Bhavnesh Mohanlal Amin vs Nirma Chemicals Works LTD.

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2005 Supreme(SC) 1442

2005(7) Supreme 513
Supreme Court of India
(From Gujarat High Court)
Arijit Pasayat & C.K. Thakker, JJ.
Bhavnesh Mohanlal Amin & Anr. —Appellants
versus
Nirma Chemicals Works Ltd. & Anr. —Respondents
Civil Appeal No. 6622 of 2005
(Arising out of SLP (C) No. 12120 of 2005)
Decided on 7-11-2005
Counsel for the Parties :
For the Appellants : Dr. Rajiv Dhavan, Sr. Advocate, Ms. Pratibha M. Singh, Sunil Fernandes, Saurabh Mishra, Pathik Acharya and Maninder Singh, Advocates.
For the Respondents : Dushyant Dave, Sr. Advocate, Ramesh Singh, P. Venugopal and Ms. Surekha Raman, Advocates for M/s. K.J. John & Co. Advocates.

Headnote:Trade and Merchandise Marks Act, 1958—Section 111 corresponding to Section 124 of Trade Marks Act, 1999—Plaintiff-respondent claiming to be owner of trademark NIRMA in business of manufacturing and marketing various consumer products i.e. soap, detergent powder, detergent cakes, cleaning preparations etc.—Trade mark NIMA was also got registered in respect of various classes like spices, match box and other consumer items—Defendant-appellant was alleged using word NIMA for their product flour Mills—Interim injunction restraining defendant from using mark NIMA granted by trial Court—High Court upheld order in appeal—Appeal—Factors to decide an action of passing off on basis of unregistered trade mark—Appellants had already moved for action in terms of Section 111 of the Act—Counsels agreeing that early disposal of matter would be in the interest of parties and bar to jurisdiction in terms of Section 111 of the Act not to be raised—Interim order to be varied that without leave of trial Court respondent shall not initiate any action for use of mark NIMA by appellant till disposal of suit.
       Held : In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (JT 2001 (4) SC 243), this Court laid down certain factors in order to decide an action of passing off on the basis of unregistered trade mark. It has held that factors like nature of the marks i.e. whether the marks are word marks or label marks, the degree of resembleness between the marks phonetically similar and hence similar in idea, the nature of the goods in respect of which they are used as trade marks, the similarity in the nature, character and performance of the goods of the rival traders, the class of purchasers who are likely to buy the goods bearing the marks they require, the mode of purchasing the goods or ‘placing orders for the goods and any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks are to be considered. (Para 15)
       It is pointed out by learned counsel for the respondents that since the appellants have moved for action in terms of Section 111 of the Trade and Merchandise Marks Act, 1958 (in short the ‘Old Act’) corresponding to Section 124 of the Act there is no scope for proceeding in the suit further. Learned counsel for the parties agreed that an early disposal of the matter would be in the interest of the parties. Learned counsel for the appellants fairly stated that the question relating to bar of jurisdiction in terms of Section 111 of the Old Act corresponding to Section 124 of the New Act shall not be raised and the trial Court would be free to proceed with the suit. (Para 19)
       On the peculiar circumstances, we feel it would be desirable to vary the interim order to the extent that there shall not be stay of operation of the High Court’s order but without leave of the trial Court the respondents’ shall not initiate any action for user of the mark NIMA by the appellants till the disposal of the suit. (Para 21)

Judgment

Arijit Pasayat. J.—Leave granted.

2. Challenge in this appeal is to the legality of the judgment rendered by a learned Single Judge of the Gujarat High Court upholding the order passed by City Civil Judge, Ahmedabad in Suit No. 1952/1999 granting ad interim injunction restraining the appellants from using the mark “NIMA”.

3. The background facts giving rise to the appeal essentially are as follows:

4. The respondents-original plaintiffs filed civil suit No. 1952/1999 for a declaration and permanent injunction, projecting the factual position as follows:-

5. The plaintiff No.1 is a Company incorporated under the provisions of the Companies Act, 1956 and plaintiff No.2 is a Trust registered under the provisions of the Indian Trust Act, 1882. Plaintiff No.1 is the owner and proprietor of the trade mark NIRMA and the same trade mark has been assigned in favour of plaintiff No.1 by way of assignment deed. The assignment deed is filed for registration under the provisions of the Trade Marks Act, 1999 (in short the ‘Act’) and plaintiff No.1 is engaged in the business of manufacturing and marketing various consumer products in India and elsewhere.

6. The plaintiff’s predecessor-in-title started manufacturing and marketing detergent powder, detergent cake and other products in India and elsewhere. The word NIRMA has been coined and invented from the name of NIRUPAMA, daughter of Smt. Shantaben K. Patel, a partner of the said partnership firm and as such trade mark NIRMA has been registered. The same is continuously used in various packing materials for different products i.e. soap, detergent powder, detergent cake, cleaning preparations, etc.

7. Trade mark “NIMA” is also used and got registered under the Act in respect of various classes like spices, match box and other consumer items. Plaintiff’s products are sold throughout India and the name NIRMA has acquired reputation and goodwill in the market. The plaintiffs have applied for registration of similar names NIRMAL, NIMA and also applied for exclusive right to use of the said words. Plaintiffs have got registration of mark NIMA. The plaintiff No.1 is registered at Registration No. 422839 in respect of the goods covered in Class 7 and, therefore, the use of the same or any other identical or deceptively similar name by any other person, more particularly by the defendants amounts to infringement to the plaintiff’s trade marks. Trade mark NIMA is also registered bearing Registration No. 396185/B of 1982.

8. It is alleged that the appellants-defendants have adopted and started using the word NIMA for their product flour mills. Therefore, Notice was served on 22.9.1998 calling upon the defendants to stop using the trade mark NIMA. The defendants replied to the Notice on 7.10.1998. Again, another notice was served to which there was no reply. According to the plaintiffs, by using the word NIMA the defendants are creating confusion and deception in the mind of general public because the word NIMA is identical and deceptively similar to the plaintiff No. 1’s very popular trade mark NIRMA. However, the defendants declined to stop using the word NIMA for their products. Under these circumstances, the plaintiffs filed the aforesaid Civil Suit.

9. The trial Court after hearing the parties passed an order on 11.2.2000, whereby the appellants were restrained by an order of temporary injunction from manufacturing and marketing their products i.e. flour mills (Ghar Ghanti) by using the word NIMA till hearing and final disposal of the suit.

10. Against the aforesaid order the appeal was filed before the Gujarat High Court by the original defendants. As noted above the High Court dismissed the appeal.

11. The High Court referred to several decisions of this Court and various High Courts and held that the trial Court was justified in granting ad interim injunction in favour of the plaintiffs. It came to the following findings:

“From the above discussions, it is clearly established that the plaintiffs h

Click Here to Read the rest of this document

2005 Supreme(SC) 1442

Cases Referred (3)