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2000 Supreme(AP) 868
Andhra Pradesh High Court
Judges : G.BIKSHAPATHY
Shalimar Chemical Works Ltd - Appellant
Versus
Surender Oil and Dal Mills, - Respondent
Decided On : 11-21-00
Headnote:Trade & Merchandise Marks Act, 1958 - Sections 28, 29, 106 - Trade Mark - Infringement - passing-off Action - when once infringement alleged not necessary that mark should be deceptively confusion in consumers minds, it constitutes sufficient violation of trade mark or infringement of registered trade mark.
Held : In case of passing-off goods, the person who is using a mark at the earliest point of time is considered on a higher footing than the later person. But, in case of infringement of trade mark, once a trade mark is registered under the provisions of the Act, its validity cannot be challenged except in accordance with law or the right to use that trade mark cannot be objected.
The plaintiff in a suit has to prove that not only his trade mark is infringed by a person, but the said person is using the mark in the course of his trade which is identical with or deceptively similar to the trade mark of the plaintiff in such a manner as to render the use of the mark likely to be mistaken as the registered trade mark.
In all cases of passing-off action additions, get-up or trade-dress might be relevant to enable the defendant to escape, but in infringement cases, the said facts do not assume relevance. Even though there is dissimilarity in the marks used by the appellant and the respondents, but, inasmuch as the appellant is the registered owner of the trade mark shalimar , it is entitled to use the same to the exclusion of others and the rectification proceedings were also not issued by the respondents. It is also not the case of the respondents that they have filed an application for registration of the trade mark.
appellant has been marketing coconut (oil) under the registered trade name shalimar and the respondents are using the name shalimar for marketing Sun Flower edible oil. Though the products are different, yet the appellant has a registered trade mark and it is entitled to use the same for any edible oil. It is natural that when once the name is well known for a particular product, the consumers would tend to purchase the product of that company and it is likely to create confusion in the minds of the public since the name shalimar is used by both the appellant and the respondents. Even though the respondents are marketing edible oils, yet, the consumer would be under the impression that it is manufactured by the Shalimar Chemicals and not by the respondent-company, more especially when the trade mark was registered.
The lower Court has completely missed the provisions of the Act and has come to an erroneous conclusion that there was no infringement of the trade mark. The originals of Exs. A1 to A5, which are marked in this Court, would clearly indicate that the trade mark shalimar has been registered with the appropriate authorities and it is valid and the same is in operation till today. On the other hand, the respondents did not have any registration at all even till today nor any rectification proceedings were initiated by them. Therefore, the appellant is entitled to use the trade mark not only for the coconut oil which is being marketed throughout, but for any other edible oil. The appellant is entitled to use the same to the exclusion of others unless the rectification proceedings are initiated.
( 1 ) THIS appeal is filed against the judgment and decree of the learned III Addl. Chief Judge, City Civil Court, Hyderabad in O. S. No. 1 of 1995 dated 28-9-1998. The appellant is the plaintiff in the suit. The suit was filed seeking permanent injunction restraining the defendants from infringing the registered trade mark shalimar of the plaintiff by selling; marketing or offering for sale edible oil products bearing the name shalimar on containers, labels, wrappers or using any name identical or deceptively similar to the plaintiff s trade mark and for connected reliefs.
( 2 ) IT is the case of the appellant that it is a company, incorporated under the Companies Act. , 1956, which has been carrying on the business of manufacturing and trading of high grade coconut oil used for cooking as well as manufacturing of various toilet products under the distinctive trade mark shalimar . The said trade mark was duly registered under Class 3 and Class 29 under the Trade and Merchandise Marks Act, 1958 (for brevity, the Act ). Class 29 was registered on 5-5-1988 with registration Nos. A. 490518 and B. 490519 and Class 3 was registered on 13-11-1985 with registration No. C. 445446b. The trade marks so registered are valid and subsisting. The said trade mark, also being a piece of artistic works, was registered under the Copyright Act, 1957.
( 3 ) THE appellant-company is one of the pioneers in India in the field of manufacturing and marketing of coconut oil not only for toilet purpose but also for other purposes. The appellant-company is in this business since 1945 and the trade mark shalimar thus became a distinctive identification of the appellant s goods among the public. It has acquired considerable good-will and reputation and thus it has become a household mark in respect of the product of the appellant. It has been effecting good amount of sales of the products. The advertisement has been taking place through various media such as Televisions, Newspapers, Magazines, Calendars, Diaries etc. Thus, by virtue of registration, the appellant became entitled to use the said trade mark exclusively and no other person is entitled to use the said trade mark shalimar in any form, which would amount to infringement of appellant s registered trade mark shalimar and the passing off the goods.
( 4 ) THE respondent-firms are carrying on the business of manufacturing and selling edible oils and have been illegally and unlawfully using the name shalimar in relation to their edible oils with the object of misleading and confusing the members of the public and making them to believe that the said Sun Flower oil was a product manufactured by the appellant. Thus, the name shalimar was intentionally used by the respondents to deceive the consumers. It is also stated that the respondents do not have any registered trade mark nor did they take any steps for rectification as per the provisions of the Act. Having come to know that the respondents have been using the name shalimar and marketing their edible oils, the appellant made representations in the business circles and yet, the respondents were, carrying on their business without any restraint. It is the case of the appellant that the respondents are not entitled to adopt the name shalimar on the edible oil product manufactured and marketed by them. Thus, by using the name shalimar , the respondents have infringed the registered trade mark. It is also the case of the appellant that the mark shalimar was registered in respect of edible oils being the goods included in Class 9 of Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 made under the Act and there is every likelihood that the consumer would be confused believing that it is a product of the appellant-company. Therefore, the suit was laid seeking permanent injunction restraining the respondents from using the registered trade mark or any other trade mark deceptively similar to the appellant
