JUDGMENT
K. Ramamoorthy, J.
(1) The plaintiff has filed the suit against two defendants for injunction restraining the defendants from dealing in Ribbons and other allied and cognate goods under the trade mark Tota Maina label from passing off his goods as the goods of the plaintiff and also from infringing the plaintiff registered Trade Mark No. 480721 in Class 26. Briefly stated the case of the plaintiff is as follows: THE plaintiff had adopted the trade mark Tota Maina on 2.7.1986 in relation to Ribbons and has been continuously using the same. The said trade mark is registered as from 6.11.1987 under No. 480721 and it was advertising the trade mark journal No. 1044 dated 1.12.1992 at page 951. The plaintiff using the label Tota Maina in a distinctive get up, make up, colour scheme and in an artistic way. The plaintiff holds copyright in the artistic features of the said label.
(2) From 1987 the plaintiff has given the sales figures which are as follows :
Year Amount in Rs. 1987 5,60,923.00 1988 6,31,581.00 1989 10 lakhs approx. 1990 10,96,377.00 1991 12,57,863.00 1992 17,60,829.00 1993 18,27,993.50 1994 19,14,957.50 1995 22,44,814.00
(3) The first defendant, according to the plaintiff, has adopted the said trade mark and also labels with dishonest intention trade upon the reputation of the plaintiff and with a view to causing deception and confusion in the markets and to pass off his spurious goods as that of the plaintiff. When the first defendant applied for registration in Application No. 482197 in Class – 26, the plaintiff lodged opposition in opposition No. Amd – 507. The Assistant Registrar of Trade Marks Ahmedabad passed the order on 27.1.1995, rejecting the application filed by the first defendant and accepting the opposition lodged by the plaintiff. Therefore, the first defendant cannot use the trade mark. The first defendant started using the trade mark with the label similar to that of the plaintiff. The plaintiff issued notice through Counsel on 8.9.1995. The first defendant sent a reply on 9.10.1995 repudiating the claims of the plaintiff. Hence this suit.
(4) The defendants filed common written statement. The second defendant is in Delhi while the first defendant in Surat. Tersely stated the case of the first defendant is that it has been using the trade mark since 1978. The plaintiff’s suit is not maintainable under Section 33 of the Trade and Merchandise Mark Act, 1958. The plaintiff is purchasing ready-made materials from various Companies. The plaintiff is not engaging in the manufacturing of the goods. As a matter of fact, the plaintiff himself had purchased nylon ribbons from the first defendant during the years 1975-76 and 1976-77 without any brand name. The first defendant has given its sales figures from 1978 to 1994-95 which are as follows :
Period Total Sales Turnover in Rs. 1978-79 2,90,776.00 1979-80 3,82,414.00 1980-81 3,82,414.00 1981-82 5,62,646.00 1982-83 6,90,295.00 1983-84 5,79,461.00 1984-85 8,23,911.00 1985-86 12,27,765.00 1986-87 15,18,593.00 1987-88 9,61,056.00 1988-89 13,62,429.00 1989-90 7,92,152.00 1990-91 7,09:050.00 1991-92 7,01,556.00 1992-93 6,55,512.00 1993-94 7,46,830.00 1994-95 6,21,374.00
(5) According to the first defendant even in 1980 itself bills have been issued by first defendant mentioning the trade name of Tota Maina, therefore, even before the registration of the trade mark by the plaintiff the first defendant had been using the trade mark. Therefore, the plaintiff cannot rely upon the order of the Assistant Registrar. The first defendant made the counter claims against the plaintiff.
(6) The plaintiff has filed replication to the written statement of the defendants and written statement of the counter claim filed by the defendants. The allegations therein are more or less similar to the allegations in the plaint and, therefore, need not be extracted.
(7) The plaintiff alongwith the plaint had filed the following eight documents on 25.10.1995:
1.TOTA Maina Label of the plaintiff. 2. Tota Maina Label of the defendants. 3. Photostat copy of Registration certificate of the Plaintiff under No. 480721 in Class-26. 4. Photostat copies of Notice of the plaintiff dated 8.9.1995 and reply thereof by the defendant dated 18.9.1995, and 9.10.1995. 5. Photostat copy of Order dated 27.1.1995 passed in Opposition No. Amd -507 marked as Annexure-A in the plaint. 6. Photostat copy of Invoices of the plaintiff, 7.. Photostat copy of Invoice No. 107 dated 24.11.1990 of M/s Ganga Offset Printers. 8. Photostat copy of Freight Memo of M/s Savani Transport Ltd.
(9) The defendants filed a list of documents which is as follows :
1.7 Bills of M/s Sadashiv Offset Printers from the year 1980-888 pertaining to the printing of Tota Maina ribbon label. 2. 11 bills issued by M/s Mahavir Plastics to defendant No.1 from the year 1983-85 and 1986 pertaining to the printing of plastic Rolls bearing the Mark Tota MAINA. 3. 5 Bills issued by M/s Charlie plastic Molding Co. from the year 1986 to 1988 pertaining to preparation of Round of Tota Maina which is used as packing material pertaining to defendant No.l 4. 2 bills dated 4th July, 1987 and 29th November, 1988 issued by M/s. Bhawani Fine Arts. 5. 2 bills dated 6.6.1987 and 9.1.1989 issued by M/s Subh Plastics, Surat pertaining to the printing of tape (PP Rolls) of Tota MAINA. 6. 3 bills issued by defendant No.l to plaintiff dated 12.11.1976,28.1.1977 and 30.3.1977 pertaining to the sale of ribbons to the plaintiff. 7. Photostat copy of the cutting of the Trade Marks Journal No. 1038 dated 1st September 1992 at page No. 616 and Trade Marks Journal No. 1044 dated 1st December, 1992 page No. 951. 8. Photostat copies of three bills issued by M/s Jashu & Sons to M/s Ashapuri Ribbons and M/s Prakash Ribbons, issued to the plaintiff regarding the manufacture and sale of ribbons. 9. Few bills from the year 1982 to 1985 pertaining to sale of Nylon ribbons bearing the mark Tota MAINA. 10. Original Art Work of Tota Maina ribbon label prepared by Mr. Ashok Bhai c/o M/s Sadashiv offset Printers, Shivakashi on behalf of defendant No.1.
(10) Mr. S.K. Bansal, learned Counsel for the plaintiff submitted that the plaintiff is the registered Proprietor of the trade mark and the first defendant cannot use the trade mark. Mr. Bansal further submitted that the material now placed by the first defendant had been considered by the Assistant Registrar of the Trade Mark in his order dated 27.1.1995 and it is not open for the first defendant to reagitate the same matter before this Court.
(11) Mr. Man Mohan Singh, learned Counsel for the defendants contended the fact that the plaintiff got his trade mark registered would not affect the rights of the first defendant because the first defendant has been able to show the user even long prior to the registration of the trade mark by the plaintiff. He relies upon Section 33 of the Trade and Merchandise Mark Act, 1958, which reads as follows :
“SECTION 33.-Saving for vested rights Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of this has cautiously used that trade mark from a date prior – (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.”
(12) Mr. Bansal learned Counsel for the plaintiff relied upon the following decisions in support of his submissions. Kavimj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, , Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., , National Behll Co. & Anr. v. Metal Goods Mfg. Co. (P) Ltd. and Am., , American Home Products Corporation v. Mac Laboratories Pvt. Ltd and Another, , K.R. Chinnakrishna Sethy & Ors v. Sri Ambal and Co., Air 1973 Mysore 74, Chhattar Extractions Ltd. & Anr. v. Kochar Oil Mills Ltd., 1995 Ptc (15) DB) 285, Amar Singh Chawla v. Rajdhani Roller Flour Mills Pvt. Ltd., 1990 Ptc 220 (Delhi) and Kwality Ice Crems Ltd. v. India Hobby Central Pvt. Ltd., 1990 (1) Arbitration Law Reporter 70.
(13) Mr. Man Mohan Singh relied upon the decision of the Division Bench of this Court reported in N.R. Dongre and Ors. v. Whirlpool Corporation, Air 1995 Delhi 301 for the proposition that on a reading of Section 28(3) with Section 31(d) it is clear that the proprietor of the registered trade mark cannot file an infringement action against the proprietor of an identical or a similar trade mark. While Sections 28(3) and 31(d) on the one had dealt with the rights of registered proprietor of identical trademark and bar action of infringement against each other. Section 27(2) on the other hand deals with the passing off action. The right of action under Section 27(2) are not affected by Section 28(3) and Section 31(d). Therefore, the registration of the trade mark under the Act is irrelevant in an action for passing of. The law of passing off as it has developed permits an action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods of or are connected with the goods of a prior user of the trade mark. I fail to see how this proposition can at all be applied to the facts of this case.
(14) The documents filed by the first defendant cannot be put against the plaintiff for, the Assistant Registrar of the Trade Mark had held that the bills produced by the first defendant are not free from doubt and therefore, the first defendant cannot rely upon those documents. The first defendant failed to produce the original documents. The Assistant Registrar held that the first defendant cannot be given the benefit of Section 12(3) of the Trade Mark Act either as honest and concurrent user or can seek protection. It is admitted by the first defendant that the order of the Assistant Registrar dated 27.1.1995 has become final as no appeal had been preferred by the first defendant. Even though this fact is admitted, learned Counsel for the first defendant, Mr. Man Mohan Singh asserted that he has moved for rectification and pending the rectification proceedings the plaintiff will not be entitled to injunction. I am afraid, such a contention cannot at all be countenanced. I do not want to refer to in detail the authorities cited by Mr. S.K. Bansal, learned Counsel for the plaintiff because in my view, the order of the Assistant Registrar is a complete answer to the case of the first defendant. Therefore, the plaintiff has established a prima fade strong case and, therefore, the plaintiff is entitled to injunction.
(15) The balance of convenience is also in favour of the plaintiff. The sales figures filed by the plaintiff would show the value of business done by the plaintiff, whereas the business done by the first defendant is not that much big. The balance of convenience is definitely in favour of the plaintiff. Accordingly, the ad interim injunction granted on 8.11.1995 is made absolute. There shall be no order as to costs. Parties are at liberty to file their original documents, if any, within six weeks with advance copy to the opposite side. List the matter before the Joint Registrar for admission/denial of documents on 22.08.1996.