JUDGMENT
Jayanta Kumar Biswas, J.
1. The plaintiff filed CS No. 25 of 2006 alleging that the defendants had been infringing its registered trade mark, and had also been using a deceptibly similar trade mark for passing off their goods as those of its. In the suit it took out this application for interlocutory orders. By order dated February 8th, 2006 the defendants were directed to go on submitting monthly statement of sale in sealed cover to the special officer, appointed thereby, which is still in force. The question for consideration is whether the plaintiff is entitled to get any interim restraining order.
2. Its case is this. It manufactures and sells motorcycles, cars, etc. Its gods are sold, inter alia, under a well-known trade mark ‘City’, and it has prominent presence in two-wheeler segment all over the world. The defendants are engaged in the business of manufacturing and selling motorbikes. They started selling a variant of their motorbikes under the trade mark “Star City”. In September, 2005 it came across an advertisement of the defendants, and thereupon, it issued notices calling upon them to cease and desist from using the mark “City” on any of their motorbikes, but they gave no heed to the notices,
3. After hearing Counsel for the parties, I find that the first question that needs decision is whether the plaintiff is the proprietor of any registered trade mark. With the application itself it did not produce copy of any certificates of registration issued by the Registrar of Trade Marks. Copies were produced with its reply. From the copies of the several certificate it appears that the marks concerned were registered in favour of one Honda Siel Cars India Ltd. The defendants have questioned the plaintiff’s right to institute the suit alleging infringement of the marks registered. To establish its right the plaintiff has produced (with its affidavit-in-reply) a copy of a deed of assignment dated October 3rd, 2002. Its case is that in terms of that agreement it acquired the right to use and protect the registered trade marks.
4. Counsel for the defendants has categorically said that his clients have seriously disputed the genuineness of the agreement dated October 3rd, 2002. He has pointed out that according to the plaintiff, consequent upon execution of the deed of assignment it applied to the Registrar under Section 18(4) of the Trade Marks Act, 1999 on May 31st, 2004, for necessary rectification. He has said that the defendants have produced a report showing that the application allegedly filed by the plaintiff on May 31st, 2004 was not pending. His submission is that the case of the plaintiff that a deed of assignment was executed, and that consequent thereupon requisite application under Section 18(4) was filed on May 31st, 2004, is a doubtful case, particularly when the certificates of registration, in favour of Honda Siel Cars India Ltd., were issued only in November and December 2005.
5. It seems to me that contentions of Counsel for the defendants have substance. The plaintiff, in my opinion, has failed to show that at the relevant point of time it was the proprietor of the registered marks alleging infringement whereof it instituted the suit. The disputes raised by the defendants regarding merits of the plaintiffs claim that on the basis of the deed of assignment it acquired right to use and protect the registered marks, in my view, cannot be brushed aside. At the present moment there is no undisputed material to show that the plaintiff is the proprietor of the registered marks. To my mind, on this ground alone it must be held that the plaintiff is not entitled to get any interim restraining order.
6. Since the matter has been argued at length by Counsel for the parties, I think it will be appropriate for me to deal with the other aspects of the case as well. It has been argued by Counsel that since the plaintiff is seeking statutory protection against infringement of its registered marks, it is entitled to get the restraining orders the moment it shows that the defendants are using the essential part of its registered marks for promoting their business. He has referred me to the provisions in Section 29(4), and has contended that in view of the statutory protection available, as proprietor of the marks, the plaintiff is entitled to get relief, since admittedly the defendants have been using the mark “City” on their motorbikes.
7. His contention is that what is to be seen is whether the defendants have been using the essential features of the plaintiff’s registered trade marks. According to him the word “City’, the essential feature of the registered trade marks of the plaintiff, is also the essential feature of the mark used by the defendants. As to the principle that essential feature is the requirement, he referes me to the decisions in Saville Perfumary Coy. v. June Perfect Ltd. and Anr. 1941(58) RPC 147; De Cordova and Ors. v. Vick Chemical Coy. 1951(68)RPC 103; Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. ; Ruston & Hornby Ltd. v. Zamindara Engineering Co. ; Baume & Coy., Ltd. v. Moore (A.H.) Ltd. 1958 RPC 226; and Brooke Bond India Ltd. v. C. Patel & Co. 96 CWN 839.
8. His argument is that while the provision in Section 17 of the Trade Marks Act, 1999, consequent upon registration of the marks, created the plaintiffs right to use each of them taken as a whole, and not any deceptively similar marks, the provisions in Section 29, particularly in Sub-section (4) thereof, created for it a statutory protection entitling it to get restraining orders against the defendants, who have been using, in course of their trade, a deceptively similar mark, that is to say, the most essential part of the plaintiff’s registered trade marks. As to the plaintiff’s case regarding passing off, his contention is that the defendants started using the mark “City” for cashing in on the goodwill and reputation of the plaintiff that is admittedly the prior user of the mark.
9. Counsel for the defendants, in his turn, has heavily relied on the provisions in Section 17 of the Trade Marks Act, 1999. His contention is that even if the plaintiff is entitled to use the marks referred to and relied on, it is not entitled to claim that it has exclusive right to use the word “City’ that is nothing but an ordinary dictionary word. He says that as will appear from the documents filed by the defendants with their opposition numerous applications seeking registration of marks associated with the word “City” were filed before the Registrar.
10. He points out that while the plaintiff has submitted nothing to show that the use of the word “City” by the defendants as a part of their trade mark created any confusion in the mind of any customer who is the only person to be kept in mind while considering the question of passing off, the defendants have produced documents and affidavits to show the contrary. He disputes the proposition that confusion is no longer considered the principal test for deciding an allegation of passing off. He refers me to the provisions in Sections 2(h) and 29, in support of his contention that confusion does still remain the principal test for the purpose of examining an allegation of passing off.
11. He had cited to me the decisions in F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd. , Honda Motor Co. Ltd. v. Kewal Brothers and Anr. 2002(25) PTC 763 (Cal), Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. and Ors. 2006 (32) PTC 243 (Cal) (DB), and has read out passages from Law of Trade Marks and Passing Off by P. Narayanan (6th edition); and has contended that on the facts of the case, and particularly having regard to the goods the plaintiff and defedants are dealing in, there is no reason to say that the use of the word “City” by the defendants on a variant of their motorbikes, as a part of their trade mark, has any potentiality to create any confusion in the mind of any ordinary customer.
12. It seems to me the plaintiff has failed to make out such a strong prima facie case as is needed for making a restraining order. It is not its case that the defendants have been using any one of the marks on which the suit is based, or any mark similar or deceptively similar to any of them. The case rather is that the most essential part of the marks is being used by the defendants as a part of their own trade mark. There is nothing to show that the plaintiff has ever used the mark ‘”‘City” on any motorbike; if used it as a part the trade mark on certain variant of its cars. The defendants are using the word “City” as a part of their trade mark put only on one variant of their motorbikes. They have filed affidavits from dealers and customers in support of their case that the use never created any confusion.
13. I do not think the test of confusion has nothing to do. In my opinion, it still remains the principal test, as will appear from the provisions in Section 29 read with Section 2(h) of the Trade Marks Act, 1999. In the absence of anything which could pursue me into holding that use of the expression “City” by the defendants is bound to create confusion in the mind of the ordinary customers, who are distinct and separate, I am unable to hold that a strong prima facie case of passing off has been made out. I do not think on the facts of the case the principles discussed in the authorities I have been referred to need a detailed discussion. In my view, here is a case whose fate must turn on the facts brought on record by the affidavits.
14. For these reasons, I am not inclined to make any interim restraining order, I, however, order that the direction given by the order dated February 8th, 2006 for submission of monthly statement of sale shall remain in force till the disposal of the suit, trial of which shall be expedited. Since the written statement has already been filed by the defendants, I order that the parties shall disclose documents within four weeks, as suggested by Counsel for the parties; inspection by three weeks thereafter. The parties will be at liberty to approach the appropriate Court for expeditious hearing of the suit.
15. I do not think it will be appropriate at this stage to order the defendants to supply copies of the statement of sale to the plaintiff. Hence I am not inclined to make an order for that. I make it clear that the plaintiff will be at liberty to take necessary steps before the appropriate Court for getting copies of the statement of sale or for their inspection. It is put on record that Counsel for the defendants has informed me today that advocate-on-record concerned has been preserving the statement of sale submitted to him by the defendants in sealed covers.
16. Costs of this application, disposed of hereby, shall be the costs in the suit.
17. Urgent certified xerox copy of this order shall be supplied to parties, if applied for, within three days from the date of receipt of the file by the section concerned.