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HIGH COURT OF CALCUTTA
S. C. GHOSH
EAST END HOSIERY MILLS PRIVATE LTD. - Appellant
Versus
AGARWAL TEXTILES MILLS - Respondent
. Of .
Decided On : August 25, 1970
PASSING OFF - TRADE MARK - INJUNCTION - RESTRAINING THE DEFENDANT FROM PASSING OFF GANJIES WHICH ARE NOT OF THE PETITIONER'S MANUFACTURE AS AND FOR THOSE OF THE PETITIONER AND FROM SELLING OR OFFERING FOR SALE UNDER THE TRADE MARK OR NAME ‘SACHA MOTI’ GANJIES NOT OF THE PETITIONER'S MANUFACTURE.
Fact of the Case:
The petitioner, a manufacturer of hosiery goods, including ganjies, had been selling ganjies under the trade mark or name ‘moti’ since 1956. The defendant started using the trade mark or name ‘sacha MOTI’ for ganjies manufactured by it in July 1966. The petitioner filed an application for an injunction restraining the defendant from passing off ganjies which are not of the petitioner's manufacture as and for those of the petitioner and from selling or offering for sale under the trade mark or name ‘sacha MOTI’ ganjies not of the petitioner's manufacture.
Finding of the Court:
The court found that the petitioner had acquired a property right in the trade mark ‘moti’ and that the defendant's use of the trade mark ‘sacha MOTI’ was likely to deceive or cause confusion in the minds of purchasers. The court also found that the defendant had no mill for manufacturing ganjies and that it carried on business in a shop room in Calcutta, which was its registered place of business. The court further found that one of the partners of the defendant firm was a dealer in the said goods manufactured by the plaintiff at Delhi since 1965 admittedly prior to the inception of business in such goods in any event by the defendant leads prima facie to show fraudulent intention on the part of the defendants in the use of the marks ‘sacha MOTI’.
Issues: 1. Whether the petitioner had acquired a property right in the trade mark ‘moti’? 2. Whether the defendant's use of the trade mark ‘sacha MOTI’ was likely to deceive or cause confusion in the minds of purchasers? 3. Whether the defendant had a fraudulent intention in using the trade mark ‘sacha MOTI’?
Ratio Decidendi: 1. The court held that the petitioner had acquired a property right in the trade mark ‘moti’ by virtue of its extensive use and popularity in the market. 2. The court held that the defendant's use of the trade mark ‘sacha MOTI’ was likely to deceive or cause confusion in the minds of purchasers because the two marks were phonetically similar and had a similar get-up. 3. The court held that the defendant had a fraudulent intention in using the trade mark ‘sacha MOTI’ because it was aware of the petitioner's trade mark ‘moti’ and because it had no mill for manufacturing ganjies.
Final Decision: The court granted the petitioner's application for an injunction restraining the defendant from selling or offering for sale under the trademark or name ‘sacha MOTI’ ganjies with out sufficiently distinguishing the same from the same to be the products of the defendant.
( 1 ) THIS an application filed by the plaintiff inter alia for an injunction restraining the defendant from passing off Ganjies which are not of the petitioner's manufacture as and for those of the petitioner and from selling or offering for sale under the trade mark or name ?sachamoti? Ganjies not of the petitioner's manufacture. The application is also for an injunction restraining the defendant for displaying or causing to be displayed sign boards or posters inscribed with the mark ?sachamoti? in relation to Ganjies or such other mark which are colourable imitation of the petitioner's trade mark ?moti?.
( 2 ) THE petitioner who has been carrying on business on an extensive scale as a manufacture of Hosiery goods including gangies in India has been selling Ganjies manufactured by it since 1956 under the trade mark or name ?moti?. The said mark ? moti is embroidered in a particular style in neck labels and stitched to the neck of each Ganjies or Vest. The said label and name is used in the best quality of vests or ganjies produced by the petitioner. According to the petitioner the said mark or name as well as the said get up in the neck label as well as the packing box has acquired great popularity in the market in Calcutta, Madras, Kanpur, Delhi, etc. , and has become associated with the petitioner. So much so that the sale of such ganjies rose from Rupees 97,000/- in 1960 to Rs. 8,50,000/- in 1968. The petitioner's advertisement expenses rose from Rs. 10,000/- to Rs. 16,000/- during the said period. Thus the petitioner came to acquire a property right in the said mark ?moti?. The petitioner came to know about the use by the defendant of the name ?sacha MOTI? with regard to the Ganjies manufactured by the defendant from an advertisement appearing in the ?hosiery Sandesh? during Diwali 1968.
( 3 ) ACCORDING to the petitioner the said mark is a deceptive imitation of the petitioner the said mark is a deceptive imitation of the petitioner's aforesaid mark or name and is likely to deceive purchasers and intending purchasers into believing that the said goods bearing the label ? SACHA MOTI? are the goods of the petitioner for inter alia the following reasons:- (A)phonetically the word ? SACHA MOTI? is substantially the same as ?moti?. (b)the get-up of the said mark as embroidered and printed on neck labels and packing box labels of the defendant's products are deceptively similar to the get-up, embroidery and printing of the said mark on neck labels and packing box labels of the petitioner. (c)there are only very minor differences, which are insignificant between the two marks and/or get-up. The said get-up and the mark used by the defendant is a colourable imitation of the get-up and mark of the petitioner. The word ?sacha? is written above the word ?moti? in smaller letters and is likely to escape notice. The word ?moti? is written in bold letters and of similar design as that of the petitioner.
( 4 ) THE defendant in opposition to the present application has pleaded as follows: -I)?moti? is not a registered trade Trade Mark. ii)the plaintiff has no exclusive right to use the said word ?moti?. iii)in fact other persons including one Samarendra Narayan Choudhury had been using the said mark ?moti? in Ganjies manufacture or sold by him. iv)since July, 1966, the defendant has been using the said trade mark or name SACHA MOTI which has acquired a reputation in the market as signifying goods belonging to and manufactured and sold by the defendant. v)the said words are not unlawful or colourable or deceptive imitation of the said alleged trade mark or name ? moti? vi)phonetically the two words are not at all similar. vii)the get up of the words in their respective neck labels or packing boxes have also no similarity. viii)the word ? sacha? is not in insignificantly small letters. ix)the goods of the respective parties are sold by different dealers. x)the defendant took the name from the name of one Moti Ram Gupta,
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