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IN THE HIGH COURT OF BOMBAY
B.N. Srikrishna, J.
Poddar Tyres Ltd. .... Plaintiffs.
Versus
Bedrock Sales Corporation Ltd. and another .... Defendants.
Notice of Motion No, 264 of 1992 in Suit No. 416 of 1992, decided on 20/21-7-1992.
Advocates appeared :
Iqbal Chagla with Mrs. Zia Mody i/by M/s. Mehta Girdharilal, for the plaintiffs.
S.S. Rahimtoola with Ms. Amin Wandrewala i/by Law Charter, for the first defendants.
Jimmy Awasia i/by Manoj Bhatt, for the second defendants.
Held-Prima facie strong evidence of infringement and/or passing off action existing-Delay by itself not fatal.
Order 39, Rules 1 and 2-Injnnction in infringement action-Whether plaintiff entitled to-Law in regard to granting of injunction in such case stated.
The position in law appears to be that a plaintiff is entitled to an injunction against use of the plaintiffs mark in the defendants trading style if the use leads to its application by others to the defendants goods. The plaintiff is entitled to an injunction against such use, since, if the trade mark is an inherently distinctive one, most customers will assume that any company with that mark in its name is either an offshoot of the owner of the mark or that owner having changed its name.
Thus plaintiff would be entitled to injunction if customers are shown likely to be misled by action of defendant.
Order 39, Rules 1 and 2- Trade and Merchandise Marks Act, 1958Section 28-Passing an infringement action-Protection from-Protection afforded by law not for deceived customer, but rival trader to prevent dishonest trading.
Where the parties are engaged in "common or overlapping fields of activity" competition will take place between them, and, in such an event, there is inherent probability of confusion or deception. In an infringement or a passing-off action, protection is afforded not for the deceived customer but the rival trader, which is to prevent “dishonest trading".
Order 39, Rules 1 and 2.
See Trade and Merchandise Marks Act, 1958, Section 28,
Order 39, Rules 1 and 2-Trade and Merchandise Trade Marks Act, 1958 Section 28-Registered trade mark belonging to plaintiff-Infringement passing off actions-Consideration of balance of convenience-Only in unusual circumstances court would go into the aspect of balance of convenience in teeth of fact that plaintiffs ate registered proprietors of trademarks.
TRADE AND .MERCHANDISE MARKS ACT, 1958
Section 28.
See C. P. C. 1908, Order 39, Rules 1 & 2.
Section 28-Motion for interlocutory injunction and taken out by a person having registered trade mark in his name-Consideration of validity of registration of trade marks by Court.
It is not the practice of the Court to consider the validity of the registration of a trade mark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While a mark remains on the register (even wrongly) it is not desirable that other should imitate it.
Section 34-Exception to Section 28-Conditions for giving benefit of this exception.
Section 34 of the Trade and Merchandise Marks Act is an exception to the general rule in Section 28. But before giving the benefit of this exception to defendant the Court must be sure that the defendant had adopted the offending name bona fide and honestly.
B.N. SRIKRISHNA, J.:---This Notice of Motion has been taken out by the plaintiffs for the following reliefs :-
"(a) that, pending the hearing and final disposal of the suit, the defendants No. 1, by themselves, their servants and agents, be restrained by an order and injunction of this Hon'ble Court;
"(i) from infringing the plaintiffs' registered trade marks (Ex. 'A' to the plaint) and/or passing off the defendant No.1's business as and for the business of the plaintiffs by the use of the word "Bedrock" as part of the 1st defendants' corporate name; and
(ii) from infringing and/or passing of these 1st defendants' goods as and for the goods of the plaintiffs by the use of the word "Bedrock" in connection with or in respect of goods manufactured by them;
(b) that, pending the hearing and final disposal of the suit, the defendants No.1, by themselves, their servants and agents be ordered and directed to deliver up for destruction all their letter heads, invoices, price lists, cash memos, brochures, advertisements, etc. articles and effects bearing the impugned word "Bedrock",
2. This notice of motion illustrates the homely truth that greater the consanguinity between parties, more bitter is the litigation between them, fraternal feuds being the fiercest.
3. The plaintiff are a company incorporated under the Companies Act, and carry on, inter alia, business of manufacture of rubber tubes and tyres. The plaintiff-company was originally incorporated as a private limited company on 13th February, 1981, but became a "deemed public company", within the meaning of section 43-A of the Companies Act, in or about June, 1988, as a result of increase in turnover. The plaintiffs claim to be leading manufactures of rubber tyres and tubes with a share of 10% of the Indian market in those products. The plaintiffs claim that they have a monthly turnover of about Rs. 3 crores and a very valuable goodwill in their trade marks, containing the word "Bedrock" and other combinations of the said name as also a distinctive logo. The plaintiffs claim to be using the trade mark "Bedrock" since 1964, which is registered since 1973.
4. At Exhibit 'A' to the plaint, the plaintiffs have enclosed a statement of their Registered/ Unregistered Trade Marks and the class in respect of which their trade marks have been registered. A perusal of this statement would show that the word "Bedrock" forms prominent part of the registered trade marks except two, which are logos with the letter 'B' in the centre. Seven out of the ten registered Trade Marks are in respect of Class 12 (Rubber Tyres and Tubes for land vehicles, and accessories, spare parts for repairs), two in respect of Class 17-(Plastic goods) and one in respect of Class 1 (Adhesive for Rubber repairing compositions for Tyres Tubes for land vehicles).
5. The trade mark "Bedrock" was originally owned by a partnership firm, known as "Bedrock Tyres and Rubber Company". On or about 16th July, 1979, a private limited company, known as "Bedrock Tyre and Rubber Co. Pvt. Ltd.", was admitted as a partner of the said firm. Thereafter, all the other partners retired, leaving the ownership of all assets, including the trade marks to Bedrock Tyres and Rubber Co. Pvt. Ltd. The plaintiffs have used all the said trade marks from 1983 pursuant to a permitted user agreement between the plaintiffs and Bedrock Tyre and Rubber Co. Pvt. Ltd. Bedrock Tyre and Rubber Co. Pvt. Ltd., were subsequently re-named as Bedrock Ltd., who are the second defendants in the suit.
6. Pursuant to a Deed of Assignment dated 8th March, 1986, as amended by the two Deeds of Correction and Confirmation dated 31st December, 1986 and 23rd February, 1989, the plaintiffs became the proprietors of all trade marks, which are indicated in the statement at Exhibit 'A' to the plaint, including the trade mark "Bedrock". The plaintiffs moved the Registrar of Trade Marks and had their name entered as proprietors of the trade marks. The plaintiffs are, thus, t
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