D.K Jain, J.— This order will dispose of IA No. 6563/94 and IA No. 8323/94.
In a suit for perpetual injunction against the defendant restraining passing off the trademark of the plaintiff and rendition of account, the plaintiff, engaged in the manufacture and sale of edible oils, has filed an application (IA No. 6563/94) under order 39 rule 1&2 read with section 151 cpc seeking temporary injunction, restraining the defendant, its agents, dealers and all others acting for and on its behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly and dealing in edible oils under the trademark ‘Jiwan Dhara’ or any other trademark identical with or deceptively similar to the plaintiff's said trademark till the disposal of the suit.
IA No. 8323/94 has been filed by the defendant under the aforenoted. provisions of law seeking a similar temporary injunction against the plaintiff.
Briefly stated, the case of the plaintiff is that it is engaged in the business of manufacture and marketing of edible oils and adopted the trademark ‘Jiwan Dhara’ label since 1 October 1993; has been continuously using the same since then; it is the adoptor of the said trademark; it has established extensive business in major parts of the country; its sales under the said trademark since its adoption till the date of filing of the suit were to the tune of Rs. 48 lacs; it has spent substantial amount on the publicity of the said trademark and as a result thereof it enjoys good reputation in the market; its trademark has become sufficiently distinctive in the trade.
The plaintiff alleges that the defendant has adopted a similar trademark ‘Jiwan Dhara’ only in the second week of June, 1994 with a view to trade upon the reputation of the plaintiff to earn undue profits to which it is not entitled; user of the similar trademark by the defendant is bound to cause confusion and/or deception amongst the purchasing public and trade leading to passing off the goods and business of defendant as the goods and business of the plaintiff, particularly when the goods, trade channels and purchasers of the plaintiff as well as of the defendant are the same.
The suit as well as plaintiff's application is resisted by the defendant and the plaintiff's assertion of being the originator and the prior user of the trademark ‘Jiwan Dhara’ is not only emphatically denied by the defendant, but it has also filed counter claim to restrain the plaintiff etc., from using the impugned trademark, along with their application i.e, 8323/94 for interim relief to the same effect.
The stand of the defendant in its written statement and counter claim is that the defendant adopted the trademark ‘Jiwan Dhara’ on 1 April 1993; an application for registration of the said trademark was filed on 19 July 1993; the defendant started selling edible oils under the said trademark in the end of October 1993; the plaintiff came in the market subsequently with the impugned trademark in order to trade upon the established goodwill and reputation of the defendant; its sales from 30 October 1993 to 29 July 1994 were over Rs. 5 crores out of which the sales of edible oil under the trademark ‘Jiwan Dhara’ were approximately Rs. 85 lacs. It is asserted that on gaining knowledge about the plaintiff's user of its trademark, the defendant sent a legal notice to the plaintiff on 12 March 1994 urging it to desist from using the said trademark to which the plaintiff sent a vague and evasive reply on 25 March 1994, without disclosing since when it was using the trademark ‘Jiwan Dhara’.
I have heard Mr. S.K Bansal, learned counsel for the plaintiff and Mr. M.L Mangla, learned counsel for the defendant, who have taken me through the documents filed in support of their respective cases.
It is well settled principle of law relating to an action for passing off that in order to succeed in getting an interim injunction the plaintiff has to establish the user of the impugned trademark prior in point of time than the impugned user by the defendant. The registration of the mark or a similar mark prior in point of time to user by the plaintiff is irrelevant and the mere presence of the mark in the register maintained by the trademark registry does not prove its user by the person(s) in whose name(s) the mark was registered and it was irrelevant for the purpose of deciding the application for interim injunction. In other words the priority in adoption and user of a trademark is superior to priority in registration (see Century Traders… v. Roshan Lal Duggar & Co… and Company AIR 1978 Delhi 250 and N.R Dongre v. Whirlpool Corporation, AIR 1995 Delhi 300 affirmed by the Supreme Court in 1996 (5) SCC 714).
In the present case, in view of the admitted position that both the parties, dealing in the same goods, are using the same trademark, having common trade channels and common consumers, the area of controversy is very narrow being restricted to the question as to which of the two parties is a prior adoptor and user of trademark ‘Jiwan Dhara’.
Mr. S.K Bansal, learned counsel for the plaintiff, in support of his claim that the plaintiff, having adopted the said trademark since 1 October 1993, is a prior user of the said trademark, has invited the attention of the court to the application for registration of the said trademark and various invoices, which show that though in the registration application the user has been claimed from 1 October 1993 but the plaintiff has been using the impugned trademark at least from 26 January 1994. Challenging the stand of the defendant that it had adopted and started using the said trademark in the end of October 1993, learned counsel has drawn my attention to carbon copies of the invoices filed by the defendant. He has contended that some of the invoices are fabricated for the purpose of the present case and in fact the plaintiff has been able to procure one of the original invoices dated 26 November 1993, which shows that the mustard oil supplied under the said invoice was with trademark ‘Paawan Dhara’ whereas the carbon copy produced by the plaintiff bears the trademark ‘Jiwan Dhara’. His submission is that the documents as relied upon by the defendant to establish its user prior to that of the plaintiff, are of dubious and doubtful nature and cannot be relied upon. He points out that the plaintiff has in fact moved an application under section 340 Cr.P.C for initiating criminal action against the defendant, in relation to the said invoices. His submission is that if these invoices are ignored the case of the plaintiff's user prior in time stands established.
On the other hand, Mr. Mangla, learned counsel for the defendant, countering the allegation of the plaintiff's counsel that the invoices produced by the defendant are unreliable being fabricated, has attempted to explain the alleged discrepancy in invoice dated 26 November 1993. He asserts that even if this invoice is ignored for the time being there are other invoices which show that the defendant had marketed its product under the impugned trademark in September 1993 and December 1993 i.e, prior to plaintiff's user in January 1994. Learned counsel has also contended that the present suit was filed by the plaintiff only after the defendant had issued a legal notice to it, pre-empting initiation of legal action by the defendant against it.
Having given my thoughtful consideration to the rival contentions and the material placed on record by both the parties, I feel that, prima facie, the plaintiff has been able to establish user of the trademark ‘Jiwan Dhara’ prior in time than its user by the defendant. Though at this stage it may not be appropriate to give any finding on the issue whether some of the invoices furnished by the defendant are fabricated or not because it would be a matter to be considered and decided after trial but a bare look at the copies of the invoices dated 30 September 1993, 26 November 1993 & 8 December 1993 tends to indicate that the words ‘Jiwan Dhara’ have been inserted in the said copies subsequently. I say no more lest it may prejudice the defendant's main case but I am constrained to observe that when a party itself seeks a relief in equity, it must unequivocally demonstrate that its hands are absolutely clean, which, prima facie, does not seem to be the case here. It is also pertinent to note that though in the copies of some other invoices, dated 4 May 1994 and thereafter the goods sold are shown to be of trademark ‘Jiwan Dhara’ written in hand but the trademark ‘Paawan Dhara’ which was being used by the defendant earlier, when it had commenced its business has been printed on the invoices itself. These invoices, all dated after the plaintiff had sent its reply to the defendants legal notice, not only appear to have been prepared as self serving evidence but also appear to show that the defendant itself attached more importance to its original trademark ‘Paawan Dhara’. On the other hand copies of the invoices placed on record by the plaintiff bear the trademark ‘Jiwan Dhara’ and show its user at least from 26 January 1994 i.e, prior in point of time than its user by the defendant from 4 May 1994. Nothing turns on the argument of learned counsel for the defendant that the present suit has been filed by the plaintiff after issue of legal notice by the defendant to foreclose the issue in its favour. The notice issued by the defendant seems to be as vague as plaintiffs reply to it. Having arrived at the conclusion that the plaintiff's user of the impugned trademark is prior in time than its user by the defendant it must necessarily follow that the defendant cannot be permitted to use the same trademark jointly with the plaintiff because, as observed by the Supreme Court in Power Control Appliances & Ors v. Sumeet Machines Private Limited 1994 (2) SCC 448, there can be only one mark, one source and one proprietor. It cannot have two origins.
For all these reasons, in my view, the plaintiff has made out a prima facie case for grant of ad-interim injunction in its favour. The balance of convenience is also in its favour. As regards the question of irreparable injury to the plaintiff, if the defendant is not restrained from using the impugned trademark, the product, being traded by both the parties, being same, there is every possibility of difference in standard and quality of the goods which would not only cause confusion in the minds of purchasing public but may also affect the reputation of the plaintiff. On the other hand, no injury is likely to be caused to the defendant on account of restraint order because on its own showing major portion of its sales has been under the trademark “Paawan Dhara” which it had adopted at the time of commencement of its business.
Consequently, I restrain the defendant, its agents or anyone else acting on its behalf from manufacturing, selling or offering for sale, directly or indirectly, edible oils with mark ‘Jiwan Dhara’ or any other mark which may be deceptively similar to the said mark till the final disposal of the suit.
However, having regard to the fact that the claimed user of the impugned trademark by both the parties is in very close proximity in time, I would direct the plaintiff to maintain a proper account of its sales under the trademark ‘Jiwan Dhara’ and submit the same in the court bi-yearly till the disposal of the suit.
It is made clear that whatever has been observed hereinabove will have absolutely no bearing in the trial of the suit and the counter claim.
In the result plaintiff's IA No. 6563/94 is allowed and IA No. 8323/94 filed by the defendant is dismissed.