JUDGMENT - BOBDE S.A., J.:---This Notice of Motion is taken out by the plaintiffs for an injunction restraining the defendants from passing of, in the course of trade, their goods as those of the plaintiffs by the use of the trade mark SIA. The plaintiffs grievance arises mainly because it uses the word SIA which is prominently displayed on its shop and also on its invoices. The plaintiffs trade in costume jewellery i.e. imitation jewellery which is sold under the trade name SIA, which is also the name given to their shop. The defendants sell dress materials and sarees in a shop bearing the name SIA. The plaintiffs claimed to have started using the name SIA from the year 1995 and the defendants adopted sometime in December, 2000. The photograph of the plaintiffs shop is at Exhibit "H" to the plaint and the photograph of the defendants shop is at Exhibit "K" to the plaint. In both shops the name SIA is prominently displayed.

2. The plaintiffs application for registration of the trade mark SIA is pending. Plaintiffs therefore only claim an injunction against passing off. The test of passing off has been stated by the Court in various judgments. The principle was succinctly stated in an early case i.e. (The Clock Ltd. v. The Clock Hotel Ltd.)1, 1936(53) R.P.C. 269, as follows:---

"The principle is this, that no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man."

The question therefore, is whether the defendants are passing off their goods as those of the plaintiffs by the use of the trade mark SIA on their shop.

3. It is important to note in this case that neither the plaintiffs goods nor the defendants goods bear the trade mark SIA. Therefore, the likelihood of confusion must be judged solely on the basis of the defendants having commenced trade in a shop which prominently displays the name SIA, which is also displayed on the plaintiffs shop.

4. Dr. Tulzapurkar, the learned Counsel for the plaintiff referred to its sales figures at Exhibit "D" to the plaint, from which it appears that the plaintiff has been doing substantial business in the year 2000-2001. Sales figures of the plaintiff are in the region of Rs. 2,22,53,779.00. The sales figures have been more than a crore from 1998. These figures shown at Exhibit "P" to the rejoinder are certified by the Chartered Accountants. The plaintiffs appear to have spent an amount of Rs. 3,93,000.00 on advertisement. The plaintiffs business was originally owned by a partnership firm and is now owned by the plaintiffs company. Prima facie, it appears, from the above material that the name SIA is associated with the plaintiffs.

5. Mr. Daruwalla, the learned Counsel for the defendants, submitted that the word SIA is a name by which the Goddess Sita is known and is a common name in India. There cannot be said to be distinctive as is understood in law. He submitted that therefore the plaintiffs are not entitled to maintain this action. There is no doubt that the word SIA is so common that it is difficult to hold that it is adapted to distinguished. However, it cannot be said that it is inherently incapable of acquiring distinctiveness. There are instances in the trade mark registration where another similar trade mark SEETA has been registered as a trade mark. In any case, it seems to be a settled position in law that an action against passing of can be maintained against the trade mark, but is distinctive. The well known passage from Shavakshas Treatise on the Trade and Merchandise Marks Act, 1958, 3rd edition, reads as follows:---

"It is, therefore, possible for a mark to be distinctive and yet not adapted to distinguish. In such a case, the proper course for the Registrar to adopt is to refuse registration of the mark, for instance, the word Best, which is used by other t

Click Here to Read the rest of this document