JUDGMENT
Y.K. Sabharwal, J.
(1) FEVICOL’ in respect of Synthetic Resin Adhesives, is the trade mark of the plaintiff. “Trevicol’ is the trade mark under which defendant is marketing the same goods. The plaintiff by I.A. 4226/87 seeks a temporary injunction restraining the defendant from use of the trade mark ‘Trevicol’ and from using a get up identical or deceptively similar to that used by the plaintiff on containers used for selling adhesives.
(2) The plaintiff claims to be the largest manufacturer of Synthetic Resin Adhesive in the country with annual sales of above Rs. 25 crores. The average amount spent on advertisement is claimed to be to the tune of more than Rs. 25 lakhs annually. The case of the plaintiff, as set up in the plaint, is that its trade mark ‘Fevicol’ is registered under the Trade and Merchandise Marks Act since 2nd March, 1960 and has been continuously renewed and is valid and subsisting. The plaintiff has been marketing adhesives manufactured by it in plastic and tin containers with highly specific eye catching designs and colours. The plastic containers of the plaintiff have particular shape and comes in two colours white and blue and both have an identical pattern i.e. within a box made on the front and back of each container, the main features of which are word ‘Pidilite’ within a box on the top, a device of two elephants pulling apart a sphere below it and the words ‘Fevicol’ in bold letters below it, followed by the word Synthetic Resin Adhesive. Apart from plastic container it also claims to have tin containers with distinct dark blue background with a distinctive yellow band in the middle. The registered trade mark ‘Fevicol’ is written in the said yellow band with a distinct red colour scheme. The entire tin having the colour scheme of blue and yellow with big red lettering and small white lettering containing instructions has a distinctive and unique look. It is claimed that this distinctive get up of the plaintiff containers has been in use for last more than 10 years . It also claims to have a copyright registration of the entire get up of the tin container. It is further claimed that the plaintiff and .their purchasers have extensively used the trade mark ‘Fevicol’ which has acquired an enviable reputation in the market. The name ‘Fevicol’ has become a household word in relation to synthetic resin adhesives and other allied products. That because of distinctive get up used by the plaintiff on the containers of Fevicol, the goods of the plaintiff have also become associated with its distinctive get up and many persons particularly illiterate carpenters who often purchase this adhesive for use in the wood work. often purchase it on the basis of the name and the get up alone. The plaintiff claims exclusive use of the trade mark ‘Fevicol’ and its distinct get up on its containers. The plaintiff is aggrieved by use of the trade mark ‘ ‘Trevicol’ by the defendant and by use of plastic and tin containers which have an identical get up as that of the plaintiff. It says that the name ‘Trevicol’ is deceptively similar to plaintiff’s registered trade mark ‘Fevicol’ both visually and phonetically and that use of almost identical get up as that of the plaintiff on the containers of adhesives being manufactured and sold by the defendant shows that intention of the defendant is to trade upon the name and goodwill extensively built by the plaintiff. The plaintiff says that the use of almost identical trade mark and almost identical get up is bound to create confusion in the market and in the minds of unwary purchasers many of whom are illiterate carpenters.
(3) In the plaint certain earlier instances when some other traders tried to infringe the plaintiffs trade mark and pass of their goods as those of the plaintiff have been given. The instance given are in respect of trade marks Divicol, Devicol, Nevicol, Fixocol, Avicol, Firmcol and Hevicol’ and it is claimed that when it moved applications against the manufacturers trading under the aforesaid trade marks they were found guilty by courts and con- victed and the manufacturers gave undertakings to the court not to manufacture and market their adhesives under the infringing trade marks. In the suit besides claiming permanent injunction restraining the defendant from manufacturing selling or in any way trading in synthetic resin adhesive under the trade mark “Trevicol’ it has also claimed injunction restraining from selling or trading in packages with the get up which is being used by the defendant in their containers. It has also asked for other relief such as rendition of accounts.
(4) The defendant is contesting the suit. It claims that the two trade marks are different. There is no resemblance of any sort. Defendant says that it is manufacturing synthetic resin adhesive since 1985 under the trade mark ‘Trevicol’ and, as such, the suit is resisted on the ground of delay, latches and acquiescence. It further says that there is neither any deceptive similarity in two trade marks nor there is any deceptive similarity in the containers. It is claimed that plaintiff and defendants are having different boxes. On similar grounds the defendant has resisted the application of the plaintiff for grant of temporary injunction during the pendency of the suit.
(5) At this stage only prima fade opinion is required to be formed on the question whether the two marks and containers are deceptively similar or not and is it likely to cause deception or not to an average customer and on which side the balance of convenience lies. Before I take up the comparison of the two marks or the similarity or dissimilarity on the containers it would be apposite to state some well settled principles governing these matters, namely (1) it is always a question of fact in each case whether the deception or confusion is likely to be caused or not by use of the impugned trade mark ; the court has to put itself in the position of an average customer and ask a question whether there is likelihood of deception or confusion or not and then answer the question on that basis (2) the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The totality of the trade marks is to be seen to find out whether there is likelihood of deception or confusion or mistake in the minds of persons accustomed to the existing trade mark (3) the likelihood of confusion or deception is to be seen in relation to average unwary customer (4) it is the tendency to mislead or cause confusion that forms the gist of passing off action and the plaintiff need not establish the actual deception.
(6) Keeping in view the aforesaid principles I will now examine the two marks in question. The suffix ‘Vicol’ is common in the two marks. However, there is difference as regards the prefix. The prefix in plaintiff’s trade mark is ‘Fe’ whereas in the defendants trade mark it is ‘Tre’. However, while pronouncing the two marks taken as a whole sound quite similar. As stated above, the mark is to be compared as a whole and it will not be right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the impugned mark, there does not exist sufficient similarity to cause confusion. Undoubtedly, the purchasers include a large section of illiterate persons, who, in the setting of things, are likely to be deceived or confused. There also appears to be, on overall comparison of the two marks a visual similarity as well. The writing style of the two marks is also almost identical.
(7) Turning now to the containers, in both the containers i.e. one of plaintiff and the other of defendant, the trade mark ‘Fevicol’ and “Trevicol’ have been put in two rectangular boxes one at the front and other at the back. The writing on the boxes is in blue colour. The word ‘Pidilite’ in Fevicol and word ‘Mitees’ in Trevicol have been put in almost identical settings. Fevicol contains two elephants pulling apart a sphere. Although in ‘trevicol’ in place of elephants there are two ships, but if one looks it minutely then alone it is possible to find out that in Fevicol it is elephant and in Trevicol it is Ship, otherwise, the two containers give an impression that a similar object pulling apart each other has been used in both. This is in so far as the plastic containers with the background of white and light blue are concerned. Even in the tin containers the points of similarity, the colour scheme and the get up is almost identical. There is no manner of doubt that the containers in which the defendant is manufacturing and selling its goods are almost similar to the containers of the plaintiff. Learned counsel for the defendant has placed on record affidavits of certain dealers in support of his argument that there has been no deception or confusion. It is not possible to place reliance on the said affidavits. Firstly, it is common knowledge that it is not at all difficult to get such type of affidavits. Secondly, the affidavits are by the dealers of the defendant. Thirdly, the likelihood of deception or confusion which is to be seen is that of an average customer and not the dealers and fourthly the actual deception is not necessary to be established but only its likelihood is to be established.
(8) It was then contended by the learned counsel for the defendants that added material in that trademarks of the defendants and on their container was sufficient to show the distinction. The added material is the name of the manufacturer being ‘Mitees Corporation’ as against the ‘Pidilite Industries Private Limited’ on the containers of the plaintiff. However, as stated above a large section of customers consists of illiterate persons who are not likely to go in for reading the same of the manufacturer. There is also no substance that the price of the two products are substantially different as on none of the containers of the defendant the price has been printed. While considering the points of similarity and dissimilarity one has to bear in mind the unwary purchaser of average intelligence and imperfect recollection. The critical comparison of the two marks may disclose some points of difference but that is not the criteria in these matters. On a consideration of all the circumstances it is clear that an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two marks. (See : the case of L.axmandhara and Amritdhara Re: Amritdhara Pharmacy v. Satya Deo, ).
(9) The last submission made by learned counsel for the defendant was that the plaintiff is guilty of delay, latches and acquiescence and as such is not entitled to grant of temporary injunction. The case of the plaintiff is that it learnt about the infringing activity of the defendant in the year 1986 and immediately thereafter it filed a complaint against the defendant under Section 78 of the Trade and Merchandise Marks Act before the Metropolitan Magistrate who directed the seizure of the defendant’s goods. The said goods were subsequently released on superdari. By filing the said criminal complaint defendant has been put to notice by the plaintiff that their trademark ‘Trevicol’ constituted infringement of the plaintiff’s trade mark Fevicol. The plaintiff says that since the defendant did not desist from their infringing activity inspite of the filing of the said complaint, it was forced to tile the present suit in July, 1987. The defendant has not placed on record any advertisement having been made in the national dailies. It is not necessary that immediately after learning about the infringing activity the plaintiff should rush to court and seek an injunction. Reasonable time has to be given to the plaintiff to either exhaust other remedies or give an opportunity to the defendant to stop the alleged infringing activity. The plaintiff is in business since the year 1960 and prima facie has enormous sales of its product under the trade mark ‘Fevicol’. The said trade mark was registered in the year 1960. The registration is continuing. On defendant’s own showing its business under the trade mark ‘Trevicol’ is comparatively of recent origin. They started the use of its trade mark in the year 1985. In 1986 proceedings under Section 78 and 79 were taken and in July 1987 the present suit was filed. It cannot be said that the plaintiff acquiesced in the use of the trade mark ‘Trevicol’ by the defendant. It also cannot be said that in the facts and circumstances of this case there was inordinate delay in bringing the present action against the defendant. The plaintiff never encouraged the defendant to go ahead with their trade mark Trevicol. It is not the case of the defendants that knowingly the plaintiff kept quite and encouraged them to go ahead with their business (See : B.K. Engineering Co., Delhi v. U.B.H.I. Enterprises (Regd.) ). In B.K. Engineering case the defendants had started business in 1981 and the suit was filed by the plaintiff in February, 1984. The Division Bench rejected the argument of delay and acquiescence. In the present case, as stated earlier, the plaintiff immediately on learning the infringing activity of the defendant started acting first by filing complaint before the Magistrate and then bringing this suit. There is no substance in the submission that the plaintiff is guilty of delay, acquiescence and latches. The balance of convenience is also evidently in favor of the plaintiff. They have been in trade for nearly 38 years using trade mark Fevicol. They have extensive sales. There are also extensive expenses on advertisement. On the other hand the defendant’s business is of recent origin. The two marks are deceptively similar both phonetically and visually. The colour scheme and the get up of the containers is also almost identical. It is not only the interest of the plaintiff but the interest of the public which is also to be kept in view. If the defendant is permitted to continue with the infringing activity the general public is likely to be deceived. It will not be possible to measure the damages which the plaintiff may ultimately suffer on account of continuing infringing activity of the defendant if the order of restraint is not passed against it. The defendant being at almost threshold of the start of its business under the impugned trade mark can develop and popularise some other trade mark. Considering the totality of the circumstances, in my opinion, the balance clearly tilts in favor of the plaintiff and against the defendant.
(10) By 1.A. 1989/88 the defendant seeks restraint against the plaintiff from giving threats to the defendant, its customer and dealers indicating that an action or proceedings for infringement of the trade mark ‘Fevicol’ shall be filed against them. The application is totally misconceived. The plaintiff has a right to have recourse to legal proceedings to vindicate its rights. It cannot be said that the plaintiff is giving groundless threats of legal proceedings to the defendant. Section 120(2) of the Trade Mark and Merchandise Marks Act provides that the provisions of Sub-section (1) of the said section will not apply if the registered proprietor of a trade mark or a registered user acting in pursuance of Sub-section (1) of Section 51, with due diligence, commences and prescribes an action against the person threatened for infringement of the trade mark. Accordingly, this application filed by the defendant is liable to be dismissed as misconceived. By the second application (1. A. 1990/88) filed by the defendant it seeks, under Order 2 Rules 2(3) of Code of Civil Procedure, leave to sue the plaintiff for damages on account of groundless and illegal threats. From the above discussion it follows that this application has also to meet the same fate as 1.A. 1989/88.
(11) The expression of opinion in this order, while considering I.A. 4226/87, is only prima facie and will not affect the rights and contentions of the parties on the merits of the subject matter in suit.
(12) For the reasons stated above I allow I.A. 4226/87, and dismiss 1.As. 1989 and 1990/88. The defendant, its servants, agents, stockists, dealers and other persons acting on its behalf are restrained from using the trade mark ‘Trevicol’ in respect of Synthetic Resin Adhesive or any other trade mark similar thereto till the decision of the suit. They are also restrained from using impugned containers or any other identical or deceptively similar containers till the pendency of the suit. The plaintiff will also be entitled to its costs. Counsel’s fee Rs 2500.00 .