JUDGMENT
Gian Chand Jain, J.
1. M/s Ambala Sarabhai Enterprises Ltd., the plaintiffs have brought a suit seeking inter alia permanent injunction (a) restraining the defendants, their servants, agents, stockists from using the word SARA as part of their trading/trade name SARA PHARMACEUTICALS which is deceptively similar to the plaintiffs' trading style SARABHAI CHEMICALS or SARABHAI M CHEMICALS and which includes the plaintiffs' registered trade mark SARA or part of their trade mark SARABHAI (b) restraining the defendants their agents, servants, etc. from using the trade mark SARALYTE or trade name/trading style Sara Pharmaceuticals in respect of pharmaceuticals, medicinal and veterinary preparations and chemical products which are infringements of the plaintiffs' registered trade mark and pending trade marks and (c) restraining the defendants, their agents, etc., from passing off or enabling others and causing or assisting others to pass off their goods and/or business as and for the goods and/or business of the plaintiffs by using the trade mark SARALYTE and/or the trading style SARA Pharmaceuticals and any other mark or trading style in which the word Sara forms a part. These reliefs have been claimed on the allegations that the plaintiffs were the owner of trading style/trade name Sarabhai Chemical and the goodwill pertaining thereto in respect of medicinal pharmaceutical and veterinary preparations by virtue of assignment deed dated 25.4.1978. The said trading style was being used by the plaintiffs and their predecessors in business and title for the past more than 30 years in respect of the said goods all over India. The plaintiffs are the proprietors of (a) trade mark Sara under No. 113071 in class 5 as of August 27, 1945 in respect of pharmaceutical veterinary and sanitary substances infants and invalids foods plasters material for surgical bandaging, material for stopping teeth, dental wax, disinfectants preparations for filling weeds and destroying vermin (b) trade mark containing the word Sara under No. 113072 in class 1 as of August 27, 45 in respect of chemical products used in industry, science, photographs, agriculture, horticulture, forestry, manures etc. and the above trade marks were being used since the date of registration which had been renewed from time to time and were subsisting and valid. The plaintiffs had applied for registration of trade mark SARABHAI and SARABHAI enables in respect of medicinal, pharmaceutical and veterinary preparations in class 5 under the Trade and Merchandise Marks Act and the registration certificates were awaited. They were using all these trade marks since long. The sales turn over of goods under the Sarabhai and Sarabhai enables during the period March, 77 to June 1980 was approximately Rs. 166.78 cr. and they had spent about Rs. 11.17 crores in making these products known. The plaintiffs and their predecessors had sold the above mentioned goods under the trading style SARABHAI chemicals during the last 30 years to the tune of Rs. 493.22 crores and their present annual sale is approx. Rs. 55.62 cr. The plaintiffs were also owners of trading name trading style SARABHAI M CHEMICALS and the goodwill pertaining thereto in respect of vitamin C chemicals and laboratory reagents by virtue of assignment deed dated 15.2.79 and they and their predecessors had sold and offered for sale and the above mentioned goods under the said trading style SARABHAI M CHEMICALS for the last more than 8 years to the tune of Rs. 59.81 crores. The present annual sale of the said goods under the said trading style SARABHAIM CHEMICALS was approx. Rs. 10.74 cr. They had approximately spent Rs. 0.86 cr. In making the said products and the name SARABHAI M CHEMICALS known to all concerned and the general public and by virtue of long continuous and extensive user huge sales and expenditure incurred and trading style Sarabhai chemicals and the trade mark SARA SARABHAI and SARABHAI emblems had acquired very wide reputation, goodwill and name all over India in respect of pharmaceutical, medicinal and veterinary preparations and the said trading style and trade marks were exclusively associated with the plaintiffs and no one else.
2. In or about August 80 the plaintiffs came to know that the defendants had started using the trading style SARA PHARMACEUTICALS and were manufacturing offering for sale and advertising pharmaceutical goods under the trade mark SARALYTE. The adoption of the trading style SARA PHARMACEUTICAL and selling the goods under the trade mark SARALYTE it was pleaded was fraudulent and calculated to deceive and create confusion among the trade and the general public and to give an impression that the defendants were an organisation branch or a division of the plaintiffs or had some connection with the plaintiffs and that they were infringing the trade marks of the plaintiffs and were passing off their goods and trading style as that of the plaintiffs and by using the offending trading style and trade marks had made wrongful gains from the reputation, name and goodwill of the plaintiffs.
3. In this suit the plaintiffs have filed the present application I-A 3465/81 under Order 39 Rule 1 and 2 and Section 151 CPC for granting temporary injunction restraining the defendants, their agents, servants, etc. from infringing the registered trade marks by using the trade mark Saralyte or trade name/trading style Sara Pharmaceuticals and any other deceptively similar mark and for passing off or causing, enabling or assisting others to pass off their goods and/or business as the goods and/or business of the plaintiffs by using the mark saralyte or any other name deceptively similar to Sara, Sarabhai or Sarabhai emblem or by using the name SARA Pharmaceuticals or any other deceptively similar name.
4. It was averred that the defendants adoption of the offending trading style and trade name with the word SARA was contumacious, dishonest and fraudulent that their activities had created confusion in the trade and the public, and that the plaintiffs had a strong prima facie case and had already suffered and were likely to suffer damages and injury in their business in case the temporary injunction was not granted.
5. The defendants resisted the application. According to the averments, defendants No. 2 to 5 were brothers. In the beginning of the year 1963, defendants No. 2, P Radhakrishan started business in pharmaceutical items under the trading name/trading style SARA Agencies. At that time defendants No. 3 to 5 were minors. On their attaining majority in the year 1975 defendants No. 2 and 5 started business in partnership under the trading name/style SARA Pharmaceuticals in the year 1977 SARA Pharmaceuticals got a manufacturing licence from the Govt. of Tamil Nadu for the manufacture of some capsules. Sara Pharmaceuticals was thereafter launched as an SSI unit with the Govt. help with a lot of publicity etc. The word SARA in their trading name was adopted by using the first two letters from the name of their mother Smt. Sarswati and the first two letters from the name of def. No. 2, P. Radhakrishnan. They had already applied for registration of their trading mark under the Trade and Merchandise Marks Rules, 1959 and their applications were pending with the Registrar of Trade Marks under No. 353193 and 353194 in class 5. Later on it was alleged by defendants in IA 798/82 that the registrar had accepted for registration the trade mark SARA pharmaceutical which was pending before him on behalf of the defendants.
6. Sara agencies and SARA Pharmaceuticals were family concerns of the defendants and there was no difference between the two. The trade name SARA Agencies had been in continuous use for the last 19 years. From the very beginning it had established a reputation in its own field and had received a number of merit certificates and awards from well reputed pharmaceutical companies and Govt. institutions and departments. This was in the knowledge of the plaintiffs. The plaintiffs themselves had been dealing with SARA Agencies for over a decade. Sara agencies had been stockists and distributors for SARABHAI Chemicals predecessor in interest of the plaintiff since 1970. The plaintiffs objected to the use of the word SARA by SARA Agencies for the first time by writing a letter in 1978 which was duly replied and thereafter the plaintiffs kept quiet. The trade mark of the plaintiffs had nothing to do with the name trade mark and products of the defendants. Neither the trade mark nor the design nor the wording had any similarity with the mark name and wording of the plaintiffs and there was no scope for any confusion or creating an impression that the defendants were an organisation's branch or a division of the plaintiffs. It was also averred that the word SARA was a common household name and was popular in Kerala and Tamil Nadu and nobody could have registration of such a name as a trade mark. It was also pleaded that this court had no territorial jurisdiction to try the suit that the plaintiffs were guilty of delay and laches and that there was no balance of convenience in their favour.
7. The court has discretion in granting interlocutory injunction in infringement and passing off actions. Interim injunction has to be granted only if the plaintiff succeeds in making out a prima facie case for the relief sought. He is required to satisfy the court that there was infringement of his legal right and he had reasonable probability of success in the action ultimately. He is also to prove that the balance of convenience was in his favour and that if the interim injunction was not issued it would cause irreparable injury to him.
8. In considering whether to grant an interlocutory injunction the right course for a judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defence and then decide what is best to be done. Sometimes it is best to grant an injunction so as to maintain the status quo until trial. At other time it is best not to impose a restraint upon (the defendant) but leave him free to go ahead. Lord Denning in Hubbered v. (Vospen 1972) 2 WLR 389).
9. The plaintiffs have filed on record a certificate from the Deputy Registrar of Trade Marks which shows that they were proprietors of the trade mark containing the word SARA with a monogram containing letter Sa in Hindi above the wood SARA as of August 27, 1945 in respect of pharmaceutical veterinary and sanitary substances infants and invalids foods plasters material for surgical bandaging etc. Another certificate filed by the plaintiffs shows that they were the proprietors of the same trade mark as on August 27, 1945 in respect of chemical products used in industry science, photograph, agriculture, horticulture, forestry, etc.
10. In para 5 of the plaintiff, it was alleged that the plaintiffs were also the proprietors of trade mark SARABHAI per se and SARABHAI emblems. However in the plaintiff itself it is admitted that the applications for registration under No. 310659B and 310658B and 361884 in this behalf were pending for registration. The acceptance of an application for registration in itself does not create any statutory right in favour of the plaintiff. I am fortified in this view from the division bench decision of this Court in Metro Playing card co. v. Wazir Chand Kapoor AIR 1972 Del 248, wherein it was laid down in clear terms that the mere acceptance of application for registration of a trade mark confers no right. Similarly the fact that the application of defendants for registration of the trade mark sara pharmaceuticals has been accepted even if correct as alleged in IA 798/82 would not create any statutory right in favour of the defendants.
11. On behalf of defendant it was contended that sara was a christian name and was therefore not registerable. Reliance was placed on an invitation letter relating to annual conference of Indian Association of Pathologists and Microbiologists. On the back of this invitation card certain names are given of the dignitaries who were to deliver welcome inaugural address. One of the name is that of Dr. Sara Varghese. Reference was also made to Chambers dictionary at P. 1356 where the meaning of the word Sara has been given as princess, queen. This contention however is not of much consequence in as much as the question of validity of a registered trade mark can be considered only in a rectification proceeding. No such rectification proceedings have admittedly been initiated so far. For these reasons, the statutory presumption of prima facie validity would prevail.
12. The question which now falls for determination is whether the defendants' trade mark Saralyte P, Saralyte G, Saralyte E, Saralyte M, Saralyte Saragyl and Sarapham in respect of pharmaceutical goods infringe the plaintiffs registered trade mark Sara in respect of pharmaceutical goods. Under S. 29(1) of the Act, a registered trade mark is infringed by a person who not being the registered proprietor of the trade mark or a registered user thereof 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 any goods 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.
13. It is not disputed that the goods in respect of which the disputed marks are being used by the defendants are covered by the registration of the plaintiffs and the use of these trade marks is in the course of trade in areas covered by the registration. The defendants' trade marks are not identical with the registered trade marks of the plaintiffs and therefore the question to be determined is whether the impugned trade marks are deceptively similar to the registered trade mark of the plaintiffs and are likely to be taken as being used as the trade marks of the plaintiffs.
14. Under S 2(a)(d) of the Act, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as is likely to deceive or cause confusion.
15. It is settled law that in comparing two marks, emphasis should be laid on the distinguishing and essential features. The first syllable of the trade mark of the defendants contains the word SARA. It is distinguishing feature and the main part of the trade mark. The first syllable of a trade mark even otherwise is generally considered the most important part especially in case of short words. The defendants' trade mark thus use the whole of the trade mark of the plaintiff. The addition of other letters Lyte, or Pham, Gyl will not affect the issue. Prima facie the trade mark of defendants i.e. Saralyte, Saragyl and Sarapham are likely to cause confusion as to the trade source especially in the light of the allegations contained in annexure D filed by plaintiffs that yearly sales turnover of medicinal, pharmaceuticals and other products in business beating the trading style name Sarabhai Chemicals in the year 1979-80 was Rs. 5561-99 lacs. The impugned trade mark of the defendants in my opinion are prima facie deceptively similar.
16. The defendants have raised the plea that they started their manufacturing unit in the year 1977 with a lot of publicity. That however would not make much difference. Concurrent user is a valid defence under S. 33 of the Act if the user was prior to the date of registration of plaintiffs' marks. This admittedly is not the case.
17. I am also of considered view that balance of convenience so far as the trade marks Saralyte, Saragyl and Sarapham are concerned was in favour of the plaintiffs and they would suffer irreparable injury in case the temporary injunction was not granted.
18. Defendants are admittedly carrying on business under the trade name SARA Agencies and Sara Pharmaceuticals. In other words they are using the trade marks of the plaintiffs SARA in their trading style. Prima facie it amounts to an infringement. However the defendants are carrying on their business in this style Sara Agencies for the last more than 19 years. They had dealings with the plaintiffs. The defendants have filed various letters which show that the dealings were used in the year 1980. The plaintiffs prima facie were therefore guilty of delay and laches. Moreover they were not likely to suffer any irreparable injury in case the temporary injunction restraining the defendants from using their trading style/name was not granted. On the other hand, the temporary injunction restraining the defendants from carrying on business under the name and style of Sara Pharmaceuticals and/or SARA Agencies will have serious repercussions on their rights. In all the circumstances, it would not be proper to issue a temporary injunction restraining the defendants from using the trading style Sara Agencies and/or sara pharmaceuticals.
19. The defendants also raised a preliminary objection that this court has no territorial jurisdiction to try this suit. The plaintiffs' case is that they came across a copy of the Indian Pharmaceutical guide 1980 and from that advertisement came to know that they were offering for sale and advertising pharmaceutical goods under the trade mark Saralyte. Prima facie publication of an advertisement in Delhi Offering for sale these goods was sufficient to confer jurisdiction on the Delhi Courts. In conclusion, I partly aspect the application and grant temporary injunction restraining the defendants from using the trade marks saralyte, saragyl and saragyl or any other deceptively similar trade mark till the disposal of the suit.