IMPORTANT POINT
The Trial Court has rightly granted temporary injunction restraining appellant-defendant to use Mahendra and Mahendra which will cause irrepairable prejudice to plaintiff-respondent who have established prima facie case of "passing off" & (balance of convenience).

Headnote:(i) Trade and Merchandise Marks Act, 1958-Sections 105(c) and 106(2)(c)-Suit for passing off-Reliefs available-Plaintiff s prayer for interim injunction-C.P.C. Order 39, Rules 1 and 2-Principles laid down in case law (Copyright Act, 1957-Section 29(2) r/w 55).
       Held : Without intending to be exhaustive some of the principles which are accepted as well settled may be stated thus; that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factor creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others. (Para 16)
       (ii) Civil Procedure Code, 1908-Order 39 Rules 1 and 2-Interim injunction in suit for permanent injunction-Plaintiff earlier using Mahendra & Mahendra-Later used Mahindra & Mahindra-Got it registered under Class 12 of Trade & Merchandise Marks Act, 1958-Defendant in 1996 starting Mahendra and Mahendra Paper Mills Ltd.-Prospectus-Objected to by plaintiff-Non-stoppage despite notice-Prayer for interim injunction-Prima facie case of earlier use, registration, possibility of passing off-Irrepairable loss if defendant is allowed to use it-Balance of convenience in favour of plaintiff-High Court granting interim injunction, confirmed in appeal-Appeal against to Supreme Court-Whether on the facts and in circumstances of the case, the High Court committed an error in granting the plaintiff s prayer for interim injunction? (No)-Appeal dismissed with costs.
       Held : Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word "Mahindra" and "Mahindra & Mahindra" in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business of trade circles. People have come to associate the name "Mahindra with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs group of companies. Such user may also effect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs claim of passing-off action against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial Court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of Mahendra or Mahendra & Mahendra for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned single Judge. On the discussions made in the preceding paragraphs and for the reasons noted therein, the orders passed by the High Court do not call for interference. It is needless to say that the observations made in this judgment are only in relation to the interim order. Therefore, the appeal is dismissed with costs. Hearing fee assessed at Rs. 15,000/-. (Paras 24 & 25)

JUDGMENT

D.P. Mohapatra, J.-Leave granted.

2. The interim order passed by the learned single Judge of the Bombay High Court injuncting the defendant from using the name "Mahendra & Mahendra" in his business establishment, which order was confirmed by the Division Bench of the Court, is under challenge in this appeal filed by the defendant.

3. Mahindra & Mahindra Ltd., the respondent herein, instituted a Suit No.4007 of 1998 in the Bombay High Court seeking a decree of permanent injunction against Mahendra & Mahendra Paper Mills Ltd., the appellant herein, restraining it from using in any manner as a part of its corporate name or trading style the words "Mahendra & Mahendra" or any word which is deceptively similar to "Mahindra" and/or Mahindra & Mahindra". In the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar terms.

4. The case of the plaintiff, sans unnecessary details, is that it is a Company incorporated and registered under the Indian Companies Act, 1913 and is an existing company under the Companies Act, 1956. It was incorporated in October, 1945 with the name "Mahendra and Mohammed Ltd.", which was subsequently changed to "Mahindra & Mahindra Ltd." on 13th January, 1948. It is the case of the plaintiff that the said company is a flagship company of Mahindra group of companies in which are included 15 other companies, namely:

1. Mahindra & Mahindra Financial Services Ltd.

2. Mahindra Exports Ltd.

3. Mahindra Steel Services Centre Ltd.

4. Mahindra Fort India Ltd.

5. Mahindra Applied Systems Technology Ltd.

6. Mahindra Sintered Products Ltd.

7. Mahindra Engineering & Chemical Products Ltd.

8. Mahindra Network Services Ltd.

9. Mahindra Information Technology Systems Ltd.

10. Mahindra Realty and Infrastructure Developers Ltd.

11. Mahindra USA Inc. USA.

12. Mahindra Hellenic Auto Industries S.A. Greece.

13. Mahindra British Telecom Ltd.

14. Mahindra Holdings & Finance Ltd.

15. Mahindra Acres Consulting Engineerings Ltd.

5. The further case of the plaintiff is that the word "Mahindra" is its registered trade mark bearing Registration No.338997, in respect of the goods in Class 12 of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act ). According to the plaintiff, the word "Mahindra" is not only a registered trade mark but forms the dominant and significant part of the plaintiff and other companies of the group. The companies carrying the name "Mahindra" are engaged in industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors, motor spare parts, farming equipments, chemical, hotels, real estate, exports, computer software and computer systems etc. The annual turnover of the plaintiff and some of its group companies exceeds Rs. 3,000 crores. The annual expenditure for advertisements and market development for sales promotion by the plaintiff and its group of companies is about Rs. 9 crores. The plaintiff has averred that the name and trade mark of "Mahindra" is extremely popular in India and is associated with the products and services of the plaintiff. It was further averred that the Mahindra group of companies have a nation-wide network of selling and distributing agents. The name and trade mark "Mahindra" is prominently used and displayed on all its products as also promotional materials. On account of high quality of the products manufactured and sold by the plaintiff, as also high quality of products and services of other group companies, the plaintiff asserts, that the name and trade mark of "Mahindra" have come to be known exclusively with the plaintiff and its group of companies and have acquired tremendous reputation and goodwill among members of public throughout the world including India.

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2001 Supreme(SC) 1585

IMPORTANT POINTThe Trial Court has rightly granted temporary injunction restraining appellant-defendant to use Mahendra and Mahendra which will cause irrepairable prejudice to plaintiff-respondent who have established prima facie case of "passing off" & (balance of convenience).

Cases Referred (5)

IMPORTANT POINT
The Trial Court has rightly granted temporary injunction restraining appellant-defendant to use Mahendra and Mahendra which will cause irrepairable prejudice to plaintiff-respondent who have established prima facie case of "passing off" & (balance of convenience).