Back
1995 Supreme(Bom) 446
BOMBAY HIGH COURT
S.M. Jhunjhunwala, J.
KIRLOSKAR DIESEL RECON PVT. LTD., AND ANOTHER - APPELLANTS
v.
KIRLOSKAR PROPRIETARY LTD. AND OTHERS - RESPONDENTS
Appeal from Order Nos. 1152 to 1154 of 1994 in Interim Application Nos. 3 to 5 of 1993 in Civil Suit Nos. 3 to 5 of 1993,
Decided on: October 10, 1995
Shri H.W. Kane with Shri Rahul M. Kadam and Sh. A.P. Hariani of M/s. Hariani & Co., for the Appellants.
Sh. Varindera Tulzapurkar with Mrs. Anita Jaiman, Sh. H.J. Engineer of M/s. Gordhandas & Fozdar, for the Respondents.
Headnote:
PASSING OFF - INJUNCTION - COMMON FIELD OF ACTIVITY - LIKELIHOOD OF DECEPTION OR CONFUSION - USE OF SIMILAR TRADEMARK - BONA FIDE ADOPTION OF NAME - BALANCE OF CONVENIENCE - INTERIM INJUNCTION GRANTED.
Fact of the Case:
The respondents, belonging to the well-known 'Kirloskar Group of Companies,' filed suits for permanent injunction to restrain the appellants from using the word 'Kirloskar' as part of the corporate name of the 1st appellant in each appeal and/or its trading style so as to pass off or enable others to pass off the goods and/or business of 1st appellant in each Appeal as that of the respondents. The appellants contended that they were entitled to use the word 'Kirloskar' as part of the corporate names of the 1st appellant in each of the appeals, that there was no common field of activity between them and the respondents, and that the respondents were not entitled to an injunction.
Finding of the Court:
The court held that the respondents had established a strong prima facie case for grant of interlocutory relief and that the balance of convenience was in their favor. The court found that the appellants had deliberately and willfully adopted the Trade Mark of the respondents as part of the corporate names of the 1st Appellants and each appeal with knowledge that the Appellants by such adoption were violating Respondents' rights. The court also found that the appellants were not using the word 'Kirloskar' as a Trade Mark but as part of trading style whereas the Respondents had not only acquired distinctiveness and goodwill in the word 'Kirloskar' but it was even the registered Trade Mark of the 1st Respondent.
Issues: 1. Whether the respondents were entitled to an injunction to restrain the appellants from using the word 'Kirloskar' as part of the corporate name of the 1st appellant in each appeal and/or its trading style? 2. Whether there was a common field of activity between the appellants and the respondents? 3. Whether the respondents had established a likelihood of deception or confusion? 4. Whether the appellants had bona fide adopted the name 'Kirloskar'?
Ratio Decidendi: 1. The court held that the respondents were entitled to an injunction to restrain the appellants from using the word 'Kirloskar' as part of the corporate name of the 1st appellant in each appeal and/or its trading style. 2. The court held that there was no common field of activity between the appellants and the respondents. 3. The court held that the respondents had established a likelihood of deception or confusion. 4. The court held that the appellants had not bona fide adopted the name 'Kirloskar'.
Final Decision: The appeals were dismissed with costs, and the order of the learned Judge granting interim injunction was upheld.
S.M. Jhunjhunwala, J. - These appeals are directed against common order dated 14th June, 1994 passed by the III Additional District Judge, Pune in respondents' applications under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 for grant of interim injunction in Civil Suits bearing Nos. 3 of 1993, 4 of 1993 and 5 of 1993 filed by the respondents herein in the court of the District Judge, Pune at Pune. The 2nd appellant and the respondents in these appeals are common, the 1st appellant in each appeal in different. The respondents in appeal from Order No. 1152 of 1994 are the plaintiffs in Civil Suit No. 3 of 1993. The respondents in appeal from Order No. 1153 of 1994 are the plaintiffs in Civil Suit No. 4 of 1993 and the respondents in appeal from Order No. 1154 of 1994 are the plaintiffs in Suit No. 5 of 1993. All these suits have been filed for permanent injunction to restrain the appellants herein from using the word 'Kirloskar' as part of the corporate name of the 1st appellant in each appeal and/or its trading style so as to pass off or enable others to pass off the goods and/or business of 1st appellant in each Appeal as that of the respondents. In each of the said suits restricted to passing off action, the respondents had filed an application for grant of interim injunction. All these applications for grant of interim injunction have been disposed of by the common order dated 14th June, 1994 impugned in these appeals. By the order impugned in these appeals, pending the hearing and final disposal of the said suits., the appellants by themselves, their servants and agents and/or any other person(s) claiming by, under or through them or any of them have been restrained from using the word 'Kirloskar' as part of corporate name of 1st appellant in each of the appeals and/or trading style so as to pass off or enable others to pass off the goods of the 1st appellant in each appeal and/or business as that of the respondent or in any way connected with the respondents. Since common questions of fact and law are involved in these appeals, the same are being disposed of by this common judgment.
2. Briefly stated, the respondents' case as pleaded is as under:
(i) Each of the respondents is a Company duly incorporated and registered under the provisions of the Companies Act, 1956 and that each of them belong to well known 'Kirloskar Group of Companies'. The word 'Kirloskar' forms part of the corporate name of each of the respondents. The 1st respondent is the registered holder of various trade-marks under the provisions of the Trade and Merchandise Marks Act, 1958 (for short, 'the Act') and also the registered holder of the Artistic word 'Kirloskar' in English, Hindi and Marathi under the provisions of the Copyright Act, 1957. The respondents 2 to 5 are the licensees and registered users of various trade marks and/or copyrights held, possessed and owned by the 1st respondent and are using the same in relation to 'sale promotion campaigns' of the products manufactured and marketed by them. The respondents 6 and 7 are the permitted users of the copyrights held, passessed and onwed by the 1st Respondent and that the said copyrights are being used by the said users in relation to the products manufactured and marketed by them.
(ii) One Laxmanrao Kashinath Kirloskar, the founder of the 'Kirloskar Group of Companies', commenced business of bicycle repairing in 1888 along with his brother Ramuanna at Belgaum. In the year 1910, they shifted to Kundal of which name later on changed to Kriloskarwadi due to the activities of 'Kirloskar Group of Companies'. In the year 1920, the Kirloskar brothers converted their private Company into a public limited company. In the course of time, they expanded business and incorporated various companies. The word 'Kirloskar' was adopted as trade mark and has been extensively used by various companies of Kirloskar Group. Accordingly, the word 'Kirloskar' has becomes part of the corporat
