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High Court Of Delhi
BOROSIL GLASS WORKS - Appellant
Versus
O.P.BATRA - Respondent
Interim Application 2754 of 1997
Decided On : 01/13/1998
TRADEMARK - PASSING OFF - INFRINGEMENT - JURISDICTION - INTERLOCUTORY INJUNCTION - MODIFICATION - CHANGE IN CIRCUMSTANCES - UNDUE HARDSHIP - CAUSE OF ACTION - REJECTION OF PLAINT - TRADE MARKS ACT, 1958 - ORDER 39, RULE 4, CIVIL PROCEDURE CODE.
Fact of the Case:
Plaintiff, a manufacturer of kitchenware, tableware, ovenware, and scientific laboratory glassware, filed a suit for passing off and infringement of its registered trademark "BOROSIL" against the defendant, who was manufacturing and selling electric domestic appliances under the same trademark. The plaintiff obtained an ex parte interlocutory injunction restraining the defendant from using the trademark "BOROSIL". The defendant filed an application to vacate the injunction, arguing that the plaintiff had no cause of action since it did not manufacture or market any electric domestic appliances.
Finding of the Court:
The court held that the plaintiff had a cause of action for passing off even though it did not manufacture or market electric domestic appliances. The court relied on the fact that the plaintiff had been using the trademark "BOROSIL" since 1962 and had a reputation in the market. The court also held that the defendant's use of the trademark "BOROSIL" was likely to cause confusion and deception among consumers. The court further held that the plaintiff had not caused undue hardship to the defendant by obtaining the injunction, as the defendant had not shown that it had suffered any significant financial loss as a result of the injunction.
Issues: 1. Whether the plaintiff had a cause of action for passing off even though it did not manufacture or market electric domestic appliances. 2. Whether the defendant's use of the trademark "BOROSIL" was likely to cause confusion and deception among consumers. 3. Whether the plaintiff had caused undue hardship to the defendant by obtaining the injunction.
Ratio Decidendi: 1. A cause of action for passing off exists when a person passes off his goods as those of another. 2. The use of a trademark that is likely to cause confusion and deception among consumers is actionable as passing off. 3. An interlocutory injunction may be vacated or modified if it has caused undue hardship to the defendant.
Final Decision: The court dismissed the defendant's application to vacate the injunction and rejected the defendant's contention that the plaint should be rejected for want of cause of action.
( 1 ) THIS third application under Order 39, Rule 4 has been moved for vacating the injunction order passed on 10th November, 1995 directing the defendant not to use trade mark borosil .
( 2 ) I have also heard the learned Counsel for the parties in respect of the following points:
1. Whether this Court while disposing of the application under Order 39, Rule 4 could reopen and modify the earlier order ?
2. Whether the plaint is liable to be rejected for want of cause of action under Order 7, Rule 11 Civil Procedure Code ?
( 3 ) EARLIER by order dated 10th November, 1995 not only the application under Order 39, Rules 1 and 2 was allowed but also two Application Nos. 2303/95 and 4967/95 filed by the defendants were dismissed.
3. 1. First the undisputed facts. It has been very fairly conceded by learned Counsel for the plaintiff that the plaintiffs are neither manufacturing nor holding any registration of trade mark Borosil in relation to Mixer-cum-grinder, Juicer, Food Processors and Washing Machine. According to plaintiffs own case they are just manufacturers of kitchenwares, tablewares, ovenwares, scientific laboratory, industrial, pharmaceutical and other technical glass and glasswares of various variety and description. According to para 5 of the plaint, the trade mark "borosil" is registered for following classes and goods :
3. 2. It is also alleged that the plaintiff is carrying on its business under the trade mark BOROSIL as mentioned above which is recognised by the members of the trade and by public. The plaintiff adopted the trade mark BOROSIL and has been using the same since 14th December, 1962.
3. 3. However, it is not claimed in the plaint any where that borosil is an invented word. It appears that the word borosil may be an abbreviated version of Boro-Silicate and intends to give an impression of lasting durability. It is not claimed that the plaintiffs ever produced any electric domestic appliance, which is covered under any of the classes REFERRED TO above with reference to trade mark borosil registered in the name of the plaintiff.
( 4 ) A preliminary objection taken by the learned Counsel for the plaintiff is that after the dismissal of the application under Order 39, Rule 4 for vacating the injunction order, the order could not be modified by this Court for it would operate as a constructive res judicata till the disposal of the matter. The order could have been modified only in an appeal and not otherwise.
4. 1. In response to this argument the learned Counsel for the defendant contends that in Regent Oil Co. Ltd. v. J. T. Leavesley (Liclifield) Ltd. , 1966 (2) All. E. R. 454, a similar question arose. In that case on December 12, 1960 the defendant proprietors of a garage entered into an agreement with plaintiff, a supplier of motor fuel, restricting the defendants during a period of eight and a half years from February 1,1960 to purchasing the defendants total requirement of motor fuels and other light petroleum products from the plaintiff. Before the decision in the Court of Appeal cited below the plaintiff had obtained an ex parts interlocutory injunction which was continued later by consent against contravention of the restriction in the sole agreement. There was no evidence that a restriction for a seven and a half years was no longer than was reasonably necessary to protect the plaintiffs interest. On motion to discharge the injunction in view of the subsequent decisions of the Court of appeal in Esso Petroleum Company Ltd. v. Harper Garage (Stourport) Ltd. , (1965] 2 All E. R. 933; Petrofine (Gt. Britain) Ltd. v. Martin, [1996] I All E. R. 176 and the Harper s Garage case, [1996] I All E. R. 725, Stamp. J. of the Chancery Division observed in Regent Oil Company s case as under :
"for the reasons which I have given, if the plaintiff were today applying for interlocutory relief, I should be constrained reluctantly to refuse it, reluctantly because this Court is reluctant, on an inte
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