JUDGMENT
S. Mukherjee, J.
1. This is a suit for perpetual injunction for
restraining the use of trade mark “555”, passing of and
rendition of accounts etc. In brief, the case of the
plaintiff is that the plaintiff adopted the trade mark
“555” Along with the device of Swan with a distinctive
colour combination in 1989 for buttons, safety pins,
hooks, eye-lets, fasteners etc. On account of continuous
and long user the plaintiff has acquired proprietary
rights in the above trademark and the above trademark is
generally associated with name of the plaintiff and is
considered as a standard of quality of goods. The
plaintiff is stated to have built up a huge reputation
and good-will in the market in respect of the above
products under the said trade mark. The plaintiff is
also stated to be lawful proprietor of the said trade
mark under class 26. The plaintiff is stated to be first
adopter, originator, author and owner of the copy right
in the labels used for packaging purposes of the
products. The plaintiff is also stated to have large and
extensive sale of products under the said trade mark
throughout the country and is also stated to be spending
substantial amount on the publicity of the trade mark.
2. The plaintiff has filed a statement showing the
annual sale of the products.
3. The plaintiff has further stated that he is the
lawful proprietor of the trade mark and has got exclusive
right to the user thereof. The plaintiff has further
stated that it has been taking actions against the
infringers of such trade mark. It is also stated that
plaintiff filed a suit against M/s. Shruti Fastners Ltd.
bearing suit No. 1273/1997. It is further stated that
vide an order dated 23rd June, 1997, this Court
restrained the defendant in the above said suit from
using the trade mark “555” in respect of buttons and
safety pins. The said suit is said to have been decreed.
4. The defendants as per the allegation of the
plaintiff, were appointed as distributors/dealers of the
plaintiff in the year 1991. In the year 1998, the
dealership/distributorship of the defendant was
cancelled/terminated and thereafter the defendant with
dishonest intention, allegedly, started selling his goods
under a deceptively similar trade mark “Asian 555” with
an identical colour combination, get up and arrangement
of the carton. The plaintiff has stated that the
purchasers and intending purchasers of the products, are
generally the lay public, domestic servants and ladies
which is generally a unwary class of purchasers. The
confusion and deception in relation to such class of
purchaser, is inevitable because of the close and
deceptive similarity of the mark adopted by defendant for
the purpose of passing of its inferior and substandard
goods as the quality goods of the plaintiff. In these
circumstances, the present suit came to be filed.
5. Along with the suit, I.A. No. 9348 of 98 under
Order 39 Rules 1 & 2, was filed and on 15.9.98, an
exparte ad-interim injunction was granted in favor of
the plaintiff. The said application was heard and
thereafter vide order dated 10th August, 2000, this Court
vacated the stay on the ground of pendency of a suit
bearing No. 2098/95 filed by one M/s. Needle Industries
against the plaintiff herein and the plaintiff had not
disclosed this fact.
6. The present application has been filed in view of
certain subsequent developments. It is stated by the
plaintiff that in the suit that was filed by M/s. Needle
Industries against the present plaintiff, initially this
Court had granted adinterim injunction on 29th March,
2000 in favor of M/s. Needle Industries and had
restrained the present plaintiff from using trade mark
“555”. Thereafter, the present plaintiff filed an appeal
against the said order. The said appeal came to be
registered as FAO (OS) No. 115/2000. In the said appeal,
the Division Bench of this Court firstly stayed the
impugned order dated 29th March, 2000, and then
ultimately the plaintiff’s appeal itself has been allowed
by holding that in spite of the fact that M/s. Needle
Industries were holding registered trade mark “555”, but
it had no right to restrain the defendant in those
proceedings (viz the present plaintiff), because for the
last 40 years M/s. Needle Industries themselves were not
using the said trade mark in India, and the said mark was
being used by the present plaintiff continuously for
a substantially long period. Therefore, the present
plaintiff was held to be having a better right than M/s.
Needle Industries.
7. In view of above said subsequent developments, the
present second application under Order 39 Rules 1 & 2 has
been filed thereby seeking injunction against the
defendant.
8. I find from the record that on the earlier
occasion the ad-interim injunction granted in favor of
the plaintiff, had been vacated on the ground that the
plaintiff had concealed the fact that a suit had been
filed against the plaintiff, by M/s Needle Industries and
therefore the right of the plaintiff itself was under a
cloud. However, as on the date of the subsequent
injunction application, which is now under consideration
in the present order, the plaintiff/applicant has
succeeded before the Division Bench in the appeal
preferred by the plaintiff/applicant against the stay
order obtained by M/s Needle Industries vis-a-vis the
plaintiff, and in fact in a way prima facie proved its
right to the trademark ‘555’. Such right in fact has
been found to be on a better footing in favor of present
plaintiff, than the registered owner of the trademark
‘555’ viz M/s Needle Industries.
9. It is not disputed by the defendant that the
defendant had been a distributor of the plaintiff, or
that the plaintiff has been using the said mark for the
last about fifteen years. A comparison of the carton of
the plaintiff with that of the defendant, would go to
show that prima facie there has been a close resemblance
and deceptive similarity between the mark of plaintiff
and defendant. In the absence of any plausible
explanation on the part of defendant as to why it adopted
this mark and in view of the fact that the defendant
itself was distributor of plaintiff for over a period of
time, this appears nothing but a dishonest adoption of
the trade mark “Asian 555” by the said defendant. The
reliance placed by learned counsel for the plaintiff on
1985 PTC 155 (para 44) is well placed. It is settled law
that the interest of the public at large, have to be
protected and that nobody is to be held entitled to sell
his goods as that of someone else.
10. The defendant having been a distributor working
on behalf of the plaintiff, cannot conceivably have any
independent right to use the said mark.
11. Earlier the defendant had made out a defense by
relying upon the circumstance of M/s Needle Industries
being the holder of the registered mark “555”, but that
defense does not survive after the Division Bench
judgment in FAO(OS) 155/2000.
12. Moreover in a case of dispute between the parties
before this Court where the plaintiff is pressing for an
action of passing off, such as in the present case, the
fundamental aspect is as to who is the prior user out of
the two parties before the Court. Learned counsel for
the plaintiff has drawn my attention to the judgment of
the learned Single Judge of this Court reported as
Coolways India v. Princo Air Conditioning and
Refrigeration 1993 (1) ALR 401 where Hon’ble D.K. Jain, J.
has come to the conclusion that registration of trade
mark in the name of a third party, is of no consequence
and the dispute between the parties who are before the
Court, is to be adjudicated upon the position inter-se
themselves. That decision has taken into consideration
two other decisions Capital Plastic Industries v.
Kapital Plastic Industries (1989-PTC-98) and Capital
Plastic Industries v. Happy Plastic Industries 1988 PTC
182.
13. I find reliance of the plaintiff on the Division
Bench judgment of this Court in M/s. Kumar Electric
Works v. Anuj Electronics 1990 PTC 26, and Sharp L.P.G.
Pvt. Ltd. v. Seiko Engineers 1988 (1) ALR 72 to be well
placed.
14. The defendant has then tried to rest his case on
the point that though the appeal has been disposed of in
favor of the plaintiff herein, but the suit by M/s
Needle Industries is still there and therefore the second
injunction application should not be entertained. In
this connection, reference need only be made to 1984 FSR
304 and Bengal Waterproof Ltd. v. Bombay Waterproof
Mnfg. Co. 1997 PTC (17) 98 , wherein an injunction was
granted on the second injunction application.
15. Towards the end of his submissions, the learned
counsel for the defendant also contended that defendant’s
carton is different from the plaintiff’s, since defendant
is using prefix “Asian” to mark “555” and therefore the
mark of defendant is not deceptively similar to that of
the plaintiff. The said submission runs in the teeth of
the settled position under law, and as held in the catena
of cases. The plaintiff’s reliance upon K.R. Chinna
Krishna Chettiar v. Sri Ambal & Co., and Anr. is well placed.
16. Likewise the reliance by the defendant upon Ved
Prakash v. Samir Kumar and Ors. 1994 III AD (Delhi)
1273 is mis-conceived. Rather the decision also holds
that key factor in the case of trade mark matters, is the
user aspect.
17. In the present case while dealing with the
plaintiff’s appeal against M/s Needle Industries, the
Division Bench has come to a finding that M/s Needle
Industries Limited has never use the trade mark “555”
during the last forty years. At-least for the purpose of
prima facie consideration of the matter, at the present
stage of second injunction application, that finding
regarding M/s Needle Industries not using the mark “555”,
is crucial.
18. I find that plaintiff has made out the
requirements for grant of ad-interim injunction in as
much as there is a strong prima facie case in favor of
the plaintiff, and also both balance of convenience and
irreparable hardship aspect is in favor of the plaintiff
and against the defendant.
19. In view of the above, I direct that till the
disposal of the present suit, the defendants/respondents,
their servants, agents, dealers,
representatives and all other persons acting on their
behalf, are restrained from manufacturing and/or
marketing, or offering for sale or otherwise dealing in
buttons and safety pins hooks, eye-lets, fasteners etc.
under the Plaintiffs trade mark “555” or any other
deceptively similar mark such as the infringing mark
“ASIAN 555”.
20. The observations made in this order, are limited
to only prima facie consideration of the matter for the
purposes of the prayer for interim injunction.
21. IA 3873/2002 stands disposed of.