JUDGMENT
P.K. Bahri, J.
(1) I have heard arguments for deciding the aforesaid application.
(2) The facts of the case in brief are that the plaintiff for the last 10 years is dealing in manufacture and sale of readymade garments including belts and hosiery goods and has been marketing its goods under the trade mark “AVIS” continuously. It is pleaded that the trade mark A Vis of the plaintiff is written in a particular and distinct manner and the plaintiff is the registered proprietor of the said trade mark under the Trade and Merchandise Marks Act, 1958 in class 25 in respect or readymade garments, wearing apparels Including geans, jackets, shirts, blouses, socks, hosiery, brassiers and footwear. The plaintiff Is also registered proprietor of the particular manner of representation of the trade mark Avis under the Copy Right Act. It was pleaded that the petitioner was the first in India to adopt the ‘word Avis as a trade mark and by virtue of its considerable and continuous use. the said trade mark Avis applied on goods, signifies that the goods have originated from the plaintiff.
(3) It is pleaded that by virtue of excellent quality of products of the plaintiff, the trade mark Avis has become distinctive format or representation of the goods of the plaintiff and the plaintiff has acquired valuable reputation under the said trade mark and has done huge business of sale of goods under the said trade mark, details of which are furnished in para 12 of the plaint. The plaintiff has also advertised its goods under the said trade make in different media and has incurred huge expenses as depicted in para 13 of the plaint.
(4) It is pleaded that defendant No. 1 is engaged in manufacturing and sale of air coolers and defendants 2 to 5 are the dealers of defendant No. 1 and the defendants have started selling and/or offering for sale air coolers and other appliances and machines under the similar trade mark Avis with a view to pass off their goods as these of the plaintiff. It is pleaded that defendant No. 1 is using the said trade mark Avis identical with the trade mark Avis in its representation, it is pleaded that the customers are likely to be deceived by buying the goods of the defendant No. 1 under the trade mark Avis, treating them to be the goods of the plaintiff and thus the plaintiff has sought relief of permanent injunction restraining the defendants from selling their goods i.e. air coolers etc or any other goods under the trade mark AVIS. Admittedly the case of the plaintiff is for obtaining injunction as the defendants are passing-off their goods as the goods of the plaintiff.
(5) The suits as well as the application are contested by defendant No. 1, pleading that the goods being solid by the defendants are entirely different from the goods being manufactured and sold by the plaintiff and thus there could not arise any action for passing-off. On merits, it was pleaded that this trade mark Avis belonged to an American Company which has branches throughout the world and the plaintiff has pirated the said trade mark and by mis-representation had got it registered in its name. It is pleaded that the plaintiff is not the originator of the trade mark and thus has not acquired any proprietory right in the said trade mark, 627
(6) In any case the defendants are not marketing the goods which are being manufactured and sold by the plaintiff and thus it is pleaded that the plaintiff has no prima facie case to obtain any interim injunction against the defendants.
(7) It appears that initially vide order dated May 23, 1988 an ex-parted interim injunction was granted but the same was vacated by the Court on August 16, 1988 giving a prima facie finding that plaintiff can bring its case within the ratio of the decision of this Court in Creative Handicrafts v. Sudha Electric Co., 1988 (1) Delhi Lawyer 90 and show that the two types of goods are in the same trading channel, it is difficult to continue with the in terim injunction. It is evident that neither the goods of the defeadent No. 1 are cognate with the goods of the plaintiff nor the goods of defendant No. 1 are being sold at the same shops or through the same trade channel. The plaintiff had filed some affidavits to show that in the Super Bazars, goods of the plaintiff as well as the goods of the defendant No.1 are being sold.
(8) So can argument is sought to be built upon the said averment that the goods of the plaintiff and the goods of the defendant No 1 are being sold through,the same trade channel. The argument, has no validity. Mere fact that in some Super Bazar, goods of the plaintiff and the goods of the defendant No. 1 are being sold, would not mean that generally the goods of the plaintiff and the goods of defendant No. 1 are being sold through the same trade channel. Realizing the difficulty on this score. Counsel for the plaintiff has vehemently argued that even though the goods of the defendant No. 1 are not cognate with the goods of the plaintiff and even if the goods of the plaintiff are not being sold on the same type of shops or through the same trading channel, even then the plaintiff has acquired a high reputation in the trade mark: Avis arid thus no other person should be allowed to use the said trade mark for its goods as the unwary customers of both types of goods of the plaintiff and the defendant No. 1 are likely to be deceived in buying the goods of the defendant No. 1, thinking them to be of the plaintiff.
(9) I had an occasion to consider the question of passing-off action in Ia No. 9737/87 in Suit No. 2776/87 (Ceat Tyres of India Ltd. v. Jay Industrial Services, decided on November 21, 1990). An action for passing off is founded on desirability of preventing commercial immorality or dishonesty on the part of a trader who by using a paritcular mark, whether registered or unregistered, wants to falsely represent that his goods are the goods of someone else so that he can take unfair advantage of the reputation of that other person in the market. The likelihood or probability of deception depends on a number of factors and is a question of fact in the circumstances of each case. It is obvious that if there is no link between two traders, or in other words, the two traders are not closely correlated and the goods are not analogous, a conclusion may he reached in a particular case that the chances of deception are too remote to be taken notice of.
(10) It is true that if a particular trade name has become totally associated with a particular concern like Bata, any person using the said trade name Bata, may be for the goods which are not being manufactured or sold by Bata India limited, would be guilty of passing off action as the unwary purchaser of the goods would be deceived in believing that even the new product coming in the market is coming from the same company, which has been marketing its goods under the trade name Bata. (see Bata India Limited v. M/s Pyarelal & Co. & Others, ). In the case of Rustam Alia v. Bata Shoe Co., , where the trade mark Bata was in respect of shoes and chappels, the defendant held adopted the said trade mark in respect of lungis and handkerchiefs. The Court had refused to grant injunction but the said case was not treated as a good law in the case of Bata India Limited (supra) and was also adversely commented upon in the book under the Trade Marks Act by Shri K.S. Shukla at page 427.
(11) Could it be said that the plaintiff in the present case had acquired such a huge reputation under the trade name Avis that if any ‘type of goods which have no similarity with the goods of the plaintiff are marketed under the trade mark AVIS. an average consumer is likely to be deceived ? Prima facie It is not possible to come to such conclusion in favor of the plaintiff Counsel for the plaintiff has cited Sunder Parmanand v. Caltex (India) Ltd., . In the said case, the trademark “Caltex” was being used in respect of petrol and various oil products. The appellant had started manufacturing and selling watches under the same trade name. It was held by the Division Bench of the Bombay High Court that a person seeing the trade mark “Caltex” on the watches can be deceived in believing that the said goods have also originated from the same source. In para 49 the Division Bench observed that : “In this case the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels These are factors against holding that there would be any danger of deception or confusion” 12. It was found that the trade name Caltex had been used at a very large scale and the sales exceeded Rs. 30 crores in one year and the publicity was wide spread and large and the goods of both the parties are being purchased by a common man and so far as the trade name Caltex is concerned, the consumers would assume or are most likely to assume that the new product is also being marketed by the proprietor of the said trade mark Caltex. So, it will depend on the facts of each case in order to decide whether a particular trade mark has been completely as asociated with a particular company or person has acquired such a wide reputation that a common customer is likely to he deceived in purchasing any short of goods marketed under the said trade mark, in believing that the said goods are coming from the same concern. 13. The present case is not similar to the case of Bata or Caltex. I am afraid that at this stage it is not possible to say that the trade mark Avis has achieved the same wide reputation and status as the trade marks Bata and Caltex and even Ceat. In the case of Creative Handicrafts, the trade mark Choice was being used for particular type of goods. The Court did not grant the omnibus injunction but restrained the defendant from using the trade mark Choice similar to one of the plaintiff with respect to only three items which were being manufactured by the plaintiff, which were sewing machines, pressure cookers and water filters, which are non-electrical items 14. So various factors have to be kept in view in order to decide whether an action for passing-off is available to a particular plaintiff. It is true that if the goods are similar or are cognate or the trade channels arc the same, the plaintiff would have a stronger prima facie case for getting an injunction against the opposite party who comes into the market with a similar trade mark as being used by the plaintiff. But where a particular trade mark is so widely used and becomes associated with a particular plaintiff in the minds of common man who purchases both types of goods as marketed by the plaintiff and by the defendant and there is likelihood of deception being caused in the mind of the consumer, it is obvious, even though other factors like cognate goods or similar goods or common trade channels arc absent, that the plaintiff can succeed in an action for passing-off.
(12) In the present case, as the evidence now stands, it is difficult to come to any prima facie conclusion that the trade mark Avis has acquired such a high reputation in the minds of the people so that any deception can occur in the minds of the consumers in purchasing the different goods of the defendant, thinking that the said goods are also originating from the plaintiff. However, defendants have no right to use the trade mark Avis in the particular manner of representation as being used by the plaintiff under its registered copy right. 16. I, hence, partially allow the application and grant injunction restraining the defendants from using the trade mark Avis in that peculiar manner of representation as is registered under the Copy Right Act in the name of the plaintiff. However, the defendants can continue to market their goods under the trade name Avis as those goods have no similarity with the plaintiff’s goods and prima facie those goods are not being sold at the same type of shops or through the same trade channel. However, the defendants shall continue to maintain proper accounts with regard to sale of their products and file the same in Court every half-yearly.