JUDGMENT
Arun Kumar, J.
(1) The plaintiff has filed the present suit for injunction to restrain defendant No.1 from infringing its copyright in its name with the logo and for passing off its trade name/goodwill and for rendition of accounts. Defendant No.2, who was an artist who prepared the logo used by the plaintiff, has been imp leaded as defendant No.2. However, no relief is claimed against him. The said defendant has died in the meanwhile. Therefore, the suit is now only against defendant No.1. Along with the suit, the plaintiff filed an application being I.A.No.14519/91 under Order 39 Rules I and 2 of the Code of Civil Procedure for grant of interim injunction in its favor. On the said application, ex parte interim order was passed in favor of the plaintiff on 5th December,1991 whereby the defendant was restrained from using the trade name ‘Prakash’ or trade logo, which is deceptively similar to that of the plaintiff. The defendant moved an application being I.A. No. 14690/91 under Order 39 Rule 4 of the Code of Civil Procedure for vacating/discharging the said injunction order. This order will dispose of both the aforesaid applications.
(2) The case of the plaintiff is that for the last over 30 years, the plaintiff company is engaged in the business of transport and carriage of goods and parcels. The said business is being run under the name and style of ‘Prakash Road Lines Ltd.’. The plaintiff has also been using the artistic work comprising of the figure of a cat with a crown on its head and a parcel in its hands as its logo. According to the plaintiff, the continued user of the words ‘Prakash Road Lines’, with the aforesaid logo has acquired a distinct identity. The said logo and the trade name has acquired enormous goodwill for the plaintiff in the transport business. The plaintiff claims to have acquired and established a superior reputation due to its impeccable record of providing high quality service to its clients. It has over 3300 offices all over India and is employing more than 2500 employees. The annual turn over of the plaintiff company is almost Rs.50 crores. The plaintiff has given a break-up of its expenses on advertisement and promotion of its trade name/logo which during the last three years has been about Rs.l5 lakhs, Rs.21 lakhs and Rs.21 lakhs respectively.
(3) On the basis of the above facts, it is claimed that the said trade name/logo have been identified as a trade name and logo of the plaintiff in the entire transport industry through out the country to such an extent that plaintiff’s name ‘Prakash’ and/or the logo comprising of the combination of a cat with a crown and a parcel is displayed, shown or mentioned, the common man associates the same with the plaintiff. The plaintiff claims to have obtained the endorsement of its copyright over the said logo from the Registrar of Companies. By virtue of long and established user coupled with vast publicity given to the said trade mark, the plaintiff claims to have acq2uired exclusive rights as proprietor thereof. The word ‘Prakash’ and the logo of the cat with a crown and a parcel in its hand is prominently displayed and is written in bold and distinctive writing in all the advertisements, publicity material, hoardings, sign-boards, printed material, price lists, stationary etc. of the plaintiff. Thus, the word ‘Prakash’ and the logo have become associated distinctively with the enormous goodwill enjoyed by the plaintiff.
(4) It is further the case of the plaintiff that the defendant company has been recently floated by former Directors/employees of the plaintiff company with the malafide intention of exploiting/enchasing/miss-using the goodwill associated with the trade name ‘Prakash’ and the logo of the plaintiff. The defendant company has been floated under the name and style of ‘Prakash Parcel Services (P) Ltd’. -The manner of the use of word ‘Prakash’ in the name of the company and the use of the logo of a cat with a crown and a parcel in its hands used in all its printed material, publicity campaign, stationery etc. along with the word ‘Prakash’ is deceptively similar/ identical to that of the plaintiff’s trade name/logo. The adoption of the name ‘Prakash’ along with the similar artistic work and the logo shows the malafide intentions of the defendant and the same has been done with a view to taking undue advantage and cashing upon the reputation of the plaintiff with a calculative view of creating deception and confusion in the trade and industry and passing off the name of the defendant as that of the plaintiff. According to the plaintiff, the general public is bound to be deceived because of this. The defendant is alleged to be creating an impression in the trade that it is a part of the Prakash Group of Industries. The former Directors/employees of the plaintiff who have floated the defendant company were involved in the day to day business and functioning of the plaintiff and are in the know of the plaintiff’s working and business connections and as such are in a position to mislead the clients of the plaintiff and sway them towards defendant.
(5) The plaintiff has listed various acts of the defendant to show the dishonest intention of the defendant and to establish that the defendant is mis-using the trade name and copyright in the logo vested in the plaintiff. Some of these are :- a) The word ‘Prakash’ of the plaintiff company’s name is being used by the defendant and the same is being used in the same manner and prominent style as that of the plaintiff. The placing, arrangement, configuration and depiction of the word ‘Prakash’ on the various printed material such as invoices, vouchers, challans, visiting cards and other publicity material including rate lists etc. is identically similar to that of the plaintiff. Even the use of colour combination of red and black ink in the writing of the trade name and the logo is exactly similar to that of the plaintiff. b) The placing arrangement and configuration of the logo by the defendant in its various printed material and on stationery is identical to that of the plaintiff. The defendant’s logo is nothing but a literal imitation of the copyright work of the plaintiff with some insignificant variations here and there. c) The consignment notes used by the defendant are identical to that of the plaintiff in all respects. The scheme, the design, the colour and the layout is identicp.l to that of the plaintiff. d) The lorry hire pay orders of the defendant are identical in almost all respects to those used by the plaintiff. It is further stated that lorry hire pay order is a document like cash.
(6) The miss-user of the plaintiff’s trade name and the logo by the defendant is stated to have resulted in lowering the goodwill, reputation and credibility of the plaintiff company in the eyes of the general public and particularly within the transport industry. The plaintiff and the defendant are part of the same trade and industry. The possibility of confusion is inevitable. The defendant is thus, according to the plaintiff, infringing and violating the statutory and common copyrights of the plaintiff by mis-using the plaintiff’s trade name and logo with impugnity. Such activities of the defendant are claimed to be causing immense injury to the plaintiffs business and reputation. The plaintiff further states that the loss of its reputation and the loss otherwise suffered by the plaintiff on account of such illegal and malafide acts of the defendant can not be measured and compensated in terms of money. Therefore, the plaintiff has sought the relief of rendition of accounts by the defendant. The plaintiff has averred that it estimates that the defendant might have earned Rs.20 lakhs by trading upon the plaintiff’s reputation and by infringing its copyright and as such the gain of the defendant is loss of the plaintiff.
(7) I may note at the out-set that during the course of hearing, it has been stated at the Bar that the defendant has given up the use of the logo of the cat with a crown and a parcel in its hand and has also changed the style and the manner in which the word ‘Prakash’ is written on the material of the defendant. Therefore, it was submitted that the cause of action no longer survives in favor of the plaintiff. So far as the use of the word ‘Prakash’ by the defendant is concerned, the said word being generic word can not be exclusive property of anybody and it is claimed that the defendant is entitled to use the same. No injunction can be granted with respect to the use of the word ‘Prakash’ by the defendant.
(8) In its application under Order 39 Rule 4 of the Code of Civil Procedure, defendant has set-out its case in detail. It is submitted by the defendant that the present suit for passing off is not maintainable in as much as the plaintiff is not claiming the relief of passing off in relation to any goods. So far as the use of the word ‘Prakash’ is concerned, it is the case of the defendant that the said word is a part of the name Suraj Prakash Manchanda, who was one of the founders of the Prakash Group of Companies including the present plaintiff. It is further submitted that the said Suraj Prakash Manchanda was illegally ousted from the position of Chairman of the plaintiff company. He and his group still hold about 43% of the shares in equity of the plaintiff company. Therefore, Suraj Prakash Manchanda and his associates have floated the defendant company and the use of word ‘Prakash’ being part of his name is a bonafide use by the defendant. Regarding the allegation of the plaintiff that the use of the word ‘Prakash’ and the logo of the plaintiff by the defendant is likely to cause confusion and deception in the minds of the general public likely to be involved in dealings, it is submitted that the class of persons who are involved is not generally uneducated and illitrate class. A consignor who wishes to book an order for delivery to the consignee normally sends a forwarding note along with the consignment to the carrier. On the basis of the forwarding note, the consignment note is prepared and the consignment is loaded on the lorry/vehicle by the carrier for transportation to the consignee. The choice of the carrier rests with the consignor and the consignee. The forwarding note specifies the name of the carrier. The consignors are invariably persons of repute and belong to a class who are not likely to be deceived. Therefore, it is stated that there is no question of any deception being caused. On the basis of this trade practice, it is pointed out that it is not correct to say that semi literate and illiterate employees of the transporters are involved in booking of consignments.
(9) The defendant has further submitted that a suit has been filed in the High Court of Judicature at Bombay by M/s Prakash Air Freight Private Limited, a sister concern of the defendant against M/S Prakash Express Lines Private Limited, a sister concern of the plaintiff praying that the defendant in that suit be restrained from using the word ‘Prakash’ as part of the corporate name and from using the logo of a cat with a crown and holding envelopes or any other deceptively similar logo. It is submitted on this basis that the present suit is a counter blast to the said suit pending in the Bombay High Court.
(10) Another argument raised by the defendant justifying use of the word ‘Prakash’ in the name of the defendant company is that if the plaintiff is aggrieved, it should have approached the Central Government by way of objection to the registration of the said name as per the provisions of Section 20 of the Companies Act and this Court is not the proper forum for that purpose. The Companies Act being a complete Code in itself, the remedy lies in taking steps under the provisions of the said Act. However, this point was not argued at the time of hearing.
(11) It is also the case of the defendant that the word ‘Prakash’ is quite commonly used in the transport industry and is not at all distinctive of the plaintiffs group of companies. Apart from the plaintiff, there are a number of other transporters in Delhi alone having the name ‘Prakash’. These transport companies have been in existence for quite some time but the plaintiff never objected to the use of the word ‘Prakash’ in their names. Therefore, the plaintiff can not claim any distinctiveness in relation to the use of the name ‘Prakash’ for the plaintiff’s group of companies.
(12) On merits, it is submitted that Suraj Prakash Manchanda is in fact the promoter of the plaintiff company. It is he who started the transport business by running a small passenger bus in the year 1955. He himself used to ply the said old passenger bus between Kota and Sangod in Rajasthan. In 1957, the said Suraj Prakash Manchanda Along with Munshi Lal Manchanda and his maternal uncle 0m Prakash Narang started the firm M/s Prakash Transport at Bangalore. The business of M/s Prakash Transport prospered and ultimately in April 1961 M/s Prakash Road Lines Private Limited i.e. the present plaintiff was promoted by Suraj Prakash Manchanda and was incorporated as a company at Mysore. The family members of the families of the said three persons acquired shares in the said company. Shri 0m Prakash Narang died in 1984 and Shri Munshi Lal Manchanda died in 1989. Subsequently, there were disputes between the family members which ultimately resulted in ouster of Suraj Prakash Manchanda from the Chairmanship and control of management of the present plaintiff. Reference has been made to some litigation pending at Bangalore between the family members. However, those details are not relevant for the present purpose. It is submitted with reference to the said litigation that it would not be in the interest of justice nor would it serve the balance of convenience to continue the ex parte injunction granted in this case.
(13) During the course of hearing the defendant confined its case to the following points :- 1)It is essential in a suit for passing off that damages suffered should be pleaded in the plaint. The plaintiff having failed to do so, it is not entitled to any injunction. 2) Passing off action can be only in regard to a trade mark in goods and not for services as in the present case. 3) There can not be any specific right with regard to any name, particularly, when promoter of the defendant also has the word ‘Prakash’ part of his name which makes the user of the word ‘Prakash’ by defendant bonafide. 4) No action was taken by the plaintiff against others in the same trade using the word ‘Prakash’ in their names and, therefore, there is no balance of convenience in favor of the plaintiff. 5) The present suit is not bonafide as it stems out of family feuds and litigation which is already pending in other Courts. Further non-discloser of the same in the plaint is malafide and disentitles the plaintiff to any relief.
(14) In support of his first contention counsel for the defendant has submitted that in an action for passing off there has always to be a claim for damages. In the plaint in the present suit, the plaintiff has not claimed any specific amount on account of damages. To support this contention, a reference has been made to the plaint in the suit. From the plaint, counsel for the defendant has tried to show that no claim for damages has been made and, therefore, the passing off action must fail. My attention has also been invited to a passage in Bullen and Leak on Pleadings to emphasise that there are five requirements in a suit for passing off. These very requirements have also been referred to in a passage in Erven Warning by Versus Townsend and Sons (Hull)Ltd. (1979)2 AII.E.R.927 at page 932 which is to the following effect :- “MYLords, A G Spalding & Bros. vs. A.W.Gamage Ltd and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (l)a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”
(15) It is further submitted that each of the above Five requirements or characteristics stand independently and have to be met independently of each other. To illustrate the point, it is submitted that a defendant may admit the First four requirements and say that since no claim for actual damages to the business or goodwill of the plaintiff has been made, the action must fail. In reply to this argument, counsel for the plaintiff has submitted that the nature of the plaintiff’s claim in the suit and the defendant’s offending action is such that it is difficult to specify the amount of damages in the plaint. The exact amount can not be ascertained and, therefore, can not he stated in the plaint. That is why, it is submitted that the plaintiff has stated in para 19 of the plaint as under:- “THAT the actual amount of the profits earned by the defendant by misusing the plaintiff’s trade name/logo can be ascertained only on the defendant rendering true and honest accounts to the Court. However, the plaintiff estimates that the defendant may have earned about Rs.20.00 lacs by trading upon the plaintiffs reputation and by infringing its copyright. Such gains of the defendant are plaintiffs losses.’
(16) By reference to para 22 of the plaint which is the prayer clause in the suit it is pointed out that the plaintiff has undertaken to pay the requisite court fee on the amount due to the plaintiff on account of loss/damages being ascertained after the defendant has rendered account. This according to the counsel for the plaintiff also meets requirements as per Order 7 Rule 2 of the Code of Civil Procedure. Thus according to counsel for the plaintiff, the argument on behalf of the defendant that there is no pleadings or claim regarding damages is without any merit or substance. The overall view has to be taken on the basis of the pleadings and the prayer in the suit, to hold whether the requirement of Order 7,Rule 2, Civil Procedure Code . has been met. In the alternative counsel for the plaintiff submits that proof of actual damages is not a sine qua non for an action for passing off. For this, he relies on Century Traders Versus Roshan Lal Duggar and Company, . In the said judgment, the Division Bench of this Court has held as under:- “IN our view the proof of actual damage or fraud is unnecessary in a passing off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. We are fortified in coming to this conclusion by the observations in a bench decision of this Court in Prima Chemical Works Vs. Sukhdayal, 2nd (1974)1 Delhi 545.”
(17) In Bajaj Electricals Ltd. Versus Metals & Allied Products, it has been noted with approval by a Division Bench of the Bombay High Court that actual sufferance of damages can not be established on the date of the institution of the suit. The Court can not ignore the fact that damages would be suffered by the plaintiff.
(18) Having regard to the provisions of law, and in the light of the submissions made by the Counsel for the parties, I am of the view that the plaintiff has pleaded the necessary facts which could be pleaded at this stage and the plaintiff can not be non suited on the basis of arguments advanced on behalf of the defendant. At this initial stage the plaintiff can not ascertain the exact amount of loss/damages and, therefore, can not claim in the plaint any specific amount by way of loss/damages. The plaintiff has sought relief of rendition of account and has also pleaded that the gain of the defendant is loss of the plaintiff. Therefore, if the plaintiff ultimately succeeds and the accounts are rendered, it will be possible to ascertain the exact amount of loss/damages suffered by the plaintiff and the plaintiff has undertaken to pay the requisite court fee on the basis of the ascertained amount. “The view taken by me is supported by the aforesaid two decisions of the Delhi and the Bombay High Courts. It is in view of the difficulty of the plaintiff to ascertain the exact amount of loss/damage at the stage of filing of the suit that the Courts have laid down that no claim for specific amount can be made in the suit. Whatever was required to be said for the purpose of making a claim on account of loss/damage has been said in the plaint. Therefore, the first contention of the defendant regarding plaintiff’s failure to plead the necessary ingredients for passing off action fails and is hereby rejected.
(20) The next contention urged on behalf of the defendant is that a passing off action can lie only with regard to goods and not for services. It is submitted that neither the plaintiff nor the defendant is trading in any goods. Both the parties are carrying on business as transporters and as such are providing services. Therefore a passing off action does not lie.
(21) I find myself unable to agree with the proposition that a passing of action must relate only to goods. Even in case of business of rendering services there can be passing-off. Suppose somebody is carrying on business as caterers in a particular name. Another party starting same business in same name or in a deceptively similar name is likely to harm the business, reputation and goodwill of the other party and there is no reason why such activity be not prevented. In Kingston Miller and Company Versus Thomas Kingston and Company, 29 R.P.C. 289 an injunction was granted against the defendant regarding use of the word ‘Kingston’ in its name because the same was likely to mislead or deceive the public into the belief that the defendants were the same company as the plaintiffs. The facts in this case were that M/s Kingston Miller & Company Ld. carried on the business of caterers. They brought an action against Thomas Kingston and Company Ltd. who also traded as caterers to restrain them from carrying on business under that name. Thomas Kingston had been one of the Assistant Managers of the plaintiff company. He left the plaintiff on the expiry of his agreed term of service and took steps to obtain the formation of the defendant company, with himself as Managing Director and having the same objects as the plaintiff company. In a way the facts of this case are quite similar to those of the present case. It was held that the defendant’s use of the name Thomas Kingston Company Ltd. was likely to deceive the public and, therefore, injunction was granted to restrain the defendant company from carrying on business under their registered name or any other name resembling plaintiff’s name and likely to mislead the public into the belief that the business carried on by the defendant company was the same as the business carried on by the plaintiff company, or in any way connected therewith.
(22) In M/s K.G.Khosla Compressors Ltd. Vs. Khosla Extraktions Ltd., , this Court has also held that a passing off action need not merely relate to goods. This view also find support from a judgment of the Chancery Division of the High Court in Re. British Legion Vs. British Legion Club (Street) Ltd., 1931 Vol.48 R.P.C. page 555. In view of the aforesaid legal position the second contention of counsel for the defendant also fails and is hereby rejected.
(23) The next point urged by the counsel for the defendant is that there can be no specific right with regard to a name and in this connection, it is further urged that the word ‘Prakash’ used by the defendant in its name is part of the name of the promoter of the defendant company and, therefore, there can not be any objection to the use of the said word. In this connection, at the outset I may put it on record that the defendant does not claim that the word ‘Prakash’ is being used in the sense that it is Hindi vernacular word meaning light. First the case of the defendant is that the word ‘Prakash’ is part of the name of Shri Suraj Prakash Manchanda promoter of the defendant company and therefore, he is entitled to use the same. It is true that the word ‘Prakash’ very commonly occurs in Indian names and in that sence it is a generic word. There can not also be a dispute regarding the proposition that a generic word can acquire a secondary meaning in the trade and as such entitle the person for whom it has acquired a secondary meaning to restrain others from using it in connection with the same trade. However it will always remain a question of fact whether the use of generic word has acquired a secondary meaning as a trade name and whether its use by any party will or will not cause confusion. In the Registrar of Trade Marks Vs. Hamdard National Foundation, Air 1980 Delhi page 182 a Division Bench of this Court had occasion to consider the same question in relation to name ‘Safi’. The registration of the said word as a trade mark in relation to the products of the respondent in the appeal had been refused by the Registrar of Trade Marks on the ground that it was a generic word. It was held that though it could not be disputed that the word ‘Safi’ was a generic word meaning pure, fine, clear, yet the word ‘Safi’ had by its use by the respondent acquired special meaning and can be distinguished as used for the, goods of the respondent from those of other manufacturers. The Court further felt satisfied that the respondent had made out a case that its trade mark ‘Safi’ was capable of distinguishing his goods from those of others in the trade. The said word had over a course of period become associated with the goods of the respondents.
(24) Again in M/s K.G.Khosla Compressors Ltd. (supra) the plaintiff claimed to be pioneer in the field of air compressors industry in India. The defendant company also used the word ‘Khosla’ and one of the defenses raised was that the word Khosla was part of the name of the promoter of the defendant company and as such they were entitled to use the same. The argument was precisely the same as in the present case that the defendants could not be restrained from using their own name. The argument was turned down by the Court. To the same effect, is the judgment of the Bombay High Court in M/s Bajaj Electricals Ltd. (supra). In the said case also, the defendant claimed that ‘Bajaj’ was their family name and on the basis of the said name they were using the same as a trade mark on their products. The case of the plaintiff was that the trade name of the plaintiff was widely advertised and had gained wide reputation for a number of years. The goods manufactured by the plaintiff as well as the defendant were similar. The class of buyers for the articles manufactured by both the parties and the out-lets from which they were sold were similar/same. An injunction was granted in favor of the plaintiff restraining the defendant from using trade mark ‘Bajaj’ on its products. It was further observed that the defendants intentionally and dishonestly tried to pass off their goods as that of the plaintiff by use of the name ‘Bajaj’.
(25) I have also made reference to the case of Kingston Miller, (supra) where the defendant had the word ‘Kingston’ as part of his name, yet the defendant was restrained from doing business in its trade name of Thomas Kingston and Company.
(26) It follows from this that merely because a particular name is part of the name of the defendant, injunction cannot be refused in favor of the plaintiff who had been using that name much prior to the defendant and had established itself by that name in the trade.
(27) The question, however, remains as to whether the use of the word ‘Prakash’ by the plaintiff as a matter of fact acquired a secondary meaning so as to entitle the plaintiff for an injunction in its favor on the facts pleaded and secondly whether the user of the word ‘Prakash’ in its name by the defendant is bonafide. The plaintiff has pleaded that it was established in the year 1961 and has been carrying on business as transporters for the last more than 30 years. It has more than 3300 offices spread all over the country. It employs a large number of staff and is having extensive business. The amount spent on advertisement and promotion of business of the plaintiff itself runs between approximately Rs.l5 lakhs and Rs.21 lakhs during the previous three years. On the other hand admittedly the defendant company has been incorporated in October 1991 and started business thereafter. It is further pointed out on the basis of material placed on record and particularly the affidavit filed on behalf of the defendant that the defendant company has been floated by ex Directors and senior officers of the plaintiff. In fact, it is not disputed that 43% of the equity in the plaintiff company is still held by those who have floated/promoted the defendant company. The plaintiff’s case is that the group which has floated the defendant company got into a position of minority in the plaintiff company and, therefore, having lost control of the plaintiff company, started same business in the name of the defendant. By using the word ‘Prakash’ in its name the defendant is deliberately and intentionally trying to bite into the business of the plaintiff. The promoters of the defendant company being ex Directors/employees of the plaintiff are in the know of its business secrets and its trade connections and they want to exploit the same. Therefore, it is submitted that the use of word ‘Prakash’ in the name of the defendant is not bonafide. So far as the fact that the defendant has been floated by ex Directors/employees of the plaintiff there is no dispute. Therefore, prima-facie the use of the word ‘Prakash’ in the name of the defendant does not appear to be bonafide. The use of the said word is prima-facie likely to create an impression in the mind of the clients that the defendant company belongs to the same group that is plaintiff’s group, thus causing confusion in the mind of the clients and is likely to affect the business of the plaintiff adversly. The defendant is trying to justify the use of the word ‘Prakash’ on the basis of the fact that the same is part of the name of the promoters of the defendant company who in fact is stated to be the promoter of the plaintiff company itself. However, since the plaintiff company has by the use of word ‘Prakash’ in its name over a long period of time prima-facie acquired a right to use the said name, the defendant can not be permitted to carry on the same business under a similar trade name. Therefore, prima-facie, I hold that the word ‘Prakash’ has acquired a secondary meaning for the plaintiff in the trade on account of its use by the plaintiff over a long period of time and the use of the word ‘Prakash’ in the name of the defendant is not bonafide.
(28) Counsel for the defendant has submitted that his client has already stopped using the disputed logo and has also changed the style and manner of writing the word ‘Prakash’ so as to make it distinctly different from that of the plaintiff. Therefore, on this basis, he submits that the plaintiff has no cause of action any more. At this stage, I am of the view that the use of the word ‘Prakash’ is a dominant feature of the name of the defendant and merely a different style of writing the word ‘Prakash’ by the defendant as compared to the style of writing by plaintiff will not make much of a difference. The use of the word ‘Prakash’ itself is prima-facie offensive and the plaintiff is entitled to an injunction in its favor.
(29) Counsel for the defendant, however, submits that there is no balance of convenience in favor of the plaintiff because the class of customers involved is not likely to get confused or affected by the use of the word ‘Prakash’ in the name of the defendant. As per the trade practice, it is stated that forwarding notes are prepared by qualified persons in the office of the various clients who are big business houses and such persons are able to identify the transporters with whom they want to deal.
(30) However, in view of the nature of the business being identical, coupled with the further fact that even the office of both the parties at least in Delhi are located within close vicinity of each other, it is difficult to rule out the possibility of confusion. As already observed, the use of the word’Prakash’ in the name of the defendant gives an impression even to an educated or qualified person that the defendant company belongs to the same group as the plaintiff. Therefore, I prima facie feel that the balance of convenience is also in favor of the plaintiff and demands that an injunction be granted in favor of the plaintiff to save its business and goodwill, Habib Bank’s case reported in 1989(2) AII.E.R.650 cited by the defendant in support of its case does not help the defendant. The facts of the case are totally different. In Habib Bank’s case, a bank incorporated in Switzerland with word Habib in its name was sought to be restrained in an action for passing off by Habib Bank (Overseas) incorporated in Pakistan from using the words Habib in its operations in England on the ground that the overseas bank had the exclusive right in England to the reputation in the Habib name. The action failed on the ground that the goodwill and reputation of the plaintiff’s branch in England did not become exclusive property of that branch. The plaintiff therefore, could not claim on behalf of the overseas bank, the exclusive right to use the name Habib in respect of banking business in England. The facts of the case in hand are totally different. Here both the parties are engaging in business in the same territories and are in direct competition.
(31) It further follows from the above discussion that unless the plaintiffs right to its trade name is protected the plaintiff is likely to suffer an irreparable loss and injury.
(32) This brings me to the fourth contention of the defendant. The defendant has referred to certain pages from the telephone directory to show that under the category of transporters there are other concerns mentioned therein who use the word ‘Prakash’ with their names. On this basis, it is submitted that the plaintiff can not be allowed to pick on the defendant alone and restrain the defendant from doing its business. This argument to my mind has no force. Merely because no action is taken against certain other parties, it does not mean that the plaintiff is not entitled to take action against the defendant. The other parties may not be affecting the business of the plaintiff. They may be small-time operators who really do not matter to the plaintiff. Therefore, the plaintiff may not chose to take any action against them. On the contrary the plaintiff feels danger from defendant in view of the fact that the defendant’s promoters are the ex Directors/employees of the plaintiff who are fully in the know of the business secrets of the plaintiff. Therefore, the mere fact that the plaintiff has not chosen to take any action against such other parties cannot disentitle the plaintiff from taking the present action. This contention is, therefore, prima-facie without any merit and is rejected.
(33) Now, only the last point raised by counsel for the defendant remains to be dealt with. Great emphasis has been put on the conduct of certain present directors of the plaintiff in wresting control of its management from Mr.S.P.Manchanda who founded the plaintiff. It is not disputed that those in control of the plaintiff and the defendant are the members of the same larger family or a closely related group. It is also not disputed that groups have emerged within that larger family leading to inter se rivalry and tug of war regarding control of management of th this litigation is pending in other courts. It has also been urged that Shri S.P.Manchanda the founder of the plaintiff company has been stabbed in the back and deprived of the position of Chairman of the plaintiff company. Be that as it may, in the present case I feel I am concerned with the legal rights of the plaintiff in protecting its name and goodwill. I have dealt with the matter purely from that angle. Therefore, inter se disputes or pending litigation in other Courts I do not consider relevant.
(34) It has also been mentioned that the present suit is a counter blast to a similar suit pending in Bombay for passing off filed by a sister concern the defendant having word ‘Prakash’ in its name against a sister concern of the plaintiff. I feel that the said suit will be decided on its own merits and pendency of that suit can not be a ground to non-suit the plaintiff before me.
(35) For the same reason, non-disclosure in the plaint about the pendency of the litigation between the family members at Bangalore and the passing off suit at Bombay, can not be fatal to plaintiffs case. The plaintiff has come to this Court on the basis of a specific case claiming an exclusive right in the use of the word ‘Prakash’ in its name in relation to transport business. I have prima-facie found that the plaintiff has such a right. Therefore, the plaintiff is entitled to succeed at this stage.
(36) The result of the above discussion is that the interim order dated 5th December, 1991 is confirmed till the disposal of the suit. I.A. 14519/91 is allowed and I.A. 14690/91 is dismissed. In the circumstances of the case, there will be no order as to costs.
(37) I may note here that the above-view is a prima-facie view of the matter for the purpose of deciding the interim applications and the same will be subject to final decision of the suit.
