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IN THE HIGH COURT OF BOMBAY
S.N. Variava, J.
M/s. Eagle Potteries Pvt. Ltd..... Petitioners.
Versus
M/s. Eagle Flask Industries Pr. Ltd. and another.... Respondents.
Miscellaneous Petition No. 16 of 1988, decided on 10-12-1992.
Advocates appeared :
J.I. Mehta with Virendra Tulzapurkar and S.M. Shah i/b Gordhandas Fozdar, for the petitioners.
T.N. Daruwalla with Nikhilesh Panchal i/b. Jehangir Gulabbhai Bilimoria Daruwalla, for the 1st respondents.
It includes goods which are commonly used as substitutes or alternate for one another. Burden is on applicant for proof of non-user. Held, discretion has to exercise as favour of respondent.
The respondents have been manufacturing variety of goods, viz., thermos flasks, thermowares which would include jugs, casaorolles, cups, mugs, trays, water containers, ice boxes and lunch boxes. All these are used for storing and serving food, beverages and water. They are all goods which can be and are often manufactured by the same person. They are all goods which would be sold through the same trade channels. These are goods which can only be used in conjunction with crockery, cutlery, earthenware and pots and pans. There can be no doubt that a common man seeing these goods with the brand Eagle on crockery or porcelain ware or earthen ware is likely to be deceived into believing that they all emanate from the same Company. Considering that the source, the trade channel and use are all same, in my view, these are goods of the same description. So far as glass ware is concerned. Respondent No. 1 have shown that they have in fact been manufacturing glass refils, thermos flasks and selling these refils separately. They have, therefore, shown continuous manufacture and use of glassware. In Courts view under these circumstances, the discretion which the Court obviously has under Sections 46 and 56 must necessarily be exercised in favour of the 1st Respondent.
2. The facts are as follows :
In 1954 one Shivji Co., which was a partnership firm of the present Directors of the 1st respondents entered into an Agreement with one Eagle Bottle Manufacturing Co. Pvt. Ltd., of Japan. Pursuant to this Agreement EBMC was incorporated in India. The shareholdings of that Company was owned 1/3rd by Shivji Co., 1/3rd by Sale Mohamed Padamsee (a partnership firm) and 1/3rd by Eagle Bottle Manufacturing Company.
It would appear that on 11th December 1954, an exhibition of pottery and glass was held. In that Sale Mohamed Padamsee Co., had displayed glassware and enamelware. This is shown by an advertisement in the Times of India which is annexed as Ex. `A1' to the Affidavit-in-Sur-rejoinder dated 2nd April 1992. At this time, Shivji Co., had also displayed vacuum flasks under the brand name "Eagle".
On 9th October 1956 Eagle Vacuum Bottle Manufacturing Co. Pvt. Ltd. (for short hereinafter referred to as EVBMCo.) was incorporated. The Corporate Name "Eagle" was shown in a logo having an Eagle perched on a Globe with the word "Eagle" running through the Globe.
The pottery and glass exhibition was again held on 17th December 1956. Again Sale Mohamed Padamsee Co. exhibited its glass and enamelware. This time in the Times of India (of that date) there was an advertisement showing that Eagle vacuum bottles were being manufactured in India.
On 12th May 1958 EVBMCo. registered two Trade Marks with the Eagle brand device in Class 21 under No. 185010. On 18th November 1959, the said EVBMCo. also registered Trade Mark No. 193366 again consisting of the device of Eagle with the word "Eagle" in Class II. This was for "ice safes installations in heating and cooking in Class II".
On 22nd August 1966 the said EVBMCo. got registered the impugned mark in Class 21 for "Thermally insulated containers for food, water and beverages; glassware, porcelainware and earthenware included in class 21". This mark consists of the device of a head of Eagle with the word "Eagle" written underneath it. On the same day, i.e., on 22nd August 1966, the said EVBMCo. also got registered the same mark under No. 237135 in Class II for "Installations for heating, cooking and cooling ice safes".
By an Order dated 7th July 1976 passed in Company Application No. 15 of 1974 in Company Petition No. 57 of 1976, the said EVBMCo. was amalgamated with one Topaz Glass Private Limited and the name was changed to Topaz Glass Private Limited.
On 17th May 1978 pursuant to an Order of the Registrar of Company dated 22nd May 1977, the name of Topaz Glass Private Limited was changed to Eagle Flask Pvt. Ltd.
3. The petitioner Company was incorporated on 18th August 1982. The petitioners claim that they adopted the Trade Mark "Eagle" and the device of Eagle for both China ware and pottery in August 1982. They claim that they have been using this mark on bone China ware and pottery since that date. The sales figures disclosed by the petitioners are as follows :
Year Basic value
1983-84 2,93,907.90
1984-85 28,82,716.00
1985-86 56,92,385.96
1986-87 83,85,226.12
upto Feb. 1988 60,40,635.15
4. At this stage it is relevant to note that the mark of the petitioners consist of a "Flying Eagle" with the words "Eagle Potteries" underneath it in a semi-circular fashion and the words "bone China" in the semicircular. At this stage, it may be noted that this device and mark prima facie appear quite similar to t
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