The Judgment of the Court was delivered by
Satyabrata Sinha, J.:— This appeal arises out of an order dated 12th January, 1998 passed by Shri K. Chatterjee, Additional District Judge, Alipore, 24-Parganas (South) granting an order of injunction in favour of the plaintiff-respondent.
2. The plaintiff-respondents are said to be a group of companies. Admittedly the plaintiff No. 2 is a registered company under the Copyrights Act in respect of a logo which is contained in Annexure A/1 to the plaint. According to the plaintiffs, they had been manufacturing and marketing hawai chappal commonly known as ‘Khadim Hawai’, a photo copy whereof is contained in Annexure ‘B’ to the writ application. The defendant-appellant No. 1 was manufacturing and marketing Hawai Chappal in the name of ‘Kada's’ and ‘Kamal’ upon user of the logos and stickers which are deceptibly similar to those used by the plaintiffs. The plaintiffs allegedly having come to learn about the wrongful user of the logos and stickers by the defendants filed the aforementioned suit. They also filed an application for injunction stating:
“The plaintiff/petitioners have made several applications for registration of their trademarks under the Trade & Merchandise Marks Act, 1958 and such applications include the following:—
MARK
APPLN. NO.
GOODS
Khadim's Butex
503580
Footwear of all
(label)
dt. 9.1.89
Khadim's
480984
Shoes of all
(label)
dt. 13.11.87
kinds
Khadim's
584216
Footwears
(label)
dt. 5.11.92
Khadim's
641956
Clothing and footwears
(word)
dt. 4.10.94
of all kinds.
3. Copies of said applications are annexed hereto and marjced with the letter ‘A-1’. The plaintiff/petitioner No. 2 is the proprietor of copyright of an artistic ‘K’ logo-being a distinctive artistic work which is applied to footwears of the plaintiff/petitioner, being registered under registration certificate bearing No. A/5599-70 issued by the Registrar of Copyright, Delhi. A copy of the said certificates of registration No. A/5599-70 is annexed hereto and marked with the letter ‘B’.”
4. The subject matter of the application No. 584216 and the subject matter of the injunction matter is 641956 as stated in paragraph 3 of the application for injunction.
5. According to the plaintiff-respondents, they are using the said products since 1960, the year wise sale figures whereof is as follows:—
Year
Sales figures (in Lakhs)
“1989-90
21.45
1990-91
38.87
1991-92
67.31
1992-93
115.84
1993-94
171.84
1994-95
286.98”
6. They are also spending a huge amount by way of advertisement, the details whereof are stated as follows:—
Year
Advt. Expenses (in Lakhs)
“1989-90
.20
1990-91
2.50
1991-92
3.84
1992-93
7.92
1993-94
13.57
1994-95
16.03”
7. In the aforementioned premises inter alia others the plaintiff-respondents filed the aforementioned injunction application praying for the following reliefs:—
“a) Injunction restraining the defendant/opposite party Nos. 1 and 2 or each of them whether by themselves their partners, employees, servants, agents, or otherwise howsoever from passing off or attempting to pass off the footwears and allied goods of the plaintiff/petitioners by the use in connection therewith of the trade-mark KADAM'S distinctive label as shown in annexure ‘E’, ‘K’ device as shown in annexure ‘F’ sticker design as shown in annexure ‘F,’ or each of them or any deceptively similar trademark in respect of footwear and allied goods,
(b) Injunction restraining the defendant/opposite party Nos. 1 and 2 or each of them whether by themselves, their partners, employees, servants, agents or otherwise howsoever from infringing or attempting to infringe the copyright in respect of the artistic work of the ‘K’ logo and/or sticker design of the plaintiff/petitioners;”
8. In the Affidavit-in-Opposition the Respondents contended:—
(a) That in the year 1990 with a view to strengthen the management of his said concern the proprietor the said Shri Chittaranjan Saha took Shri Anup Kumar Roy, who had gained experience in the production and marketing of footwears in the capacity of supervisor under him from the year 1977, as his partner and-changed the trading style of Saha Rubber Products to ‘Saha & Roy Rubber Industries’ from 1.1.1991
(b) The said Shri Chittaranjan Saha having expired in the year 1995, the remaining partner Shri Anup Kumar Roy had taken the legal heirs and successors of Chittaranjan Saha viz. (1) Smt. Manju Saha (Wife) and (2) Shri Sajal Saha (only son) into the benefit of the partnership of Saha & Roy Rubber Industries and continued to run the said partnership business of manufacturing and marketing hawai slippers in the course of the trade.
(c) That owing to financial stringency and loss suffered in course of the said business, the partners of the defendant No. 1 proposed to the defendant No. 2 for manufacturing and marketing hawai slippers with the well known trade mark “Kadamv on terms and conditions which proposal and defendant No. 2 accepted and in accordance therewith the defendant No. 1 gave leave and license to the defendant No. 2 for the manufacture and sales of ‘Kadamv hawai slippers by them from January, 1997 subject to the terms and agreement agreed upon between the parties.”
9. They have also alleged that various documents are in existence for the purpose of showing that the defendant No. 2 had been manufacturing and marketing Kadam's Hawai Chappal, in support whereof they had annexed Cash Memo, Trade License, West Bengal Sales Tax Registration Certificate, General Sales Tax Registration and Bills for advertisement of Kadam which are marked as (b), (c), (d), (e), (f) to the said affidavit-in-opposition.
10. The learned trial Judge by reason of the impugned order inter alia, held that the plaintiffs are admittedly using ‘K’ Logos since 1960 although the xerox copy of the calendar does not indicate that they had used ‘K’-logo or artistic sticker on the KADAM Brand Hawai sticker.
11. The learned trial Judge further held:—
“In my opinion that since both the parties are selling same product in the market the people who use it and the alphabetical use of the words, KADAM likely to make confusion to the customers who are users of the slipper”.
12. Mr. S.P Roy Chowdhury, the Learned Counsel appearing on behalf of the appellants, inter alia, submitted that keeping in view the prayers made in the application for injunction it would appear that the same is confined only to the logos and the stickers. Mr. Roy Chowdhury submitted that his client has never used the logos and is inclined to give up user of the sticker and substitute the same by another one. The Learned Counsel submitted that in that view of the matter the learned trial Judge cannot be said to have exercised its discretion correctly.
13. Mr. Gupta, the Learned Counsel appearing on behalf of the respondents, on the other hand, submitted that by giving up of the user of the Logo and Sticker alone by the respondents the injunction application does not become infructuous. The Learned Counsel submitted that the case of the plaintiffs-respondents have to be considered from the angle of users of a Hawai Chappal who form a humble section of the society in relation to a humble product. The learned Counsel has taken us through all the annexures appended to the Affidavit-in-Opposition filed by the appellant and submitted that from a perusal thereof it would appear that no third party evidence had been created to show that they had been carrying on the said business since the year 1969. The learned Counsel submitted that the very fact that a purported leave and license has been granted by the appellant No. 1 in favour of the appellant No. 2 in 1991 whereafter, the advertisement having been appearing, it is evident that the allegation of passing off by ‘the plaintiff-respondent against the defendant-respondents are correct. In support of his aforementioned contention the learned Counsel has relied upon Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 S.C 449, Consolidated Foods Corpn. v. Brandon and Co. Private Ltd. reported in AIR 1965 Bombay 35 at 47 and Smt. Vinnay Chawla v. Chandamama Toytronix Pvt. Ltd., reported in AIR 1992 Delhi 234.
14. It has further been averred that even if the defendant had been manufacturing Hawai Chappals they must have abandoned the same as they had not been able to show continuity of such manufacture and sales. On the other hand, according to the learned Counsel, the figure of sales and amount spent by the plaintiff-respondents in making advertisement of their product clearly go to show that they would be in a disadvantageous position if the injunction sought for is not granted. In this connection our attention has also been drawn to the statements made in Affidavit-in-Reply which is to the following effect:—
“I say that during the pendency of the present appeal and the suit as well the defendant/opposite party contemptuously proceed to publish an advertisement in ‘Bartaman’ on or about 6th May, 1997. In the said advertisement the defendant/opposite party sought to appoint distribution and advertise in Radio and television. I say that besides the malafide intentions of the defendant/opposite party in releasing the advertisement mere is a clear admission that the defendant/opposite party did not have any distributing net work or an advertisement although user is claimed since 1969. I say that the false claim to user is reinforced by the own advertisement of the defendant/opposite party.”
15. According to the learned Counsel only after the advertisement by the appellants was appeared on 7th May, 1997, the defendant-respondent could come to learn the wrongful use of the logo and sticker as also violation of the trade mark. Our attention in this connection has also been drawn to Section 46 of the Trade Mark Act.
16. It has now been admitted that both the appellants and the respondents have filed applications for registering their names before the authorities under the Trade Marks Act. The said applications have not been disposed of. It is a matter of grave concern that the authorities under the Trade Marks Act do not dispose of such applications within a reasonable time. Had such applications been disposed of, the parties would not have found it necessary to litigate in Civil Courts. It is expected that the applications filed by the parties herein would be disposed of at an early date.
17. Keeping in view the offer made by Mr. Roy Chowdhury it is not necessary for us to discuss as to whether the appellants are guilty of violating the provision of Copy right Act as also Trade Marks Act in relation to the stickers. We may further note that the plaintiff-respondents have no objection if the plaintiffs continue to manufacture and market the Hawai Chappal in the name of Kamal. Evidently, because the names ‘Kamal’ and ‘Khadim’ are not similar nor by reason thereof confusion may arise in the minds of the common user. Reliefs in passing of action can be granted under common law.
18. It is true that according to the defendants-appellants they had also been using the same sticker in the name of ‘Kadam’ for a long time. Prima facie, however, it appears strange that only in 1997 the defendant No. 1 chose to grant a leave and license in favour of the plaintiff-appellant No. 2.
19. It is not necessary for us at this juncture to consider as to whether such a transaction is valid or not. But there cannot be any doubt whatsoever that the application for registration of the Trade Mark now has been filed and has to be allotted in favour of Lords Promlimer India Ltd., if any. The court at this juncture has only to arrive at a prima facie opinion. The appellants do not question the reputation as also the manufacture and marketing of the Hawai Chappal by the plaintiffs.
20. The statements made in paragraphs 6 and 7 of the plaint and as reproduced hereinbefore would also show that the plaintiffs-respondents have not only been marketing the said Hawai Chappal for a long time but also it has acquired a vast business and reputation.
21. On the other hand, only some documents have been produced by the appellants to prove their case. Annexure ‘B’ to the Affidavit-in-Opposition is said to be a Bill which is dated 5.1.1969, from a perusal whereof it appears that Sales Tax under the West Bengal Sales Tax Act had been charged although from the said Bill itself it would appear that the appellant No. 1 got itself registered under the said Act only on 22.5.1969 Prima facie, therefore, the said document cannot be relied upon. For the self-same reason the Bill No. 5.A/69 dated 14.4.69 cannot also be relied upon.
22. In a consignment note dated 17.12.83 Hawai Sole has been consigned to one Charanshree at Agartala. This consignment note is no evidence of user of mark at the relevant point of time even assuming that such Hawai Chappal were being manufactured. Again in the Bill dated 16.12.1983 Hawai Sole has been mentioned.
23. The trade license or other licensees granted by different companies is of no consequences for the purpose of adjudication of the dispute at the stage. The fact remains that there is no evidence that the Appellant had manufacturing and marketing the goods in the same manner as is sought to be done by reason of the advertisement published in Bartaman.
24. It further appears that prima facie the appellants had been using logo and sticker which are deceptibly similar to logo which is registered under the Copy Right Act and the sticker used by the plaintiffs-respondent for a long time.
25. In Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 SC 449, the Apex Court was concerned with two brand names ‘Lakshmandhara & Amritdhara’ and in the aforementioned situation held:
“A large number of decisions relating to the use of composite words, such as Night Cap and Red Cap, Limit and Summit, Rito and Lito, Motrate and Filtrate, etc. were cited in the High Court. Some more have been cited before us. Such decisions, examples of deceptive resemblance arising out of contrasted words, have been summarised at pages 429 to 434 in Kerly on Trade Marks, 8th Edition. No useful purpose will be served by referring to them all. As we have said earlier, each case must be decided on its own facts. What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori.”
26. Having considered the fact of the case the Apex Court came to the conclusion that the over all similarity between the two names in respect of the same description of. goods was likely to cause deception or confusion within the meaning of Section 10(1) of the Act.
27. In Consolidated Foods Corporation v. Brandon and Co. Private Ltd. reported in AIR 1965 Bombay 35, it has been held:—
“To summarise, therefore, a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, ‘it is, to use familiar language, entirely a question of who gets there first.” (Gaz Kan Lye v. saw Kyone Saing, AIR 1939 Rang. 343 (F.B)). Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration.”
28. In Smt. Vinnay Chawla v. Chandamama Toytronix Pvt. Ltd. reported in AIR 1992 Delhi 234, the law is stated in the following terms:—
“There is every possibility in the absence of an injunction order from this Court of a confusion being caused in the mind of the purchasers to take the goods of the applicant as the goods of the respondent and the same is likely to result in irreparable loss and damage to the reputation and goodwill of the applicant which would be difficult to measure in terms of the pecuniary compensation.”
29. For the purpose of grant of a temporary order in an action for passing off, the plaintiff need not in general show a strong prima facie case. The prima facie case that is required to be shown is a case that will avoid the action being struck out as frivolous or vexatious. Injunction is granted so as to enable the court to stop the infringement without delay.
30. In National Garments, Kaloor, Cochin v. National Apparels, Ernakulam, Cochin reported in AIR 1990 Kerala 119, it has been held:—
“The question cannot be answered in vaccum and therefore it has become necessary at least to touch upon the definition of the word ‘passing off. I shall in this connection cite the following passage from Karly's Treatise on Law of Trade Marks and Trade names:
‘It is an actionable wrong for the defendant to represent, for trading purposes, that his goods are those or that his business is that of the plaintiff, and it makes no difference whether the representation is effected by direct statements, or by using some of the badges by which the goods of the plaintiff are known to be his, or any badges colourably resembling these, in connection with goods of the same kind, not being the goods of the plaintiff, in such a manner as to be calculated to cause the goods to be taken by ordinary purchasers for the goods of the plaintiff.’
31. The plaintiff in an action for passing off therefore has to establish that his products have derived from the advertising a distinctive character recognised by the market. Plainly stated the principle of law is that ‘nobody has any right to ‘represent his goods as the goods of somebody else’ and sell it in the market for his own aggrandisement. This rule has been treated as a special instance carved out of the general rule that any misrepresentation calculated to give one trader the benefit of another's goodwill is actionable. Generally stated any misrepresentation calculated to injure another in his trade or business can be regarded as passing off (See Burberrys v. Cording, (1909 (26 RPC 693 at 701) - Nonetheless in an action for passing off, a plaintiff need not prove any malice unlike the plaintiff in a tortious action for injurious falsehood. Likewise proof of damage as such is not essential to enable the plaintiff to maintain an action for passing off. Why it is said so is that the confusion brought about by the action of the defendant puts the plaintiffs goodwill at risk. To put it briefly ‘the plaintiff in an action for passing off must show, if not that he has some sort of business which is threatened by the defendant's activities, at least that his interest is something akin to that of the owner of a business’.”
32. Keeping in view the nature of documents filed by the defendants we are of the opinion that the defendants could not establish that the plaintiffs' action was barred under the principles of acquiescence, it is true in a passing off action the doctrine of acquiescence has a great role to play but while taking such a defence it must prima facie to shown that the plaintiffs had been aware of the user of such mark for a long time by the defendants but despite the same did not take any action.
33. In the instant case the appellant No. 1 had granted a leave and licence in favour of the plaintiff No. 2 in the year 1997. Soon thereafter an advertisement was issued. The plaintiff filed the suit within a reasonable time from the date of publication of such advertisement. We, therefore, find no legal infirmity in the order passed by the Ld. Trial Judge. So far as the offer given by Mr. Roychowdhury is concerned, this court cannot pass any order in relation thereto. The appellant may, therefore, such appropriate legal remedy as may be available to him. However, keeping in view the facts and circumstances of this case the Learned Court below is hereby directed to dispose of the suit as early as possible and not later than six months from the date of communication of this order. This appeal is dismissed with the aforementioned observations but in the facts and circumstances of this case there will be no order as to costs.
D.B Dutta, J.:— I agree.
34. Order accordingly.