreparable loss which may be suffered by the defendant-respondent shall not be quantifiable in terms of money. The plaintiff has also not been able to establish as to what kind of fiscal profit has been made or earned by the defendant-respondent, rather the plaintiff has asked for the production of accounts i.e profits which may have been earned by the defendant-respondent. The defendant-respondent has categorically averred that they have suffered business losses and the said statement has not been controverted by the plaintiff. In this view of the matter, it cannot be accepted prima facie that the defendant-respondent has encashed has earned profits by usage of the word “MacGilz” allegedly deceptively to be similar to “McDonald's”. The dicta of the apex Court and various other High Courts which have been relied upon by the learned Counsel for the plaintiff cannot be relied upon at this stage. The description and projection of the circumstances as have been spelt out in the plaint and the application, which have been controverted by the defendant-respondent, make out a triable case which needs to be decided on the basis of cogent piece of evidence which may be brought on record by the respective parties.
16. In view of the above, I am not at all inclined to grant ad interim injunction to the plaintiff. Resultantly, the appeal is dismissed. No costs.
17. Giving thoughtful consideration to the alleged claims of the parties, I consider it appropriate and direct the learned Additional District Judge, Amritsar, to decide the suit filed by the plaintiff within a period of nine months. It is expected that both the parties shall cooperate and produce evidence in support of their claims expeditiously and without any undue delays.
18. Any observations made hereabove shall not be construed as an expression of opinion in any manner whatsoever by this Court, such observations shall not project and colour, impediments and/or restrictions upon the trial court while dispensing justice between the parties upon the evidence brought before it.
Appeal dismissed.