Usha Mehra, J.:— Plaintiff has come to this court seeking relief against the defendant on the ground of passing off his trade mark with the word “Hot Flo” by the defendant.
2. In short the case of the plaintiff is that be is manufacturing and marketing Hot Chambers, Electric boilers, water heater (electrical), geyesers, Room heaters, cooking apparatus and installations electrically operated. He is applying distinctive Trade Mark “Hot Flo” and ‘PMW Hot Flo’ on its goods since 1963 and 1974 respectively. These trade marks are registered under the Copyright Act, 1957. His goods are in great demand in the market because of its standard quality and unfailing technical know how and precision. Plaintiff has acquired a goodwill and reputation in the Trade. Defendant has now adopted the trade mark ‘Hot Flo’ for its product instant geyser-cum-shower which is identical and deceptively similar to plaintiff's trade marks ‘Hot Flo’ and ‘PMW Hot Flo’. This causes confusion and deception amongst the purchasing public. This application has been opposed, inter alia, on the ground that the word ‘Hot Flo’ is descriptive of the goods and not distinctive. It is misspellings of the word ‘Hot Flow’, hence the plaintiff has no exclusive right to use the word ‘Hot Flo’. Copyright registration does not give the plaintiff any right in respect of the word ‘Hot Flo’. Since plaintiff's trade mark is not registered, he could not use the word ‘R’ while marketing his goods. Moreover the allegations of suffering loss are vague. Defendant's product is different from that of the plaintiff. It is for the first time in India that ‘Instant Hot Shower’ a new product is marketed by the defennant. Plaintiff has no monoply rights in respect thereof. Defendant's trade mark is being used since June, 1989. Since plaintiff's trade mark word ‘Hot Flo’ is not registered hence plaintiff has no right to institute infringement proceedings.
3. At length the arguments were advanced by the counsel for the defendant Mr. M.R Bhalerao that the word ‘Hot Flo’ is only discriptive in nature. Trade mark of plaintiff has not become distinctive. The word ‘Hot Flo’ or ‘PMW Hot Flo’ are misspelling of the word ‘Hot Flow’ and that is discriptive in nature. According to Webster's New World Pocket Dictionary the meaning of ‘Hot’ is very warm' or ‘high in temperature’ and the meaning of ‘Flow’ is ‘move as water does’, more smoothly' as a noun ‘a thing that flows’.
4. Mr. Bhalerao contended that the function of geyser is to make the water warm and make it flow through the taps, so the word ‘Hot Flo’ is misspelling of the word ‘Hot Flow’ and thus descriptive. If the trade mark is descriptive it cannot be registered because it is not capable of distinguishing the goods. Such words of description are the property of all mankind and it would not be right to allow any individual to monopolise them and exclude others from their use. Hence plaintiff cannot have monopoly rights on the word ‘Hot Flo’. Registrar of Trade Marks has already declared ‘Hot Flo’ as descriptive on an application filed by Paul Electric Company of Chandigarh Secondly plaintiff cannot take advantage of registering this under Copyright Act. This amounts to misleading the public. Copyright Act as amended provides a proviso to Section 45(1) which says that the person seeking Copyright registration should firstly obtain the certificate from Registrar of Trade Marks. Plaintiff herein obtained Copyright registration in 1931. That registration does not give any right in respect of the word ‘Hot Flo’. ‘Hot Flo’ is not an invented word and as such not considered distinctive. He placed reliance on a Softens Trade Mark Case 1976 RPC (Report of Patent Case) hereinafter referred to as RPC).
5. The facts of that case are that the party applied for registration of his trade mark with the word ‘Soflens’ for contact lenses. The registration was refused on the ground that it was phonetically equivalent to ‘Soflens’. Therefore it was held that ‘Soflens’ was highly descriptive and the said word would be directly meaningful to the members of the public. Mr. Bhalerao, therefore, contended that an ordinary descriptive word will be extremely difficult to establish that it will aquire a distinctive meaning in relation to plaintiff's goods. He placed reliance on the case of Cellular Clothing Co. v. Mauxton and Mu???ay, 16 RPC 397 (HL). In that case the defendant book containing varius patterns of goods supplied to them by various manufacturers had used the word ‘Cellular’. Passing off action was filed against the defendant for using this word for cloth not manufactured by the piantiff. Defendant contended ‘Cellular’ being an appropriate description of the goods, could not be monopolised by an particular trade. The injunction was refused by observing that “cellular” being a cloth made of “cells” has not been displaced by secondary meaning as the plaintiff's trade mark. Reliance was also placed on the decision in the case of Ruplev v. Grippiths, 19 RPC 590. In that case the plaintiff was selling his laundary blue in oval block shape and wanted it to be called his blue-as ‘oval blue’ or ‘Ripley's oval blue's, The court held that the plaintiff could not discharge the onus of proving that the words purely descriptive and in common use in common language and accuratery describing the article had acquired by him as a Trade mark. He further placed reliance on Fels v. Stephenson Bros, 20 RPC 443, 21 RPC 85, 89, where it was held that ‘naptha’ being a descriptive term, the plaintiff failed to discharge the burden of proving the identification with them. Similarly he has also placed reliance on the dicision of Fels v. Hedley & Co., 20 RPC 437 & 21 RPC 91. Lastly he has placed reliance on Weingarten Bros v. Rosenthal, 21 RPC 212. In this case the plaintiff, an American firm could corsets under the name “Erect Form”. The court held that “Erect Form” applied to corsets was a descriptive term and had not acquired as secondary signification and denoting the plaintiff's corsets. Passing off action was dismissed.
6. Mr. Goel appearing for the plaintiff contended that there is a fallacy in the argument of the defendant. The plaintiff has based his claim on the passing off action. He has not applied for the registration of his trade mark. All these authorities cited by the defendant may be good if plaintiff had applied for registration of his trade mark. These decisions are not applicable nor hold good so far as action on the ground of passing off is concerned.
7. I have heard the learned counsel for the parties and perused the record. Admittedly the case of the plaintiff is not for registration of the trade mark. His claim is based on the action of passing off. In action for passing off one has to establish the prior user of the trade mark in point of time. He has also to establish that because of the similar and deceptively similar goods being sold under the same trade name, the plaintiff has suffered loss or it has caused damage to his reputation and goodwill. He has also to prove that his trade mark with that word has acquired a reputation and goodwill in the market. Actual damage or fraud is not necessary in passing off action. What is relevant in a passing off action is the proprietory interest in the trade mark by virtue of user.
8. Mere registration would not be enough in a passing off action. Section 27 of the Trade and merchandise Marks Act, 1958 (hereinafter called the Act) reads as under:
“27. No action for infringement of unregistered trade mark—
(1) No person shall be entitled to institute any proceeding to prevent, or to reeover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.”
The relevant parts of Section 106 of the Act reads as under:
“106. Reliefs in suits for infringement or for passing off—
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in Sectios 105 includes an injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing tables and marks for destruction or erasure.
(2) Notwithstanding anything contained in Sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case:
(a) Where in a suit for infringement of a trade mark, the infringment complained of is in relation to a certification trade mark; or
(b) Where in a suit for infringement, the defendant satisfies the court:
(i) that the time he commenced to use the trade mark complained of in the suit be was unware and bad no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiffs right in the trade mark, he forthwith ceased to use the trade mark in relation to goods in respect of which it was registered; or
(c) where in a suit for passing off the defendant satisfies the court:
(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the plaintiff's trade mark, he forthwith ceased to use the trade mark complained of”.
9. The perusal of the above sections makes it clear that registration of Mark in the trade mark registry would be irrelevant in action for passing off, In determining whether a particular mark is common to the trade, use of the said mark would be a relevant factor.
10. There cannot be any quarrel with the proposition of law laid down in the judgement cited by the counsel for the defendant. I find force in the submission of Mr. Goel that plaintiff in this case has not based his claim on infringement of his Trade Mark. Had it been his case registration would have been extremely relevant. In all these cases cited by Mr. Bhalerao, the question involved was registration of the trade mark. While rejecting the application for registration of Trade Mark “Soflens”, it was observed that mark was descriptive. Furthermore much water has flown between the time the judgments were passed in the cases relied upon by the defendant and the passing of Trade and Merchandise Marks Act. Supreme Court and for that matter our own High Court have held that in a passing off action user prior in point of time is a very material consideration.
11. The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 SC 142, laid down the rules viz-a-viz user of a mark as opposed to registration of mark. It observed that the onus of proving user is on the person who claims it. It did not approve of looking into the register of trade marks where a mark may be entered to be any proof of user. To quote from the speech of the A.K Sarkar, J:
“Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It it not permissible to draw any inference as to their user from the presence of marks in the register”.
12. It is a well settled proposition of law that in order to succeed in passing off action plaintiff has to establish user of ‘Hot Flo’ prior in point of time. The registration of the said mark prior in point of time to user by the plaintiff is irrelevant. The gist of the law relating to a passing off action was said to be enunciated in T. Oertb A.G v. E.J Bowman (London) Ltd., 1959 RPC 1. It was held that the gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods and thus causing it to be associated or identified with those goods has aquired a quasi proprietory right to the exclusive use of the mark or get up in relation to goods of that kind, which right is invaded by any person who, by using the same or some deceptively similar mark or get up in relation to goods not of the plaintiff's manufacture, induces customers to buy goods not of the plaintiff's manufacture as goods of the plaintiff manufacture, thereby diverting to himself orders intended for and rightfully belonging to the plaintiff. The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 observed that the use by the defendant of a trade mark of the plaintiff is not essential in an action for passing off, but is since quo non in an action for infringement.
13. Next contention of the defendant that plaintiff has not proved actual damage is also without substance. In this regard reliance can ae placed to the observation of Salmond in his Law of Torts (Twelfth Edition) described the basis of passing off action in the following words:
“The courts have wavered between two conceptions of a passing off action as a remedy for the invasion of a quasi proprietory right in a trade name or trade mark, and as a remedy analogous to the action on the case for deceit for invasion of the personal right not to be injured by fraudulent competition. It has recently been said that “the true basis of the action is that the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of bis business. In general the violation of a right property is actionable even though ft is innocent and though no damage has been proved. At common law it was necessary to prove an actual fraudulent intention, but a different view was taken in equity, and since the Judicial Acts it has been generally accepted that it is not necessary in an action for passing off to prove fraud that is to say, an intent to deceive. It is sufficient in all cases to prove that the practice complained of is calculated (that is to say, likely) to deceive”.
14. Therefore it can be said that actual damage need not to be proved in a passing off action. If on account of the act of the defendant, proprietory right of the plaintiff is going to be invaded, a case of injunction is made out. I am supported in this regard by decision of our own High Court in the case of Prime Chemical Works v. Sukhdayal, ILR 1974 Delhi 545.
15. The argument of the counsel for the defendant that plaintiff has not spelled out as to how much amount he has spent on the advertisement can be negatived because in an action for passing off actual amount spent for advertisement or on building the reputation and goodwill is not necessary to be established at this stage. In fact the trade mark is a proprety right, its invasion has to be protected. The balance of convenience obviously would be in favour of the plaintiff who has been using the trade mark prior in point of time. The defendant in this case is using the similar trade mark as that of the plaintiff for its products. Plaintiff is marketing his electric goods like geyesers under the trade names ‘Hot Flo’ and so does defendant, It will cause deception in the mind of common buyers. Defendant may call his product as ‘Instant Hot Shower’ but because of similarity in trade name, purchasers are bound to be deceived. There is every likelihood that buyers would on account of this similarity treat the product of defendant as that of the plaintiff. Both are electrical goods. These have to be sold on the same set of shops. The ‘geyeser’ as well as ‘instant hot shower’ are to be purchased by the same set of customers. Therefore, there are chances that the common man is going to be deceived by the word ‘Hot Flo’ for which the plaintiff has already acquired the reputation. It will cause confusion in the mind of a common man who is going to believe that this instant hot shower is also the product of the plaintiff. This is sufficient to cause deception. Customers can be literate, as well as illiterate.
16. Because of this similarity confusion and deception would be caused. It will prima facie affect the reputation and goodwill of the plaintiff. Hence prima facie the plaintiff has been able to build a case for injunction.
17. Reliance has been placed on the decisions in the case of Creative Handicrafts v. Sadana Electric Co., 1988 PTC 348 decided on 19th July, 1988 and M/S. Kumar Electric Works…Plaintiff; v. Anuj Electronics…Defendant., 1989 (2) ALR 133. Reliance was also placed on the decision in Globe Super Parts v. Blue Super Flame Industries, AIR 1984 9. In that case plaintiff manufactured and marketed various gas appliances under the trade mark ‘Superflame’. It was not a registered trade mark. The plaintiff challenged the action of the defendant in marketing their products under the same trade name and based their claim on passing off. The court observed that the passing off is recognised as a tort with the object of preventive unfair trading and appropriation property rights of a trader. The object is to prevent unfair competition and undue advantage being taken of the reputation of rival traders by means of false of misleading devices. It was held that keeping in view the prior user of time, injunction be granted in favour of the plaintiff,
18. The next point urged by the counsel for the defendant was that the word ‘Hot Flo’ is descriptive and cannot be registered and in fact the Registrar of Trade Marks has already declined to register the trade mark with the word ‘Hot Flo’ embodied by other company, therefore, the plaintiff has no right. This argument is also without force. The reading of Section 17 of the Act show that the registration does not confer any right of exclusive use. The right against passing off is independent and does not arise out of registration. From the reading of Section 27 of the Act this position becomes clear.
19. Disclaimer or refusal to register a particular word in a trade mark will not deter the plaintiff firm instituting this suit on the claim for passing off action or protect his right as held in the case of Charan Dass and Veer Industries v. Bombay Crockery House, 1984 PTC 102.
20. The plaintiff in that case based his claim for passing off. The objection of the defendant was that (he word ‘PERFECT’ being an adjective or a laudatory epithet cannot be registered and in the absence of registration he had no exclusive right to use that trade mark for his goods. This court repelled the objection of the defendant on the ground that the right against passing off does not arise out of a registration of trade mark. It is independent and, therefore, granted the stay. The other objection by Mr. Bhalerao that the plaintiff has not placed on record any material to prove that he has a reputation in the market or that it is going to be affected. I am afraid this argument is also of no substance in view of the fact that plaintiff has placed on record the sale figures of the firm including of geyesers, electric heaters, water heaters etc. from the year 1963-64 to 1989-90. From these sale figures prima facie it can be said that plaintiff has a large scale proceeds and a huge market.
21. Mr. Bhalerao lastly contended that the plaintiff has not produced an iota of evidence to establish that he has suffered or is likely to suffer a loss. He has also not been able to establish that his product has become known in the market. Plaintiff according to the defendant committed an offence under Section 81 of the Act by misleading that his trade mark is registered. Therefore cause of action has not accrued against him. On the other hand the defendant has introduced a new product in India after spending huge amount. Much hardship would be caused to him if he is stopped from using the word ‘Hot Flo’ for bis ‘Instant Hot Shower’. There is lot of difference in the prdduct of plaintiff and the defendant. Plaintiff is selling his geyeser whereas the ‘Instant Hot Shower’ is a totally different item and the customers are not going to be misled. For this purpose he has placed reliance on the decision in the case of Turners's Motor Manufacturing Co. v. Miesse Petrol Car Syndicate, 24 RPC 531.
22. The authorities cited and relied by the defendant are distinguishable.
23. But in those cases the courts were not dealing with the question of passing off. Andhra Pradesh High Court's decision in Sayed Nizamuddin v. Golden Tobacco Co. Pvt. Ltd., (1978) 1 ILR p. 135 case is of no help to the defendant. In that case, of course, the Andhra Pradesh High Court came to the conclusion that unless the plaintiff establishes the likelihood of damage, action does not lie. But our Division Bench in Century Traders… v. Roshan Lal Duggar & Co…, AIR 1978 Delhi 250 has held otherwise. It has taken a contrary view. In Century Traders case it was held that proof of actual damages is unnecessary in a passing off action. It was further observed that if there is likelihood of the offending trade mark invading the proprietory rights, a case of injunction is made out. Therefore with respect I do not agree with the decision of the Andhra Pradesh High Court referred to above. Since in this case the plaintiff has the right because of the earlier user in point of time, therefore, prima facie case is made out. As already observed the balance of convenience is also in favour of the plaintiff. Therefore taking ail these facts into consideration I hereby restrain the defendant from using/manufacturing and selling his products ‘Instant Hot Shower’ under the trade mark ‘Hot Flo’
24. Before parting I may also mention that the counsel for the defendant states that defendant's product is new in the market introduced in India for the first time and if the injunction is granted defendant will suffer an irreparable loss. These considerations are of no coasequence particularly when I have held that prima facie the plaintiff has made out a case based on passing off action.