ORDER
Govardhan, J.
1. The applicant in O. A. No. 244 of 1995 in her affidavit contends briefly as follows: The applicant is manufacturer of liquid whitening agent/Fabric Bright-ener or Instant Action Liquid carrying on business on a large scale for a period of several years throughout India, more predominantly in Kerala. She had adopted the word “Jothi” in respect of the product manufactured and marketed by her. The product “Jothi Fabric Whitener” is sold in a blue plastic, oval shaped container which is flat on two surfaces with an elongated and tubular neck and a white screw-on plastic cap. The label is berthed on the face of the bottle in a perfect oval shape on the front face of the container. The front face is outlined in white enclosing the logo of the applicant’s concern on the top and below that the applicant’s trade mark and trade name Jothi is printed in large letters. The words “For Fabric Whitener, aided by K.K. & V.I.B. Max.Retail Price 4.50 (inclusive of all taxes), Jothi Chemicals and Detergents, Orumanayoor, Pin 680 512, Mfg.Dt. “are all printed in distinct Arctic White print against the blue coloured container, in the above described oval outline and below the word “Jothi Industries”, the words “A Khadi product” is printed outside the base of the oval described supra. On the reverse of the container, the oval is embossed along with its content i.e., 75 ml. and the instructions for use. The name of the applicant is also embossed at the base of the said oval along with the address of the applicant. The product is manufactured in a small scale as a cottage unit. The applicant’s product has established itself as a quality product and the applicant’s product has been identified as a high quality product. Large Scale Production started as early as 1988. The applicant is therefore is the earliest user of the name Jothi Fabric Whitener. The name has been independently conceived and artistically designed with the colour scheme and the applicant is the sole and absolute owner of the same.
2. The respondents have been manufacturing and marketing their product named Ujala in a similar blue flattened container with an oval on two sides of the container and on the front face of the container. The letters are printed in light blue with the placement of words similar to that of the applicant’s products. The reverse of the bottle also in a fashion similar to that of the applicant’s product. The respondent’s product let into the market is identical and deceptively similar to that of the applicant so as to pass off their product as that of the applicant. The name Ujala is written in the place of the plaintiff’s trade name Jothi and the screen printing on the front face of the container is in light blue as against bright white of the plaintiff’s product. The words and letters printed in the container of the respondent are eliptical in shape as against the clear oval of the plaintiff’s. The words “A Khadi Product” are absent. The respondents are trying to encash the reputation and goodwill earned by the applicant. In the legal notice, the respondent has stated that purchasers demand their product as Jothi Whitening Agent and it would clearly demonstrate beyond any doubt that the respondent is passing off their goods as that of the applicant, by causing confusion among the customers and the general public. The respondent is misrepresenting their goods as that of the applicant’s product “Jothi Fabric Whitener” with the intention to cause confusion and deceive the unwary purchasers and general public and has copied the colour scheme, get up, lay out etc., and are passing off their goods. The loss and damage to the business of the plaintiff’s amounts to more than Rs. 7 lakhs. Hence the application to restrain the respondent from passing off the respondent’s product “Ujala” as that of the plaintiff’s product “Jothi Fabric Whitener”.
3. Interim injunction was granted on the date when the application was moved along with the suit.
4. The respondent has filed Application No. 2118 of 1995 for vacating the ad-interim injunction contending briefly as follows:
The plaintiff’s version that since 1980, they are using the trade mark “Jothi” in a blue plastic oval shaped container is not correct. The plaintiff has to register the Firm under the relevant provisions of the Kerala General Sales Tax Act. The plaintiff registered itself under the Sales Tax Registration with effect from 22.6.1991. They registered it as a tiny small scale industry. The product of the plaintiff therefore could not have effected any sales prior to the registration on 22.6.1991. The allegation that the plaintiff’s product has established itself as a quality product and has been identified as a quality product is baseless and unwarranted. The allegation that the applicant had attained on express right as earliest user in respect of the name “Jyothi Fabric Whitener” under the Trade and Merchandise Marks Act and Copyright Act is false. The plaintiff has started using the blue bottle only recently. Formerly, the plaintiff was using green bottle with different descriptive matter printed in yellow colour thereon. Since last few months alone, the plaintiff has changed her green bottle with yellow printing to blue bottle with white printing. Since 1982-83, the defendant has been regularly and extensively manufacturing and selling liquid optical whitener in the defendant’s blue coloured bottle, having an unique and distinctive shape, configuration and pattern as also having an artistic trade mark label imprinted thereon. The defendant has effected large and ready sales of his optical whitener since 1982-83. The defendant has carried out extensive advertisement and publicity campaign of his goods sold in the said bottle and had expended lakhs of rupees on sales promotion and publicity and advertisement of his goods. The product of the defendant has acquired immense and wide reputation and popularity among the members of the trade and public throughout India, particularly in the State of Kerala, Tamil Nadu, Karnataka and West Bengal. The product of the defendant is known throughout Kerala and Tamil Nadu since 1982-83. The plaintiff was using a descriptive matter on her green bottle and it has been changed and she is now using the descriptive matter in her blue bottle. The descriptive matter in the new bottle is identical to the descriptive matter appeared on the defendant’s blue bottle. The plaintiff has changed the descriptive wording on her green bottle to the wording in the blue bottle and it is not coincidence. The plaintiff’s husband Mr.Mohanan is a general merchant and amongst other articles, he has been selling the defendant’s product since 1989. the said Mohanan has been assisting his wife, the plain-tiff in the conduct of the business of the plaintiff. He was aware of the product of the defendant, and the reputation it was enjoying. It has prompted the plaintiff to imitate the defendant’s product. In the notice, the defendant has stated that the defendant has been manufacturing and selling the products continuously from 1982-83. The suit and the application are belated. The defendant is the first adopter and user of the trade mark label and the bottle. The plaintiff is not the owner of a registered trade mark Jothi Fabric Whitener with a distinctive container under the Trade and Merchandise Marks Act or Copyright Act or Design Act. She has only recently marked under “Jothi Fabric Whitener” in a container which is an imitation of the defendant’s “Ujala” distinctive container. The defendant’s product is sold under the Trade Mark “Ujala”. It is referred to by the Trade and public as “Jothi Product” as the word “Jothi” formed a prominent feature of the defendant’s trading style. The name “Jothi” is the daughter’s name of the defendant. The plaintiff has made an imitation of the defendant’s Ujala container, in colour scheme, get up label and widening in shape. The plaintiff who has caused confusion and deception amongst the rival public by imitating the container of the defendant, has made false statement. The balance of convenience is in favour of the defendant. The plaintiff has to prove the reputation and goodwill claimed by them. There is no prima facie case in favour of the plaintiff. The application is therefore liable to be dismissed.
5. The plaintiff filed a reply affidavit contending as follows:
The shape and configuration of the container and the colour have now attained common usage in the fabric whitener industry would denote the product manufactured and marketed. The defendant cannot plead any exclusive right to the use of the same. The plaintiff was manufacturing and selling their products by door to door sales by women. Since the sales of the product of the initial stages of the development was below the exempted limit, no registration was done under the Kerala General Sales Tax Act. The plaintiff has been declared as a Unit of Khadi and Village Industries Board and the plaintiff gains benefit by exemption from the provisions of the Kerala General Sales Tax Act. It is not the case of the defendant that they are selling their product as “Jothi” and not as “Ujala”. They are attempting to sell their product as “Jothi” and are trying to encash the goodwill and reputation of the plaintiff. The balance of convenience is in favour of the plaintiff. The allegation that the plaintiff has started using the blue colour container from recently is denied. The defendant has committed an act of fraud and misrepresentation by setting out and causing the court to believe that the material as stated is registered under the Copyright Act and the same amounts to trafficking by contending that the presence f the word “Jyothi” appears along with the word “”Ujala”. The defendant has not commenced business from 1982-83 as alleged. They have started business on 1.4.1983 in one place and in the year 1982 as per the copyright application and on 1.2.1993 in the application before the Trade Mark Registry. It would cast doubt as to whether the defendant was trading in liquid whitener at all until recently. The defendant conceived the idea of his enterprise in whitening agents, when he was working in Bombay in a Medical Company called “Medeley Laboratories” as an Accountant after purchasing plaintiff’s liquid whitener agent “Jothi” through the door to door sales persons. The allegation that the plaintiff’s husband is a general merchant and he had copied the defendant’s product is false. The deponent of the affidavit of the defendant is none other than the defendant’s mother’s sister’s son. He has sworn to the affidavit to protect his cousin brother. The Registrar of Copyrights could not have registered the defendant’s copyright as he had been aware of the existence of the prior trade mark. The defendant is having its another product viz., Nebula and Nebula Washing Soap. The volume of sales of the plaintiff would outweigh the right of the plaintiff and the balance of convenience is only in favour of the applicant. The defendant has copied the plaintiff s get up and is attempting to pass off the defendant’s product as that of the plaintiff’s product “Jothi”. Therefore the injunction granted already should be made absolute and application to vacate the injunction should be dismissed.
6. The plaintiff has filed the suit for permanent injunction restraining the defendant and their men from passing off the defendant’s product “Ujala” as that of the plaintiff’s product “Jothi Fabric Whitener” by using the white coloured screen printing on the face of the blue container and using the trade mark “Jothi” or any sonorously similar word which is an imitation to that of the plaintiff’s trade mark “Jothi Fabric Whitener” and for directing the defendant to render accounts and surrender bills, products, boards etc., contending that the plaintiff has independently conceived and coined the “Jothi Fabric Whitener” over their product as early as 1980 and their product has established itself as a quality product and that they are the earliest user of the name “Jothi Fabric Whitener” and the defendant who have been manufacturing and marketing their product named as “Ujala” and are trying to encash on the reputation and goodwill earned by the plaintiff as the product with national interest in mind for common man. The claim of the plaintiff is on the basis that the mark “Jothi” had been in use since 1980. The plaintiff does not claim the relief sought for on the ground that their trade mark has been registered. According to the plaintiff, she has made an application for the registration of the Trade Mark “Jothi Fabric Whitener” under the Trade and Merchandise Marks Act before the Registrar of Trade Marks at Madras under Application No. 602395 and it is still pending. Since the trade mark for the plaintiff which is alleged to have been infringed by the defendant has not been registered in the name of the plaintiff, the prior user is the criterion to determine the rights and the plaintiff has to make out a prima facie case of prior user with regard to the impugned trade mark. The relief sought for in this application by the plaintiff is interim injunction restraining the respondent from passing off their goods as that of the plaintiff s product taking advantage of the name and reputation established by the plaintiff. The principle of granting a relief on the allegations of passing off is no man shall pass off his goods as those of another. In order to establish the same, he must first establish a goodwill or reputation attached to the goods he supplies in the mind of the purchasing public by association with the identifying get up brand name or a trade description under which his particular goods are offered to the public, such that the get up’ is recognised by the public as distinctive of the plaintiff’s goods. The plaintiff should also demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods offered by him are the goods of the plaintiff. Thirdly, the plaintiff should also demonstrate that he suffers or is likely to suffer damage by reason of the erroneous belief engendred by the defendant’s misrepresentation, that the source of the defendant’s is the same as the source of those offered by the plaintiff. The Supreme Court in the decision reported in Wander Limited v. Antox India (P) Limited (1990)2 M.L.J. (S.C.) 1, has held as follows:
In a passing off action, however, the plaintiff’s right is independent of such a statutory right to a trade mark and is against the conduct or the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be species of unfair trade competition or of actionable unfair trading by which one person through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably causes damage to the business or goodwill of other trader.
7. Now, let us approach the facts of the present case in the light of the above ruling and established principles of law on this subject. We have already seen that the trade mark of the plaintiff has not been registered and therefore, the prior user of the trademark alone is the criterion to determine the rights of the plaintiff. The learned Counsel appearing for the defendant would argue that even in the application for registration of the trade mark, the plaintiff has claimed user of the trade mark only from 22.6.1991 and therefore, the plaintiff’s claim that from 1980, she was selling the product under the trade mark described by her cannot be true. The applicant would only contend that the registration of the trade mark was sought in June, 1991, since she was selling the product under the trade mark described by her as the product of the Cottage Industry by door to door canvassing and under the guidance of the Khadi and Village Board and therefore, the application for registration of the trade mark in 1991, is not a ground to hold that she was not using the trade mark previously. This contention of the applicant is not convincing and acceptable, since the plaintiff who claims to sell the product under this particular trade mark, has not obtained necessary licence from the sales tax authorities prior to June, 1991 and the registration under the registration under the Sales Tax Act in June, 1991 would show that their claim cannot be true. The reason given by the learned Counsel appearing for the plaintiff is that it was only a cottage industry, goods sold by the plaintiff by door to door canvassing and therefore, no registration was done under the Sales Tax Act. This is the same reason given as to why the trade mark of the applicant was not registered under the Trade and Merchandise Marks Act. These two reasons that the particular object was sold by door to door canvassing and it was under the control of Khadi and Village Industries Board, are not sufficient reasons as to why they have not registered the trade mark under the Trade and Merchandise Marks Act and why the plaintiff has not registered their product under the Sales Tax Act. It is more so, when the plaintiff was using the container which was green in colour with a different descriptive matter in the container, previously;
8. As per the counter of the respondent, the green container of the plaintiff had the descriptive matter as follows:
I.A.L. FOR
SHINING WHITENESS
MRP Rs._________(75 ml)
FORMULATED BY JOTHI CHEMICALS
MADRAS 600 021.
It is only subsequently, the defendant’s container has been changed from green to blue and the descriptive matter is also as follows:
FOR
SUPER WHITENESS OF
CLOTHES
(INSTANT ACTION LIQUID)
MAX. RETAIL PRICE Rs.______
(INCLUSIVE OF ALL TAXES)
JYOTHY CHEMICALS & DETERGENTS
THANGALPADI – KERALA
PIN 680 512.
The change in colour of the container, the descriptive material printed on the container cannot be considered as a mere coincidence of the colour and descriptive matter of the defendant. It throws considerable doubt on the version of the plaintiff that the defendant has started passing off their goods as the goods of the plaintiff taking advantage of the reputation and goodwill of the plaintiff’s products.
9. It will not be out of context to observe that the plaintiff who claims to be using this container, has not produced any documentary evidence to show that she was using the same prior to the user by the. defendant. The defendant has filed documentary evidence to show that they have spent a considerable amount for an advertisement to make a publicity of their product by filing the particulars of the turnover, affidavit of the audit of the company, and evidence to show that sports events were sponsored and conducted by the defendant from the year 1982 onwards. The above documents would show that the defendant has been carrying on business under the name “Jyothi Laboratories” with the trade mark “Ujala” from 1983-84 onwards. But, no such document is forthcoming on behalf of the plaintiff. According to the defendant, Mohanram, husband of the plaintiff was a General Merchant dealing and selling among other things, the defendant’s products, viz., “Ujala” and the learned Counsel appearing for the defendant would argue that realising the market which the defendants are in enjoyment for their product “Ujala”, the plaintiff’s have changed the colour of the container as well as the descriptive material on the container in such a way that they could sell their product as if, it was the product of the defendant. Even though, there is no proof for such a conduct, yet considering the facts that Mohanram was one of the dealers dealing in the defendant’s product “Ujala”, the conversion of the green container into blue container was only later in point of time with change in the descriptive material on the same, we cannot ignore the arguments of the learned Counsel appearing for the defendant that it was the plaintiff who is trying to take advantage of the defendant’s goodwill and name.
10. The learned Counsel appearing for the defendant has also argued that the plaintiff claims that the defendant has committed tort by passing off the goods of the defendant as that of the plaintiff, only in 1995, when it has been established by the defendant that they are selling their products under the name “Ujala” in the container of the particular shape in blue colour from 1982-83 onwards and there is delay on the part of the plaintiff in coming to court with this suit for injunction and it would show that the plaintiff s case cannot be true. Documentary evidence has been filed by the defendant for their products being sold in the trade name “Ujala” from 1982-83 onwards. The plaintiff also claims that her products are sold under the trade mark “Jothi” from 1980 onwards. If so, why there is delay in filing the suit has not been explained by the plaintiff. Even as per the plaint allegations, it is only subsequent to the receipt of the notice issued by the defendant, the plaintiff has come forward with this suit. The defendant has issued the notice to the plaintiff calling upon the plaintiff not to infringe the trade mark of the defendant and this notice has been issued subsequent to the change of the colour of the container and descriptive material by the plaintiff. Therefore, filing of the suit by the plaintiff in 1995 when the plaintiff alleges the infringement earlier, is a matter which has to be taken note of while granting the equitable relief of temporary injunction. In granting temporary injunction, it is settled law, not only prima facie case has to be seen, but also, two other factors viz., (1) in whose favour, the balance of convenience lies and (2) whether the plaintiff would suffer irreparable injury if injunction is not granted are to be seen. When there is laches on the part of the plaintiff, in coming to the court for equitable relief, these two factors cannot be said to have been satisfied or established by the plaintiff in order to enable the plaintiff to get the interim injunction prayed for. The object of an interlocutory application is to protect the applicant- plaintiff against an injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the case ends in his favour at the trial, but the plaintiff’s need for such protection must be weighed against the corresponding need, of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated, if ultimately in the trial ends in his favour; Therefore, if injunction granted is made absolute and the defendant succeeds ultimately in the trial of the suit, monetary compensation cannot enable the defendant to get over the prejudice and loss sustained by it, but it is otherwise, if the plaintiff succeeds, even if the injunction already granted is vacated. In this connection, the version of the defendant that they are manufacturing the liquid whitener in two factories and 15 factories are manufacturing and supplying the containers to the defendant has to be taken note of. If the injunction is made absolute, the production of the liquid whitener and the containers by the 17 factories will come to a grinding hault and the loss sustained by the defendant cannot be adequately compensated even if the defendant succeeds at the trial of the suit.
11. It may also be noted that the defendant has got a copyright of the word “Ujala” registered subsequent to an enquiry in the year 1985 on their application and their application for registering the trade mark is pending enquiry from 1987, whereas the application for registration of the trade mark of the plaintiff is pending only from June 1991. The turn-over of the defendant is much more than the turn-over of the plaintiff which is said to be a Cottage Industry. In the above circumstances, I am of the opinion that the plaintiff, who has come forward with a suit for permanent injunction to restrain the defendant from passing off their products as that of the plaintiff, has failed to prove that the defendant’s products have earned a goodwill and reputation to the extent that the defendant is compelled to pass off their goods as that of the plaintiff and in that view, I hold that the injunction already granted is to be vacated.
12. In the result, O.A. No. 244 of 1995 is dismissed allowing the Application No. 2118 of 1995. Application No. 2119 of 1995 is dismissed as unnecessary.
