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HIGH COURT OF CALCUTTA
J. P. MITTER, GUHA RAY
RUSTOM ALI MOLLA - Appellant
Versus
BATA SHOE CO. LTD. - Respondent
A. F. O. O. 159 Of 1955
Decided On : SEPTEMBER 12, 1956
TRADEMARK - INFRINGEMENT AND PASSING OFF - BATA TRADEMARK - USE OF BATA ON LUNGIS - NO INFRINGEMENT BUT PASSING OFF - INTERLOCUTORY INJUNCTION GRANTED.
Fact of the Case:
Bata, a well-known manufacturer of footwear and leather goods, sued defendant No. 5 for infringement of their trademark "bata" and passing off lungis as those of Bata. Bata claimed exclusive rights to the trademark for specific goods, including shoes, socks, and hosiery, but not lungis or handkerchiefs. Defendant No. 5 used the "bata" mark on lungis and applied to register the trademark "bata Lungis". Bata filed a suit for an interlocutory injunction to restrain the defendants from infringing their trademark and passing off lungis as those of Bata.
Finding of the Court:
The court held that the use of the "bata" mark on lungis did not constitute infringement of Bata's trademark because lungis were not similar goods to those for which Bata had acquired a reputation. However, the court found that the appellants' use of the "bata" mark on lungis was likely to deceive customers into thinking that the lungis were manufactured by Bata, constituting passing off.
Issues: 1. Whether the use of the "bata" mark on lungis constituted infringement of Bata's trademark. 2. Whether the appellants' use of the "bata" mark on lungis constituted passing off of their goods as those of Bata.
Ratio Decidendi: 1. The court held that there can be no monopoly in the use of a trademark unless it has become associated with the manufacturer's goods in the public mind. Bata's trademark was not associated with lungis, which were of a totally different character from Bata's goods. Therefore, the appellants' use of the "bata" mark on lungis did not constitute infringement of Bata's trademark. 2. The court held that the appellants' use of the "bata" mark on lungis was likely to deceive customers into thinking that the lungis were manufactured by Bata. The court considered the obvious imitation of the "bata" mark on the labels or cartons used for the lungis and the similarity between the appellants' mark and Bata's trademark as evidence of an intention to deceive customers.
Final Decision: The court set aside the order of the District Judge granting an interlocutory injunction and allowed the appeal with costs. The question of a permanent injunction was left to be determined in the suit upon further evidence.
( 1 ) THIS appeal is from an order of the District Judge of 24 Parganas, granting an interlocutory injunction against the defendants in a suit for infringement of a Trade Mark and for passing off.
( 2 ) THE plaintiffs are well-known manufacturers of footwear and other leather and rubber goods. It is said that they also manufacture socks and hosiery. They are the owners of the Trade Mark "bata" ia respect of "canvas rubber leather shoes, rubber monolith (footwear), rubber heels, rubber soles, rubber plates (for shoes), leather soles, half-soles, heels, wooden heels socks and hosiery. " This Trade Mark was registered on July 8, 1946.
( 3 ) DEFENDANT No. 5 (one of the appellants herein) claims to have been using the said mark or name ''bata" in respect of lungis. It is said that in August, 1953, he applied before the Registrar of Trade Marks, Bombay, for registering a Trade Mark under the name "bata Lungis".
( 4 ) IT is common case that the plaintiffs have not so far manufactured lungis or handkerchiefs. According to them, they first learnt in November, 1953, that defendant No. 5 was using the said mark "bata" in respect of lungis by inscribing the said mark on a label which was attached to each piece of lungi and that the word "bata" was printed in the identical way as that used in their said Trade Mark.
( 5 ) ACCORDING to the plaintiffs, the user of the said Trade Mark in respect of lungis or handkerchiefs constituted an infringement of the plaintiffs' Trade Mark and/or passing off the goods concerned as those of the plaintiffs.
( 6 ) UPON the said discovery, the plaintiffs launched criminal proceedings against defendant No. and under Ss. 482, 483 and 486 of the I. P. C. By an order dated 19-2-1954, the Presidency Magistrate of Calcutta discharged the said defendant, whereupon the plaintiffs moved this Court in revision. Chunder, J. set aside the said order of discharge and directed that the said proceedings should be kept pending till the disposal of defendant No. 5's application for registration of the mark "bata Lungis". Thereafter, on or about 19-4-1955, the plaintiffs instituted the present suit, claiming, inter alia, a temporary injunction restraining the defendants and each of them, their servants and agents, front infringing the plaintiffs' said Trade Mark and from passing off, amongst others, lungis and other articles not of the manufacture of the plaintiffs as those of the plaintiffs and from selling or offering for sale any article associated with the name "bata" in any manner or form.
( 7 ) THE learned District Judge held that the user of the mark or name "bata" in respect of lungis or handkerchiefs did not constitute any infringement of the plaintiffs' Trade Mark which was in respect of specific goods which did not include lungis or handkerchiefs. The learned District Judge, however, found that the plaintiffs had made out a strong prima facie case as to passing off. The reason for this finding was the obvious imitation of the mark "bata" on the labels or cartons used for the lungis or handkerchiefs and that this similarity was likely to deceive the customers of these goods into believing that they were of the plaintiffs. The learned Judge also imputed dishonesty in the user of the mark.
( 8 ) MR, Atul Gupta on behalf of the appellants has contended that no one can have a monopoly in. the use of a name or a mark, unless the same has become associated in the market with his goods. Such a monopoly, according to Mr. Gupta, must, however, be limited to the goods with which the mark has become associated in the public mind and may even extend to similar goods. This is conceded by Mr. Sanyal appearing on behalf of the respondents. Mr. Gupta further contended that the respondents not having manufactured lungis or handkerchiefs, the name or mark "bata" cannot be said to have been associated with lungis or handkerchiefs. In support of these contentions, Mr. Gupta has referred us to the case of Thomas Bear
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