JUDGMENT
Jayanta Kumar Biswas, J.
1. This is the plaintiff’s application for interim reliefs in his pending passing off action.
2. Briefly stated, the plaintiff’s case is this. He carries on business under the name and style of M/s. Tanmay Biri Factory. In 1993 he started selling beedies, manufactured by him, under the trade mark Tanmay Biri”. For manufacturing and selling hand made branded beedies he applied for registration in compliance with the Central Excise Rules, 1944. The competent authority granted the registration on August 18th, 1993. The tissue label used by him for wrapping the beedies has a distinctive design and it is an artistic work within the meaning of the Copyright Act, 1957. On March 9th, 2000 he applied for registration of the artistic design and the mark under the Trade and Merchandise Marks Act, 1958; it is pending. Beedies sold by him under the trade mark Tanmay Biri” became popular in the market. With a view to passing off their beedies as those of the plaintiff, the defendants started using the trade mark Tanmay Biri” for selling beedies manufactured by them. The defendants started using an almost identical wrapper for packaging.
3. In their opposition the defendants have made out the following case. They have been manufacturing and selling their beedies under the name and style of M/s. Raj Biri Factory. For distinguishing their products they adopted the trade mark “Deluxe Tanmay Biri”. They have been using the mark from the year 1999. On March 9th, 2000 they applied for registration of the mark under the Trade and Merchandise Marks Act, 1958. The artistic work on the label used by them was registered under the Copyright Act, 1957. The competent authority issued the certificate on October 3rd, 2001.
4. Mr. Bachawat appears for the plaintiff, his submissions are these. The plaintiff is the prior user of the trademark “Tanmay Biri”. The trade mark gained reputation. Volume of sale is not the test to determine reputation of a mark. In a given case even a single sale is enough to maintain a passing off action. Registration of the artistic work obtained by the defendants under the Copyright Act, is no defence. Otherwise also such registration is not valid. For maintaining a passing off action place of business is not relevant.
5. He has relied on the decisions in Anglo-Dutch Paint, Colour & Varnish Works Pvt. Ltd. v. India Trading House, ; Century Traders v. Roshan Lal Duggar & Co., ; Smt. Vinnay Chawla v. Chandamama Toytronix Pvt. Ltd., AIR 1992 Del 234; N.R. Dongre v. Whirlpool Corporation, 1996 PTC 476 (Del); Jai Prakash Gupta v. Vishal Aluminium Mfg. Co., 1996 PTC 575 (Del); Induss Food Products Equipments Ltd. v. Rani Sati Ice Cream Pvt. Ltd., 1997 PTC 45 (Del); Hindustan Pencil Private Ltd. v. Universal Trading Company, 1999 PTC 379 (Del); Rotomac Pens Ltd. v. Milap Chand & Co., 1999 PTC 757 (Cal); Laxmikant v. Patel v. Chetanbhai Shah and Anr., 2002 PTC 1 (SC); Asian Paints (I) Ltd. v. Jaikishan Paints & Allied Products, 2002 PTC 735 (Bom).
6. Mr. Mookherjee appears for the defendants. His submissions in reply are the following. There is no reliable material to show that the plaintiff is the prior user of the trade mark “Tanmay Biri”. The label used by the defendants has distinctive features, and hence the allegation of passing off is unjust. While prior use is relevant in the case of registration of a mark, for passing off it has to be shown that the mark of the prior user gained reputation in the market. The mark of the plaintiff has no reputation at all in the market. Statement in the pleading, read with the documents accompanying it, would prima facie show that this Court has no territorial jurisdiction to entertain the suit. In any event, since the plaintiff has claimed damages in the suit, he is not entitled to any injunction. The defendants also applied for registration of the mark and the artistic work on the label under the Trade and Merchandise Marks Act, 1958 on March 9th, 2000; their such application is also pending. They are in the business from October 1999, and the suit was filed only on July 2nd, 2002. So on the ground of delay also the prayer for interim relief should be refused.
7. He has relied on the decisions in Chandrabhan Nagoji Jichkar v. Amritrao Harbaji Kotamkar and Ors., AIR 1965 Bom 35
(DB); Reckitt & Colman Products Ltd. v. Borden Inc. and Ors., (1990)1 All ER 873; Wander Ltd. and Anr. v. Antox India Pvt. Ltd., 1990(suppl) SCC 727; the unreported decision dated June 26th, 1995 given by a learned single Judge of this Court in Suit No. 290 of 1994 (The Industrial Gases Ltd. and Anr. v. The Kamrup Industrial Gases Ltd. and Anr.); and Uniply Industries Ltd. v. Unicom Playwood Pvt. Ltd. and Ors., .
8. Although a number of decisions have been cited at the bar, I find that detailed consideration of the principles discussed in them is not necessary at all for deciding this application. There, however, is no dispute regarding the basic proposition that a prior user of an established trade mark is entitled to protection against passing off, and the volume of sale under a particular mark is not the sole determiner for ascertaining the scale and extent of reputation gained by such mark. Answer to this question would emerge only from the facts of a particular case.
9. In this case, I find no merit in the plea taken by the defendants that the plaintiff is not the prior user of the trade mark “Tanmay Biri”. From the label, approved by the superintendent of Central Excise on May 30th, 1997, it is clear that the trade mark and the label were being used by the plaintiff from the year 1993. The defendants’ own case is that they started using the trade mark and the label from October 1st, 1999. So there can be no doubt that the plaintiff is the prior user of the trade mark and the label.
10. From a visual examination of the two labels one can scarcely find out any distinguishing feature in them. The defendants have virtually copied the trade mark and the label used by the plaintiff. The minor changes made by the defendants in their label are absolutely insignificant, if they are considered keeping in mind the deception and confusion that an unwary purchaser of average intelligence and imperfect recollection is likely to suffer. The mark used by the defendants is identical; the colour combination and get-up of the label used by them is also identical with the ones used by the plaintiff. The changes made by the defendants to indicate source of their product, cannot be said to be distinctive, when the nature of the product is thought of. It is natural that the customers of the product would go by the trade mark, and not by the source of the product. The label used by the defendants is so deceptively similar that a customer of average intelligence and imperfect recollection is bound to be deceived.
11. From the sales figures given by the plaintiff, I find that beedies manufactured by it became popular with the passage of time. While in 1996-1997 the turnover was Rs. 28,000/-, in 1999-2000 it was Rs. 4,13,100/-. On the other hand, the turnover of the defendants in the year 1990-2000 was Rs. 24,000/-. On these facts, I am of the view that the beedies manufactured and sold by the plaintiff under his trade mark “Tanmay Biri” acquired goodwill and reputation in the market.
12. Both the plaintiff and the defendants are engaged in the business of manufacture and sale of hand made branded beedies. The explanations given by the defendants for choosing the trade mark and the label are unable to cover up their ill motives. On facts I am satisfied that the defendants adopted the identical trade mark and the deceptively similar label with the dishonest intention of cashing in on the popularity and reputation of the trade mark and the label of the plaintiff.
13. As rightly contended by Mr. Bachawat the registration obtained by the defendants under the Copyright Act, is no defence against the plaintiff’s allegation of passing off.
14. I find that after adopting the identical trade mark and the deceptively similar label, the defendants not only entered into the same business, but they also took the other steps in quick succession. They applied for registration of the artistic work in the label on the bases of a certificate dated December 4th, 2000 issued by the Trade Marks Registry. It was stated in this certificate that except the applicant, who had applied for registration of the artistic work under No. 908627, no other person had applied for its registration under the Trade and Merchandise Marks Act, 1958.
15. The number mentioned in the certificate was the number of the application made by the defendants on March 9th, 2000 for registration of the mark. The application for registration of the mark was made by the plaintiff also on March 9th, 2000; and the number of his application was 908620. So it is apparent that on March 9th, 2000, almost immediately after the plaintiff applied for registration of the mark under the Trade and Merchandise Marks Act, 1958, the defendants also submitted a similar application.
16. On May 19th, 2000 the defendants applied before the Trade Marks Registry for giving a certificate for use under Section 45(1) of the Copyright Act, 1957. In letter dated December 5th, 2000 the Trade Marks Registry mentioned that the certificate enclosed with it was issued on the basis of such application, after search made upto June 30th, 1999.
17. There is no answer how number of the defendants’ application filed on March 9th, 2000 could find a mention in the certificate issued by the Trade Marks Registry. There is also no answer to the question: if number of the defendant’s application could, find a mention, then what was the reason for not mentioning the number of the application filed by the plaintiff on the same date, and before the defendants filed their application.
18. On the facts, it seems to me that the defendants acted in collusion with the Trade Marks Registry and fraudulently obtained a certificate; and on the basis of such certificate they obtained registration under the Copyright Act.
19. I am not at all impressed by Mr. Mookherjee’s contention that this Court has no jurisdiction to entertain the suit. The plaintiff obtained leave under Clause 12 of the Letters Patent. Hence there is no reason to examine the question in this application.
20. I also do not find any merit in his submission that since the plaintiff has claimed damages, his prayer for interim relief should be refused. The plea of delay is also without any merit. In the law the plaintiff is entitled to both damages and injunction. Simply because he has claimed damages, interim relief of injunction cannot be denied to him, if he is otherwise entitled to it. The position of law is that if a clear case of passing off is made out, ordinarily the plaintiff should not be denied the interim relief of injunction. The fact that the defendant is already in the business is no bar to the granting of relief to the plaintiff in a fit and proper case. When dishonest intention of the defendant is apparent, it will be a travesty of justice if relief is denied to the plaintiff only on the ground of delay.
21. For the foregoing reasons, I am of the view that the plaintiff has made out a strong prima facie case for interim relief of injunction; and the balance of convenience and inconvenience is entirely in favour of granting injunction against the defendants. Hence I hereby allow this application. There will be an order in terms of its prayers (a), (b) and (c). This order shall remain in force till the disposal of the suit.
22. Considering the fact that the defendants are already in the business, I hereby order that the injunctions in terms of prayers (a), (b) and (c) of this application shall come into force after one month from date.
The costs of this application shall be the costs in the suit.
Urgent certified xerox copy of this judgment and order, if applied for, may be supplied to the parties.