(August 24, 2001) 2001 (TLS)125406

2001-DLT-93-600 :: 2001-ILRDLH-6-38

VIRUMAL PRAVIN KUMAR Vs. Needle Industries (India) Limited

SANJAY KISHAN KAUL

( 1 ) A suit was filed by the respondents against the appellant herein for permanent injunction and recovery of damages under sections 105 and 106 of the Trade and merchandise Marks Act, 1958 (hereinafter referred to as the act) read with section 1962 of the Copyright Act, 1957. The suit is in respect of Snap Fasteners and the respondents claimed relief against packaging with the colour scheme orange and gray and a lay out and get up identical or deceptively similar being used by the appellant to that of the respondents under the copyright of pony Card and/or use of the trademark 555 and/or impugned cards bearing the trademark 555 apart from claiming a money decree for damages. Respondent no. 1 stated in the plaint that they were a subsidiary of a British manufacturer of hand sewing needles, knitting pins and other similar products and during its growth benefited from the technology and skilled personnel from respondent no. 2. There was a license agreement between the two respondents during the period 1963 to 1981 to manufacture press studs. Respondent no. 1 further claimed that it had sold products bearing trademark 555 during the period from 1963 to 1981. It was further alleged in the plaint that though the license agreement between the two respondents came to an end in 1981 the trademark 555 had till the date of the suit been retained on the trademark register and continues to retain much residual goodwill and reputation in the Indian market and the same was further supplemented, and enriched by respondent no. 2 s sales and publicity of the product bearing the said trademark in a large number of countries throughout the world. A claim was also made in respect of the product of respondent no. 1 bearing pony Card which is stated to have been regularly advertised in major Journals all over the world. Details of sales were given for the period 1979 to 1993-94. It was further alleged in the plaint that respondent no. 1 came to know of the appellant marketing the product and infringing the rights of the respondents in around June, 1993 and consequently sent a legal notice dated 23/06/1993. Certain communications ensued between the appellant and respondent no. 1 in respect of the claim of respondent no. 1 but no settlement was arrived at and consequently the suit was filed.

( 2 ) THE appellant resisted the suit of the respondents. Plea of undue delay and latches was raised as the appellant claimed that they had been using the trademark and label entitled "v. R. " with the device of SWAN and numerals 555 since the year 1989 for Spring Snab Fasteners. The plea was raised in the written statement that assuming the existence of license agreement alleged by the respondents, the admitted position was that the agreement had expired in 1981 and the trademark 555 had never been used in India either in respect of Spring Snab Fasteners or any such allied product at any time by the respondents. Thus it was claimed that since no goods were sold under the alleged registered trademark 555 in the Indian market, there was not question of effecting any sales.

( 3 ) AT the stage of filing of the suit an interim application was also filed by the respondents under order 39 rules 1 and 2, read with section 151" Civil Procedure Code being IA No. 8748/95. This application was disposed of by the impugned order dated 28/03/2000. In terms of this order the learned Single judge was of the view that there could not be any confusion in the mind of the customer while purchasing the same type of goods as the features of the two cards were distinctive and the plaintiff was not entitled to injunction in respect of the card with which the fasteners were being displayed and sold to the customers. However, insofar as the question of use of the figure 555 as trademark was concerned, the learn