JUDGMENT
B. Bhattacharya, J.
1. This application for temporary injunction is at the instance of a plaintiff in an action for passing off and in this application the plaintiff has prayed for injunction restraining the defendant, its agent, servant, and assigns from passing off the trade name/trade mark ‘Bloomfield’ in any manner whatsoever.
2. The case made out by the plaintiff in the present proceedings may be summarised thus :
(1) After incorporation of the plaintiff with the name “The Bloomfield Tea Co. Ltd.”, it became the owner of a Tea Estate which was named “Bloomfield Tea Estate”. Subsequently, the name of such Tea Estate was changed to ‘Orange Valley Tea Estate’ in the year 1984. However, the plaintiff continued to carry on business under the said name “The Bloomfield Tea Co. Ltd”. and used the trade name “Bloomfield”.
(2) Subsequently, the said Tea Estate under the name of Orange Valley Tea Estate was transferred to Orange Valley Tea Limited, a subsidiary of the plaintiff. Notwithstanding such transfer, the plaintiff continued its business of selling tea under the brand name “Bloomfield” and was also carrying on business under the said name.
(3) In or around 1990, the plaintiff sold the aforesaid Tea Estate to one Longview Tea Company Ltd. and the defendant purchased the said Orange Valley Tea Estate from Longview Tea Company Ltd. (4) Recently, the plaintiff came to know that the defendant had started selling tea in the name of 'Bloomfield' in addition to the name Orange Valley Tea Estate. Immediately thereafter the plaintiff by a notice dated May 3, 2001 called upon the Controller of Leasing, Tea Board of India and also the Calcutta/Tea Traders Association to ensure that no tea is offered by anyone other than the plaintiff under the trade name 'Bloomfield' as it amounts to passing off the plaintiff's trade name. The Calcutta Tea Traders Association immediately forwarded the objection to the defendant whereupon the Director of the defendant contacted the petitioner's executive and admitted their mistake. The defendant assured the petitioner that the name 'Bloomfield' would be withdrawn. (5) Subsequently, the said trade name, 'Bloomfield' was withdrawn by the defendant but the plaintiff was surprised to receive tea catalogue 27/2001 pertaining to auction of tea scheduled for July 2, 2001 when it appeared that once again the defendant had offered its tea under the trade name 'Bloomfield'. Hence this action. 3. After the filing of the said suit, the plaintiff has come up with an application for temporary injunction in terms of the prayer mentioned above. The instant application has been opposed by the defendant by filing opposition and the defences taken by the defendant are inter alia as follows: (a) The plaintiff is guilty of gross suppression of material facts. (b) The plaintiff is not entitled to sell any tea bearing the mark or name 'Bloomfield' as the said name 'Bloomfield' is meant for teas produced or cultivated at the Bloomfield Division of Orange Valley Tea Estate (formerly Bloomfield Tea Estate). (c) In the event of the plaintiff conducting any sale of tea* under the mark or name 'Bloomfield', the plaintiff would he indulging in such activity without any authority of law and should be restrained forthwith from conducting or carrying out such sale as by conducting such sales, the plaintiff was representing to the public and/or its customers that the teas sold by it are from Bloomfield Division and the said Orange Valley Tea Estate, when in fact such is not the case. (d) The plaintiff having ceased to own Orange Valley Tea Estate is not entitled to carry on any business in his present name and cannot use the name 'Bloomfield' as part of its trading style as the name 'Bloomfield' has always been associated with Bloomfield Tea Estate, now known as Orange Valley Tea Estate. (e) No proprietary right can be claimed in respect of 'Bloomfield' by the plaintiff as the same denotes the locality covered by the 'Bloomfield Division of the Orange Valley Tea Estate where there is also a police station by the name of 'Bloomfield Police Station' and a school by the name of 'Bloomfield High School'. (f) The defendant acquired Orange Valley Tea Estate with effect from October 1, 2000 and the plaintiff having ceased to have any association with Orange Valley Tea Estate (formerly known as Bloomfield Tea Estate) cannot be permitted to use the name of 'Bloomfield' as part of its business name. (g) It was denied that the plaintiff has huge volume of business in India or abroad or its turn over is more than Rs. 24,00,000 p.a. as alleged. No material was placed before Court indicating that the turn over of the plaintiff was associated with the sale of the tea under the name 'Bloomfield'.
4. Mr. Mukherjee, the learned counsel appearing on behalf of the defendant has vehemently opposed the application filed by the plaintiff by contending that the plaintiff cannot claim any right over the name ‘Bloomfield’ as the same is the name of a place in the District of Darjeeling. According to him, it appears from the deed by which Orange Valley Tea Estate was transferred to the defendant’s vendor that the plaintiff transferred the tea estate as a “going concern” and the vendor of the present defendant has also acquired the said tea estate as such a ‘going concern’ and transferred the same to the defendant as such. Mr. Mukherjee contends that the aforesaid facts indicate that even if the plaintiff had at any point of time any goodwill in the business in respect of the tea estate concerned, the same has been transferred to the defendant by successive transfers and as such at present the plaintiff should be rather restrained from using the word “Bloomfield” for the purpose of selling lea. According
to Mr. Mukherjee, at present plaintiff not having any lea estate in the Bloomfield
area of the District of Darjeeling and not even in the Darjeeling District, cannot use
the word ‘Bloomfield’ for the purpose of selling tea.
5. Mr. Mukherjee submits that his client being the lawful owner of said tea estate at Bloomfield is entitled to use the name ‘Bloomfield’ being seller of a product of that area. In support of such contention Mr. Mukherjee has relied upon the following decisions:
(1) J. Bollinger and others v. The Costa Brava Wine Company Limited, 1961 RFC 116; (2) Braham v. Beachim, Vol. VII, Chancery Division 848 ; and (3) Arthur Smith (S & B . Foundary Sands) Ltd. v. George Field House Ltd., 1961 RFC 110
6. Mr. Mitra, the learned counsel appearing on behalf of the plaintiff has however opposed the aforesaid contentions of Mr. Mukherjee has a contended that notwithstanding the fact that the plaintiff has at present no tea estate in the District of Darjeeling, it can always maintain an action for passing off if anybody uses the name ‘Bloomfield’ as his client has been using the said name for a long time and has gained a reputation in the field of lea.
7. Mr. Mitra, however disputed that ‘Bloomfield’ is the name of a place in the District of Darjeeling. The sum and substance of contentions of Mr. Mitra is that in this type of an action, the Court is required to sec whether an ordinary customer will be misled and through mistake will purchase the goods of the defendant as that of plaintiff. According to Mr. Mitra, his client has placed sufficient materials before Court justifying its contention.
8. In support of such contention Mr. Mitra has placed reliance upon the following decisions :
(1) Hormus Ardeshar Kandawala v. Ardeshar Cowarhji Dustoor ; (2) Kirloskar Diesel Recon Pvt. Ltd and Anr. v. Kirloskar Proprietary Ltd. and Ors., ; (3) The North Cheshire and Manchester Brewery Company Limited v. The Manchester Brewery Company Limited, 1889 Appeal Cases 83 ; (4) Montan Overseas Ltd. v. Montan Industries Ltd., 1996 (16) PTC 142; (5) Ad-Lib Club Limited v. Granville, 1972 RFC 673; (6) The Berkeley Hotel Company Limited v. Berkeley International (Mayfair) Limited and Anr.,1972 RFC 273; and (7) In the matter of Roger's Trade Mark, Vol. XII, No. 9 RPC 149. 9. Before I proceed to consider the respective submissions of the learned counsel for the parties I find that from the materials placed before the Court, the following factual aspects have been prima facie established.
10. The Orange Valley Tea Estate presently owned by defendant was previously known as ‘Bloomfield Tea Estate’. The said tea estate is situated in three valleys of the District of Darjeeling viz., (a) Bloomfield ; (b) Fedric Birg, and (c) Orange Valley in the Bloomfield area. There is a Police Headquarter named ‘Bloomfield Police Headquarter’. There is also a high school named ‘Bloomfield High School’. The plaintiff has at present no tea estate in the Bloomfield area or even in the Darjeeling District. Most of the documents annexed to the plaintiffs application relate to a period when the plaintiff and/or its associate company was the owner of the concerned tea estate and the letters annexed to the application show that the customers of the plaintiff were all interested not in any brand of tea but in ‘Bloomfield Pure Darjeeling Tea’. No material could be placed by the plaintiff indicating that in the past any customer wanted to purchase from the plaintiff any brand of ‘Bloomfield’ other than Darjeeling tea. It is also established that the plaintiff sold away the property as a ‘going concern’ and by successive transfers the defendant has also acquired the same as ‘going concern’.
11. Keeping in view, the aforesaid factual aspects I now propose to consider the decisions cited by the learned counsel for the parties.
12. In the case of Hormus Ardeshar Kandawala (supra), the plaintiff for over 25 years carried on a business of dyers and cleaners under the name of ‘Bombay Dyeing and Cleaning Co’. at 1, Lindsay Street, Calcutta before shifting to another shop in the locality. Defendant then started a similar business at the plaintiffs old place of business under the name of ‘Bombay Art Dyers and Cleaners’. Under such circumstances, the plaintiff sued for injunction. The Court, held that injunction should be granted against defendant restraining him from using the name ‘Bombay Art Dyers and Cleaners’ or any other name calculated to induce the belief that plaintiff’s business was that of defendant. In my view, the said decision cannot assist the plaintiff in the instant case inasmuch as the plaintiff has transferred his interest in respect of the selfsame tea estate situated at a place in the name of Bloomfield as a ‘going concern’ and such estate has ultimately been acquired by the defendant as such going concern. If a particular property is transferred as a ‘going concern’ it is now settled position of law that it passes its title along with also its goodwill. (See Black’s Law Dictionary, 7th Edition under the heading “going-concern value” at page 1549).
13. Moreover, Bloomfield being a place in the District of Darjeeling and the defendant being owner of a tea estate at Bloomfield in Darjeeling is entitled to use the trade name Bloomfield for the purpose of selling tea and the plaintiff has no right to resist the defendant particularly when plaintiff has no tea estate in the said area.
14. In the case of Kirloskar Diesel Recon Pvt. Ltd and Anr. v. Kirloskar Proprietary Ltd. and others (supra), the suit for injunction was filed restraining the appellant from using the word ‘Kirloskar’. While upholding the order of injunction, the Appellate Court in that decision held that with passage of time and reputation acquired, trade mark ‘Kirloskar’ has acquired the secondary meaning and has become almost a household word. In the case of a trade name which has become an almost household word and under which trade name a variety of activities are undertaken, an action of passing off can successful lie if the defendant has adopted identical or similar trade name even when the defendant does not carry on similar activity. In the said case, the Court proceeded, the plaintiff had established that the word ‘Kirloskar’ had become a household word and their business covered variety of activities and there is even a common connection with some activities of the plaintiff and activities of the defendant. The said principle therefore cannot have any application to a case of this nature where the plaintiff who used to carry on business of selling Darjeeling tea while it had a tea estate there wants to restrain its successor of the said tea estate from using the said name which a geographical one.
15. In the case of The North Cheshire and Manchester Brewery Company Limited v. The Manchester Brewery Company Limited (supra). The Manchester Brewery Company Limited had carried on business under that name for years. The appellants therein bought an old business called “The North Cheshire Company Limited” and then got themselves incorporated and registered under the name “The North Cheshire and Manchester Brewery Company Limited”. In such a fact it was held that the name of the appellant company was calculated to deceive and that the appellants must therefore be restrained by an order of injunction. In my view, the said principle cannot have any application to the present case where the defendant has acquired a tea estate at a place named Bloomfield in the District of Darjeeling and wants to sell the said tea in the geographical name of the area after acquiring the same from its predecessor who was none but the plaintiff.
16. In the case of The Berkeley Hotel Company Limited v. Berkeley International (Mayfair) Limited and another (supra), the plaintiff had prior to its sale in 1968 and demolition in 1969 owned Berkeley Hotel in Berkeley Street off Piccadilly, London. The said hotel was built in 1870 and was generally known as the Berkeley and was a famous hotel in the first class with world-wide clientele. The plaintiff acquired a new site in Knightsbridge on which they were building a new hotel to be opened under the old name, the Berkeley Hotel, in autumn 1971. The defendants commenced building a new first class hotel on the plaintiffs old Berkeley Street site, the hotel to be reopened in 1972 and called the Berkeley International. The suffix ‘International’ was chosen because the group of which the defendants were members had already acquired another hotel in London called the London International and it was the
intention of the group of apply the suffix ‘International’ to all its hotels. The plaintiffs moved an application for injunction to restrain the defendants from using the name ‘Berkeley International’. In such a fact while granting injunction it was held that there would be a glaring risk of deception or confusion if a first class hotel of international repute opened on the old site under the name of Berkeley International. In the said case, it was prima facie held that the plaintiff indisputably retained the goodwill which was attached to the old hotel. In the fact of our case if is apparent that the estate was sold as ‘going concern’ which includes goodwill and at the same time the plaintiff now cannot describe his tea as “Bloomfield tea” having no tea estate at “Bloomfield”.
17. In the matter of Roger’s Trade Mark (supra), R applied to register a trade mark for whisky of which the essential particular was the device of the Royal Exchange, Glasgow. The B. Company opposed and the opposition mainly rested on the ground that the B. Company while admitting the right of R. to use the device claimed a concurrent right to use it also and that R. was not entitled to gain an exclusive right by registration. The device had been adopted by the company while R. was their manager as part of a label for a particular kind of whisky which with their other Scotch whisky was bottled at Glasgow. In 1891, the company sold their retail business at Glasgow to R. under certain terms and conditions which were embodied in a deed of agreement. After the sale, R. continued for a time to bottle all the company’s Scotch whisky and to supply the same to the company, he buying the whisky in bulk from the company and the company buying the whisky in bottles from him. Afterwards, the company procured their Scotch whisky elsewhere. The company continuously used the device in question from the time of its adoption to the time of R’s application to register and subsequently R. also used the device on his whisky after February, 1891. The Registrar, acting for the Comptroller-General, allowed the application to register, but the B. Company appealed and the appeal was referred to the court. Under such circumstances, the appeal was allowed and it was held that an application to register should be refused. I do not find any reason to apply the principle laid down in said decision to the fact of the case which is totally different from the present one where there was no agreement at any point of time between plaintiff and defendant in the manner of using the name ‘Bloomfield’.
18. In Ad-Lib Club Limited v. Granville (supra), plaintiff-company had run a successful nightclub called Ab-Lib Club from 1964 to 1966 and prayed for an interlocutory injunction to restrain the defendant from carrying on business as proprietor of a discotheque nightclub under the name or style ‘Ad-Lib’. The plaintiff-company’s evidence was that it had been forced to discontinue running its own club due to noise emitting from the club’s premises to those of neighbours, which had resulted in the grant of an injunction against it. Since 1966 the plaintiff-company had been seeking alternative premises in order to re-open its club, but without success. The defendant
who did not file evidence or appeared on the motion had announced that a club called the ‘Ad-Lib’ was opened on December, 11. The plaintiff-company claimed that it still possessed goodwill to which the name Ad-Lib attached, that members of the public would be likely to regard the new club as a continuation of the plaintiffs club and that an interlocutory injunction should be granted. In such a fact it was held that where a trader ceased to carry on his business he might nonetheless retain for, at any rate, some period of time the goodwill attached to that business. So long as he retained the goodwill, he must also be able to enforce his rights in respect of any name which was attached to that goodwill. In my view, the principle laid down in the said decision cannot have any application to the fact of a case where the plaintiff having lost its right in the estate situated at Bloomfield is seeking an order of injunction restraining its successor from using the name of a geographical place showing that the successor is the manufacturer of tea of that area.
19. In the case of Montari Overseas Ltd. (supra), the defendant was inducted from using the word ‘montari’ or any other deceptively similar thereto as part of its corporate name on the ground that the same is deceptively similar to the plaintiffs corporate name. For the reason mentioned above, the instant decision is also of no avail to the plaintiff in view of the fact the plaintiff is at present not a seller of Darjeeling tea and the defendant is the seller thereof.
I now propose to consider the cases cited by Mr. Mukherjee.
20. In the case of Arthur Smith (S & B Foundary Sands) Ltd. v. George Field House Ltd. (supra), the plaintiff-company alone quarried sand in Brereton in the country of Chester. The defendant-company had sold sand quarried several miles away as Brereton sand. There was another Brereton near Rugeley in the country of Stafford but the defendant-company’s sand was not from this source either. In such a case, it was held that the plaintiff was able to establish that he produces the substance in a given place ; no one else produces the substance in that place ; that the defendant is selling the substance with the name of that place as a description and that there is likely to be deception of the public and an injunction was granted inspite of delay in filing such application. In my view, the principles laid down in the said decision definitely help the defendant and taking aid of such decision, the defendant can even pray for restraining the plaintiff from using the name ‘Bloomfield’ in the matter of selling teas which are not the products of the Bloomfield area.
21. In the case of Braham v. Beachim (supra), plaintiff was the owner of and worked all the collieries in the parish of R. in Somersetshire and owned all the coal in that parish with a small exception. She carried on business of working the collieries and selling the coal in her own name adding to it on her wagons and bill-heads the words ‘R.collieries1. The defendants from 1868 carried on at R. the business of coal merchant as the “R. Coal Co”. having depots at various railway stations in the south
and west of England at which they sold different kinds of coal. They became in 1876 the lessees of and worked a colliery outside the parish of R. but in a district or basin in which coal was raised similar to that raised within the parish, coal raised in the district, but outside the parish being known in the market as R. Coal. In 1873, the defendants began to sell coal at G. in Surrey by means of a local agent and in 1875 they bought the goodwill of a retail coal dealer named C. at G. who had become bankrupt. They then advertised themselves in the Surrey newspapers and otherwise in the neighbourhood as “The R. Colliery Proprietors and Factors, Coal and Coke Merchants (late C. & Co.)” and offered to supply coal of every description direct from the collieries. In such a fact, it was held that the defendants were not entitled to use the name “R. Colliery Proprietors” unless and until they should acquire a colliery within the parish of R. or to use any style implying that their coal came from the parish of R. or unless and until they should become authorised to sell coals raised from a colliery within that parish. This decision, in my opinion, not only enables the defendant to resist the prayer of injunction by the plaintiff but also can help the defendant to get an order of injunction against the plaintiff in an action against it.
22. In the case of J. Bollinger and Ors. v. The Costa Brava Wine Company Limited (supra), the plaintiffs who were Champagne Houses of France established that only the wine produced in the Champagne District of France by the Champagne Houses was known as “Champagne” and that as such the wine had acquired a high reputation and that the use of the term ‘Spanish Champagne’ would deceive by causing persons to believe that the wine so described was really Champagne. By relying upon this decision Mr. Mukherjee wanted to submit that in this case if the defendant had prayed for injunction restraining the plaintiff from using the word ‘Bloomfield’ the Court ought to have granted such injunction on the ground that the defendant being the manufacturer of Darjeeling tea which has acquired a high reputation and Bloomfield being a part of Darjeeling District, the plaintiff should not be permitted to use “Bloomfield” as they are not seller of either ‘Bloomfield tea’ or ‘Darjeeling tea’. I find prima facie substance in such contention.
23. Thus, on consideration of the entire materials on record I am of the view that the plaintiff has failed to prove prima fade case to go for trial in this action for passing off. It has failed to show that before transferring the tea estate at ‘Bloomfield’ it had ever sold any other description of teas than Darjeeling tea as ‘Bloomfield tea’ and had acquired reputation as such. I have already indicated that the customers of the plaintiff were all interested in buying “Darjeeling tea”, but not tea sold by the plaintiff of other places than Darjeeling, Moreover, as pointed out earlier, the defendant being manufacturer and seller of Darjeeling lea at ‘Bloomfield Division’ was entitled to maintain the name ‘Bloomfield’ as the name of its tea being manufacturer and seller of tea of a geographical place. Over and above, apparently, the plaintiff had
divested itself of the goodwill it had for selling tea from the Bloomfield Estate which has now devolved upon the defendant. Therefore, in the absence of any prima facie case the plaintiff is not entitled to get any order of injunction against the defendant from using the word ‘Bloomfield’ till the disposal of the suit. I make it clear that observations made herein are all tentative for the purpose of disposal of the instant application for injunction and will not be binding upon the parties when the suit will be heard on merit on the basis of other pieces of evidence that will be placed before the Court at the time of final hearing of the suit.
24. The interim order granted earlier stands discharged. The application is dismissed.
25. No order as to costs.