Bombay High Court
Kirloskar Diesel Recon Pvt. Ltd.
Versus
Kirloskar Properitary Ltd.
Decided On:

Headnote:Section 106-Civil Procedure Code, 1908, Order XXXIX, Rule 1 - Trade mark-Infringement of-Injunction suit for-Where balance of convenience not supporting use or trade name Kirloskar, injunction restraining from issuing Kirloskar can be issued-Common field of activity not necessary for-Onus not on plaintiff for proving fraudulent intention.

       The definition of trade mark includes mark and the very definition of mark includes name and as such, the term trade mark in Section 105(c) of the Act must, therefore, be considered to be a comprehensive term including within itself trade name9 as also "mark9, business name as also name under which articles, goods, etc. are sold. What is necessary is connection or nexus between the mark used in relation to the goods and the person claiming a right to use the same. While determining the question of jurisdiction, there is no warrant to draw a distinction between passing off action based on trade marks and other passing off actions. The Act covers all passing off actions whether based on trade marks or marks or trade names or business names.

       In this case the principle of balance of conveyance applies when the scales are evenly balanced. The existence of 1st Appellant Companies with the word Kirloskar in their names in each appeal is very recent whereas the existence of the respondents belonging to Kirloskar Group of Companies has been for over a period of 50 years. On their own showing, the appellants are not using the word Kirloskar as Trade Mark but as part of trading style whereas the respondents have not only acquired distinctiveness and goodwill in the word Kirloskar but it is even the registered Trade Mark of the 1st respondent There is sufficient evidence on record to show that the huge business is carried by "Kirloskar Group of Companies. There is nothing on record to show the extent of the business of the appellants. The 2nd appellant has throughout been aware about the business reputation of the respondents and efforts of the respondents in protecting their rights in the trade marks as also of preventing others to use the word Kirloskar as a part of the trading name or trading style. By grant of the interim injunction in favour of the respondents, the appellants are not prevented from carrying on business without the word Kirloskar forming part of the corporate name of the 1st appellant in each appeal. In the facts of the case, the respondents reputation was likely to be adversely affected if the appellants are not prevented from using the word Kirloskar as part of the corporate name of the 1st appellant in each appeal. In the facts of the case, the balance of convenience is not in favour of the appellants.

       Where the focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. With the passage of time and reputation acquired, the mark Kirloskar ha, acquired the secondary meaning and has become almost a household word. The business activities of the respondents vary from pin to piano as borne out from the object clauses of the Memorandums of Association of the respondents. The appellants have still to commence their business activities but as mentioned in the Memorandum of Association of 1st appellant in each appeal, some of the object clauses therein overlap with the activities of respondents.

       In passing off action, the plaintiff is not required to establish fraudulent intention on the part of the defendant and as such, it was not necessary for the respondents to establish fraudulent intention on the part of the appellants in incorporating the word Kirloskar as part of corporate names of 1st appellant in each of the appeals. It was even not necessary for the respondents to prove causing of actual confusion amongst the customers or public at large by the appellants. What the respondents were required to establish, which the respondents have established is a likelihood of deception or confusion.

       Section 34-Name-Use of-Saving for not apply to incorporated company, the artificial person.

       For Citation : AIR 1996 Bom 149