2006 Supreme(Bom) 564

IN THE HIGH COURT OF BOMBAY
SHAW WALLACE AND COMPANY LTD.
Versus
MOHAN ROCKY SPRING WATER BREWERIES LTD.
Decided on : APRIL 5, 2006

Headnote:Civil Procedure Code, 1908 - Order XXXIX, Rule 1 Trade Marks Act, 1999, Section 28 Grant of temporary injunction Use of trade mark Contended exclusive right to use the mark Indication of creating confusions A descriptive numeral cannot be claimed as trade mark Held Infringement to be made not only to protect the right but also to protect right of general public Temporary injunction granted. Still for that reason alone the relief of temporary injunction cannot be denied to the plaintiff, because an order of temporary injunction in a suit for infringement or passing off is to be made not only to protect the right of the plaintiff, but also to protect the interest of the general public. An order of temporary injunction is to be made so that the public who buys the goods involved is not deceived or misled. Therefore, had the purpose of granting temporary injunction been only to protect the interest of the plaintiffs, then may be the temporary injunction could have been denied to the plaintiffs, because the plaintiffs have made an incorrect statement in the plaint. But as the purpose of granting temporary injunction in a suit for infringement of trade-mark or trade label is not only to protect the interest of the plaintiffs, but also to protect the interest of the general public, denial of temporary injunction to the plaintiffs merely because the plaintiffs have made incorrect statement in the plaint would not be in the interest of justice.

       Interest of Justice - Grant of temporary injunction - Contention, plaintiff stated wrongly before Court - Trade mark and trade level not only protects interest of plaintiff but also of general public - Simply on incorrect statement in plaint would not and cannot be in public interest. - Still for that reason alone the relief of temporary injunction cannot be denied to the plaintiff, because an order of temporary injunction in a suit for infringement or passing off is to be made not only to protect the right of the plaintiff, but also to protect the interest of the general public. An order of temporary injunction is to be made so that the public who buys the goods involved is not deceived or misled. Therefore, had the purpose of granting temporary injunction been only to protect the interest of the plaintiffs, then may be the temporary injunction could have been denied to the plaintiffs, because the plaintiffs have made an incorrect statement in the plaint. But as the purpose of granting temporary injunction in a suit for infringement of trade-mark or trade label is not only to protect the interest of the plaintiffs, but also to protect the interest of the general public, denial of temporary injunction to the plaintiffs merely because the plaintiffs have made incorrect statement in the plaint would not be in the interest of justice.

       Trade Marks Act, 1999 - Section 29 - Civil Procedure, Code, XXXIX, Rules 1 and 2 - Suit for injunction against infringement of trade mark - Plaintiff had the registered label mark of which one of the essential features was a numeral "5000" - There was no disclaimer of the numeral "5000" at the time of registration of trade mark - As the numeral "5000" was an essential part of the registered trade label of the plaintiff, they will prima facie have a statutory right to prevent the defendant from using a deceptively similar trade label and mark - Adoption of the impugned mark by the defendant appeared to be dishonest - In absence of production of record the defendant cannot take plea that the numeral "5000" is common to the trade - Denial of temporary injunction to the plaintiff merely because the plaintiff have make incorrect statement in the plaint would not be in the interest of justice. - The suit was filed by the plaintiff on the basis of their registered label mark of which one of the essential features is a numeral "5000". According to the plaintiffs, the defendant is committing acts of infringement and passing off by using the trade mark "PRESTIGE 5000" and "FOUR SQUARE 5000" of which the numeral "5000" forms an essential feature. According to the plaintiffs, Section 28 of the Trade Marks Act, 1999 gives an exclusive right to the plaintiffs to use the trade mark "HAYWARDS 5000" and the essential features thereof including the numeral "5000" and also gives rights to the plaintiffs to prevent anyone from using any deceptively similarly trade mark. The defendants have, while entering into an agreement with the plaintiffs which are on record, admitted that the Brand "HAYWARDS 5000" is a well-known brand and that the defendants have no right and are not entitled to question the popularity or the suitability of the brand. From the material available on record it is clear that the defendants were aware, when they adopted their brand about the popularity of the registered trade mark of the petitioners, and therefore, it prima facie appears that the adoption of the impugned trade mark by the defendants was dishonest and they adopted the trade mark to take advantage of the popularity of the trade mark of the plaintiffs, and therefore, as there is no disclaimer of the numeral "5000" at the time of registration of the trade-mark and as the numeral "5000" is an essential part of the registered trade lable of the plaintiffs, the plaintiffs will prima facie have a statutory right to prevent the defendant from using a deceptively similar trade lable and trade mark. The plaintiffs would be entitled to a temporary injunction also because it prima facie appears that the adoption of the impugned mark by the defendant appears to be dishonest. So far as the defence that there are others who are using the numeral "5000" in relation to beer and therefore it is common to the trade is concerned, apart from the fact that one party other than the defendant who are using the numeral "5000" has been proceeded against by the plaintiff, the defendant has not produced material on record to show as to what is the extent of the sale and business of the other parties who according to the defendant are using the numeral "5000". In the absence of production on record of the above-referred material, the defendant cannot successfully confer that the numeral "5000" is common to the trade. Denial of temporary injunction to the plaintiffs merely because the plaintiffs have made incorrect statement in the plaint would not be in the interest of justice.