Back
2016 Supreme(AP) 214
IN THE HIGH COURT OF JUDICATURE AT HYDERABAD FOR THE STATE OF TELANGANA AND THE STATE OF ANDHRA PRADESH
A. RAJASHEKER REDDY, J.
M/s. Shine Chem Laboratories, A Partnership firm, rep. by its Proprietor M. Dasanjaneyulu – Petitioner
Versus
Standard Reagents Private Limited, Rep. by its MD M. Srinivas – Respondent
C.M.A. No. 784 of 2015
Decided on : 29-04-2016
Advocate Appeared:
For the Petitioner:Ashok Ram Kumar, Advocate.
For the Respondent:Venkatesh Deshpande, Advocate.
Headnote:
Civil Law – Civil Procedure Code, 1908 – Section 151 – Order XXXIX – Rules 1 and 2 – Passing off – Trade Mark – Grant of ad-interim injunction restraining defendant from manufacturing, selling, marketing, advertising, distributing of product Karl Fisher Reagent bearing the plaintiffs trade name Stable 2Y++ Single Solution KF Reagent pending disposal of the suit – Challenging the order passed in I.A. in O.S. by the XVI Additional District Judge and Sessions Judge cum XVI Additional Metropolitan Sessions Judge wherein the injunction petition filed by respondent/plaintiff was allowed and defendant was restrained from manufacturing and selling his product Karl Fisher Reagent under Trade name of Stable 2Y++, pending disposal of the suit – Plaintiff is a Private Limited Company incorporated under Companies Act – It has been doing business of manufacturer of sales of high performance laboratory solvents, reagents, standard solutions and fine chemicals – By using specific proportion of Aromatic Heterocyclic Compound with other raw material as ingredients to produce a Pyridine-free Karl-Fisher Reagent Solution of the strength 5.0 to 6.0 mg/ml of water, with minimum two years stability and as such it is named as Stable 2Y++ Single Solution KF Reagent and is being approved for its stability for a minimum of 2 years from the recognized and authorized laboratories – Plaintiffs trade mark signifies highest standards of quality, innovation, reliability, output and integrity – Held, A perusal of Exs.P3 to P13 and Exs.R2 to R5 goes to show that labels and style of font mentioning as Stable 2Y++ and the colour and logo are also not similar and back ground is also not similar. Besides the logo, the plaintiff is using the word Standard Reagents whereas the defendant is using Shine Chem Laboratories. As far as Single Solution is concerned, it is descriptive word and Stable 2Y++ even according to the plaintiff, is descriptive in nature. The numeral 2 along with Y++ refers to the stability period being 2 years and single solution refers to composition of the solution. The mark Stable 2Y++ Single Solution of the plaintiff does not have any distinctiveness and the descriptive sentence Single Solution KF Reagent cannot be called as a proprietary mark or the trademark. Whether the words Stable 2Y++ has attained secondary meaning regarding the products of the plaintiff has to be gone into in the suit after evidence is let in by both parties – Three elements of passing off action are reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name – In an action for passing off it is usual, rather essential, to seek an injunction, temporary and ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of – Plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in absence of grant of injunction – Accordingly, both points are answered in favour of the appellant – In view of above facts and circumstances, impugned order of Court below is set aside. It is needless to state that Court below shall dispose of suit, after considering the oral and documentary evidence of both sides, without being influenced by any of the observations made hereunder – Appeal is allowed.
1. This appeal is filed challenging the order dated 21.07.2015 passed in I.A.No.658 of 2014 in O.S.No.1067 of 2014 by the XVI Additional District Judge and Sessions Judge cum XVI Additional Metropolitan Sessions Judge, Ranga Reddy District at Malkajgiri, wherein the injunction petition filed by the respondent/plaintiff was allowed and the defendant was restrained from manufacturing and selling his product Karl Fisher Reagent under Trade name of Stable 2Y++, pending disposal of the suit.
2. Defendant in the suit is the appellant herein. The parties hereinafter will be referred to as arrayed in the suit.
The plaintiff filed petition under Order XXXIX, Rules 1 and 2 CPC read with Section 151 CPC for grant of ad-interim injunction restraining the defendant from manufacturing, selling, marketing, advertising, distributing of the product Karl Fisher Reagent bearing the plaintiffs trade name Stable 2Y++ Single Solution KF Reagent pending disposal of the suit. The plaintiff is a Private Limited Company incorporated under Companies Act. It has been doing business of manufacturer of sales of high performance laboratory solvents, reagents, standard solutions and fine chemicals. By using specific proportion of Aromatic Heterocyclic Compound with other raw material as ingredients to produce a Pyridine-free Karl-Fisher Reagent Solution of the strength 5.0 to 6.0 mg/ml of water, with minimum two years stability and as such it is named as Stable 2Y++ Single Solution KF Reagent and is being approved for its stability for a minimum of 2 years from the recognized and authorized laboratories. The words Stable 2Y++ Single Solution KF Reagent describe the produce as to the stability of the produce in the packed bottle for a minimum period of 2 years. The Managing Director of the plaintiff-company made an application to Registrar of Trademarks for registering the brand name of the trade name and same is pending. The plaintiff has been using the said trademark since the year 2005 onwards and no other company in India using the same. The plaintiffs trade mark signifies the highest standards of quality, innovation, reliability, output and integrity.
3. The proprietor of the defendants Company worked in the plaintiffs Company as a Marketing Manager for a period of 7 years from the year 2002-2009. Thereafter, he started a separate business and imitated the label, the trade name of the product Stable 2Y++ Single Solution KF Reagent and packed the product in a similar looking bottle and packing case and selling the same in the open market exhibiting as if the product being sold by the defendant as of his own product similar to that of the plaintiffs product with an intention to create confusion and deception in the minds of the customers and with an ulterior motive to injure his business, reputation and goodwill. That the said action of the defendant came to the knowledge of the plaintiff in the first week of September, 2014 and on that the plaintiff procured a sample of the product manufactured and marketed by the defendant. The act of defendant amounts to gross misrepresentation and passing off of goods branded deceptively in the name of the plaintiffs Company. Hence petition for injunction as noted above.
4. The defendant filed counter denying the allegations in the affidavit filed in support of the petition stating that there cannot be a passing off for a product KF Reagent as the origin inventor was one Mr.Karl Fisher, who is a German Chemist. The KF Reagent itself indicates the person Karl Fisher Reagent. The word Single Solution is a common English word and no one can claim proprietorship over the same. Further the word connotes that there is only one solution as an old process Pyridine which has two solutions. The words Stable 2Y++ Single Solution KF Reagent significantly describes as to the stability of the product in the packed bottle which is for a minimum period of two years. Thus, the trade mark is an indicative of the nature of the prod
