JUDGMENT
M.K. Chawla, J.
1. By this order I propose to dispose of the plaintiff's application I.A. No. 4847 of 1982 under order 39 rules 1 & 2 of the code of civil procedure seeking ad interim injunction restraining the defendants from manufacturing, selling, offering for sale advertising, directly or indirectly dealing in automobile chasis coatings or Automobile parts or appliances or any other allied or cognate goods under the trade mark SUPERSEAL for any other deceptively similar trade mark or from doing any other thing as is likely to lead to passing off its goods and business as the goods and business of the plaintiff. This application was filed alongwith the suit. As per the averments the plaintiff Super Seal India (P) Ltd. is a company incorporated under the provisions of the Indian Companies Act of which Shri Kamal Talwar is a Director. The plaintiff is well knownmanufacturer and seller of automobile parts and appliances particularly oil and grease retainers, brake parts, rubber moulded components and brake hoses since decades past. The plaintiff was incorporated in the year 1960 and since then has continuously and extensively used 'SUPERSEAL' as its trade mark and as its house mark. The trade mark/house mark SUPERSEAL also forms a key and essential portion of its corporate name. This mark has acquired an enviable reputation and goodwill. The plaintiff has also incurred huge expenses on advertisements and publicity of its goods under this trade mark with the result that the purchasing public and the trade identify goods and business of the plaintiff by the trade mark.
SUPERSEAL.
It is alleged that recently it has come to the knowledge of the plaintiff that the defendant M/s. Mantri Brothers have recently started manufacturing and selling automobile chassis coatings under the mark SUPERSEAL for which the defendant has not sought any permission, licence or consent of the plaintiff. The use of the mark surprised by the defendant in the course trade is likely to cause confusion or deception amongst the purchasing public of the trade & particularly when the goods used in relation to automobiles having the same trade channels and outlets as the goods of the plaintiff and to the same class of purchasers. The plaintiff has been receiving orders and supplying goods to M/s. Hindustan Motors Ltd. Since many years while the defendant has started holding itself out by circulars to be the supplier of SUPERSEAL to Hindustan Motors Ltd. The defendant is also holding itself out to be and extension or association or sister concern of the plaintiff company which has enhanced the possibility of confusion and deception to the detriment of plaintiff's business and reputation. The defendants have adopted and used the trade mark Superseal only with a view to earn easy illegal profits by encashing upon the vast reputation of the plaintiff and by passing off its goods and business as the goods and business of the plaintiff. Inspite of repeated demands the defendants have not cared to stop their business under the trade mark Superseal with the result that the plaintiff is left with no other option but to file the present suit seeking decree of permanent injunction restraining the defendants through its partners or proprietors, servants and agents from manufacturing, selling, offering for sale or in any other manner dealing with the goods under the trade mark Superseal etc.
2. After hearing the learned counsel for the plaintiff on his application, ad interim temporary injunction was granted by this court restraining the defendants from holding rapport or association of the plaintiff for the purpose of selling their goods or issuing circular dated 10th November, 1982 or any similar circular. Copy of the restraint order dated 21-12-1982 was duly served on the defendants. The defendant immediately rushed to the court and without filing the reply, opposed the continuation of the injunction already granted against the defendants. Vide order dated 19-1-1983 G.R. Luthra J., modified the ad-interim injunction in these words:
I have heard the learned counsel for the parties. For the present injunction already issued is continued except to the extent that it will not be in respect of issuing of circular dated 10th November, 1982 or similar circulars. However, it is made clear that if the reply is not filed with in 10 days and if the arguments are not started on the date fixed the original injunction might be continued.
3. In response to the directions of this Court the defendants filed their written statement and reply to the plaintiff's injunction application. The case set up by the defendants in brief is that the plaintiff is not the registered proprietor of the date mark Superseal since 1960 as alleged. The word super-seal or super-seal having been registered as trade marks or the house mark of the plaintiff company and the question of their being used continuously extensively and exclusively does not arise. It is also alleged that the super-seal cannot be registered as a trade-mark since it does not fulfill the essential requisites of being registered as a trade mark under the Trade and Merchandise Marks Act and as such the plaintiff have no cause of action for the filing of the present suit or the application. The defendants also denied that the plaintiff's trade marks superseal has acquired any reputation or goodwill in respect of the goods and business of the plaintiff or any amount on its advertisement has been spent. The defendant on the other hand is manufacturing under chasis coatings which also imparts sound deadening effect which dampens the effect of vibration in cars and at the same time protect the under chasis from corrosion. The defendant is marketing the under chasis coating under the mark Superseal. Since the plaintiff has not registered the words Superseal under the Act nor has any exclusive right to use thereof, defendant has the right to use the said word or words and is not under any obligation to seek or obtain any permission, licence or consent of the plaintiff before adoption of the use of the said word or words. There is no likelihood of any confusion in the trade or the general public is relation to the defendant's goods, in as much as they are manufacturing or distributing auto parts or appliances; or other allied goods. The goods manufactured by the defendants are entirely of different class of goods and have no connection with the automobile parts alleged to be manufactured by the plaintiff. In the circulars the defendant has specifically stated that it is manufacturing under-chasis coatings, under the name Superseal and the name of the defendant Mantri Brothers has been prominently displayed in the said circular, and as such there cannot be any confusion as to the identity of the manufacture of the defendant's goods. The defendant is a regular supplier to Hindustan Motors and they have not been confused or deceived, in any manner with the under-chasis coatings manufactured by the defendant and not by the plaintiff. The defendants have never held themselves to be an extension or an association or sister concern or agent of the plaintiff as alleged. The plaintiffs have not suffered any loss in their business or reputation and the present suit being false to their knowledge merits dismissal. In the replication the plaintiffs controverted the pleas raised by the defendants in their written statement and reiterated the facts as stated in the plaint. The issues in the case are yet to be framed.
4. I have heard the arguments of the learned counsel for the parties and with their help gone through the record carefully.
5. Even though the defendants have denied the existence of the plaintiffs in the trade of manufacture and sale or automobile parts under their trade mark/trade name Superseal since 1960 but the copies of the documents filed on the record prove this assertion of the plaintiff. Advertisements of the plaintiff's trade mark in relation to oil grease retainers, break parts, rubber moulded components and break houses support their case that they are in this business/trade since for the last many year. On the other hand the defendants issued the circular dated 10.11.1982 for the first time showing their intention to the manufacture of and the sale of the under chasis coatings, mainly used as anti-corrosive by the auto-mobile industry. Immediately on coming to know of the issuance of this circular/letter plaintiff rushed to the court and initiated the present action in the month of December 1982. Learned counsel for the plaintiff has also led me through the number of certificates alleged to have been issued in favour of the plaintiff by the various countries where they displayed their goods in the engineering exhibitions. The copies of the various orders also indicate that the plaintiff's trade mark has acquired enviable reputation and their goods are being associated with the goods and business of the plaintiff. Unfortunately the defendants on the other hand have not cared to file any cogent documentary evidence suggesting that their goods with trade name Superseal, have become popular in the market or being associated with the goods manufactured by them. The plaintiff is the registered proprietor of the trade mark Superseal in Class 12, in respect of the oil seals and rubber parts of the motor land vehicles which certificate is still in subsistence. They are also the registered proprietor of the carton with superseal under the Copyright Act in which the user is claimed since 1971. This registration is also in force till today. The letter dated 10th November, 1982 of the defendants which was addressed to the Allied Motors (P) Ltd. indicate that they introduced themselves as manufacturers of Superseal Under-Chasis Coating. It was also known to the defendant that Superseal is being used by Hindustan Motors Ltd., as a sound deafner and under-chasis coatings, as the addressee is authorised dealer of Hindustan Motors who used their product.
6. I am in entire agreement with the learned counsel for the plaintiff that the use of their registered trade mark 'Superseal' as a trade mark or as a part of the trade name, on the part of the defendant would amount to an act of infringement and passing off their goods as those of the plaintiff. Being registered proprietor of the trade mark Superseal, section 28 of the trade & Merchandise Marks Act confers exclusive right on the plaintiff to use same. Under section 29 of the Act, the use of any mark which may be identical or deceptively similar to the trade mark of the plaintiff shall constitute infringement. Furthermore Section 31 of the Act provides that the registration of the trade mark under the provisions of the Trade and Merchandise Marks Act shall be a prima facie evidence of the validity thereof. The plaintiff having established vide reputation and goodwill to the manufacture of motor parts and superseal being the key portion of the plaintiff's trade mark, prima-facie is entitled to its exclusive use and protection under the law relating to passing of. The defendants in the instant case has adopted the words 'Superseal's as the key portion of its trade name/trade style which is prima-facie the infringement of the plaintiff's trade mark.
7. Learned counsel for the plaintiff has relied upon an unreported judgment of this court in Globe Super Parts v. Blue Super Hame Industries and another, I.A. 536 of 1984 in suit No. 180 of 1984. S.B.W. and while confirming the ex-parte injunction already granted in favour of the plaintiff observed as under;
Passing off is recognised as a tort with the object of preventing unfair trading and appropriation property rights of a trader. The object is to prevent unfair competition and undue benefit being taken of the reputation (already achieved) of rival traders, by means of false or misleading devices. The defendants' contention is that the word SUPERFLAME is a combination of the word Super and Flame. Flame is a normal descriptive word and Super is a laudatory preposition. They submit that the plaintiff cannot claim any monopoly in the use of the said words as they have not acquired distinctiveness
8. While rejecting this contention it was held:
that the Super-flame products are so widely advertised that on seeing the advertisement a common customer would ask for the gas appliances with the said name. He does not known what is the difference between a trade mark and a trade name. It is rightly said that this description exists in the minds of lawyers but not of common customers
9. As the plaintiff have alleged themselves to be in this trade prior to the defendant's coming on the scene the ad-interim injunction was confirmed.
10. The facts of the case referred to above fairly and squarely apply to the case in hand. Exactly same set of arguments were addressed; taken note of and rejected. This case is rather on a strong footing. Both the parties are in the same trade channel and manufacturing and supplying the material which is used in the automobile industry under the same trade mark trade name. The plaintiffs have amply proved on the record that the Hindustan Motors to whom the defendants also started supplying their product was their main customer, since prior to the coming into existence of the defendants, the possibility of the confusion in these circumstances cannot be ruled out. It hardly makes any difference if the defendants are using the trade mark 'super seal' separately, whereas the plaintiffs are using the trade mark 'superseal', as to my mind it conveys the same sense to an ordinary customer. In the latest judgment of our own High Court reported as B.K. Engineering Co. Versus Ubhi Enterprises (Regd.) and another, 1985 Patents and Trade Marks Cases 1 the Division Bench of this court has rightly held:
That the use of the trade mark as part of the trade name or vice versa is prohibited under the law of passing off. The law of passing off is an action to restrain deceit fraud and mis-appropriation of the name and goodwill of another. It may be qua the goods or qua the business. The sole question is whether the use of the mark/name on the part of the defendant is such which is likely to cause confusion or deception in mind of the unweary class of customers having imperfect recollection.
11. The principles by which such like cases are to be decided are well established. The fundamental principle is that a person shall not be allowed to trade upon, under a name so closely resembling to that of the plaintiff, so as to cause confusion in the mind of the general public. It is not necessary for the name plaintiff to prove that the defendant is using the complained of with any fraudulent intention. It is enough if the plaintiff proves that the act of the defendants in assuming the name complained of is an injury to the plaintiff's right.
12. As a result of the above discussion, I have no doubt in my mind that the plaintiff has been able to make out the prima-facie case for the grant of ad-interim injunction as prayed for in their application. The defendants will not suffer any injury/loss as immediately after they tried to introduce themselves to the various automobile dealers the present action was initiated. They have not yet established in the trade. The placing of few orders by the Hindustan Motors by itself is not enough to cause any injury to the defendants. On the other hand the plaintiffs will suffer heavily in their trade, business and goodwill, if the defendants are not restrained by issuance of the ad-interim injunction. The balance of convenience also to my mind lies in favour of the plaintiff. In the result I allow the application and restrain the defendants through its partners or proprietors, their servants and agents by ad-interim injunction from manufacturing, selling offering for sale, advertising directly or indirectly dealing with automobile under chasis coatings or automobile parts or appliances or any other allied or cognate goods under the trade mark SUPERSEAL or any other deceptively similar trade mark or from doing any other thing as is likely to lead to passing off its goods and business as the goods and business of the plaintiff, till further orders. Any observation made in this order will have no bearing on the merits of the case.