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High Court Of Delhi
HIDESIGN - Appellant
Versus
HI-DESIGN CREATIONS - Respondent
Interim Application 5958 of 1990
Decided On : 01/08/1991
TRADEMARK - PASSING OFF - INJUNCTION - HIDESIGN - HI-DESIGN CREATIONS - COMMON TO THE TRADE - ACQUIESCENCE - DELAY - INTERIM INJUNCTION - SUIT FOR INJUNCTION - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 28, 29, 106.
Fact of the Case:
Plaintiff, a manufacturer and seller of leather garments, bags, belts, brief cases, wallets etc. under the trade mark HIDESIGN, filed a suit for injunction against the defendant, who was manufacturing and selling the same goods under the trade mark HI-DESIGN CREATIONS. The plaintiff claimed that it was the prior adopter of the said trade mark and had acquired secondary meaning with regard to the goods of the plaintiff. The defendant contended that the word HIDESIGN was common to the trade and that the plaintiff was guilty of acquiescence and delay in filing the suit.
Finding of the Court:
The court held that the word HIDESIGN was a very unusual word combination and that it was not disputed that the word HIDESIGN does not appear in English language dictionaries. The court also held that the plaintiff was the prior user of the word HIDESIGN in connection with its business and that the defendant had purchased goods from the plaintiff for the purpose of resale and, therefore, the plaintiff did not object to the use of the name HIDESIGN CREATIONS by the defendant. However, once the relationship had stopped, the defendant could not continue to use the unique name HIDESIGN as a part of its trading style. The court also held that the defendant was not guilty of acquiescence and delay in filing the suit.
Issues: 1. Whether the word HIDESIGN was common to the trade? 2. Whether the plaintiff was guilty of acquiescence and delay in filing the suit?
Ratio Decidendi: 1. The court held that the word HIDESIGN was a very unusual word combination and that it was not disputed that the word HIDESIGN does not appear in English language dictionaries. The court also held that the plaintiff was the prior user of the word HIDESIGN in connection with its business and that the defendant had purchased goods from the plaintiff for the purpose of resale and, therefore, the plaintiff did not object to the use of the name HIDESIGN CREATIONS by the defendant. However, once the relationship had stopped, the defendant could not continue to use the unique name HIDESIGN as a part of its trading style. 2. The court held that the defendant was not guilty of acquiescence and delay in filing the suit.
Final Decision: The court allowed the plaintiff's application for an interim injunction and restrained the defendant from using the trade mark HIDESIGN or any other deceptively similar trade mark with regard to leather garments etc.
( 1 ) THE plaintiff Mrs. Pampa Kapoor is carrying o the business under the name of M/s HIDESIGN at and from 4, Caserne Stree? Post Box No. 92, Pondicherry. It is stated in the plaint that she is engaged in the business of manufacturing, processing, exporting and selling feather garments, bags, belts, brief cases, wallets etc. for the past several years.
1a. It is asserted by the plaintiff that the plaintiff adopted the trade mark HIDESIGN, which was represented in a special and particular manner on 5. 5. 1977. tt is stated that the plaintiff used the mark not only as a trade mark, but also a trade description, and it is further stated that the said mark appears permanently on all the products and all the literature of the plaintiff during the course of her business.
( 2 ) THE plaintiff claims that she is the prior adopter of the said t A mark vis-a-vis the defendant, and is entitled to use the said name as a prior adopter of the said "design". It is also asserted that in view of the established business and sale promotion and extensive and continuous regular commercial user, the said trade mark HIDESIGN had acquired secondary meaning with regard to the goods of the plaintiff, and has earned a valuable good-will and enviable reputation. This plea does not seem to be applicable as the concept of secondary meaning comes into play when the primary meaning is different. As the word combination HIDESIGN is not a word found in English dictionary, secondary meaning concept is inapplicable.
( 3 ) THE plaintiff asserts that in April, 1980, she became aware that the defendants are manufacturing and selling the same goods or description of goods as that of the plaintiff, under the same or deceptively similar trade mark HIDESIGN.
( 4 ) IT is also asserted, in the plaint that the defendants were unaware of the constitution of M/s. HI-DESIGN CREATIONS, which is a firm carrying on business at Delhi.
( 5 ) THE plaintiff, therefore, sought an interim injunction, restraining the defendants from passing off their goods under the offending trade mark HIDESIGN. The plaintiff in the suit, also sought other reliefs, like delivery up and rendition of accounts.
( 6 ) ALONG with the suit, the plaintiff also filed anapplication (I. A. No. 5958 of 1990) under Order 39 Rules I and 2 read with Section 151 of the Code of Civil Procedure, by which the plaintiff prayed that during the pendency of the suit, the defendants, their sarvants, agents, stockists be restrained from using the trade mark HIDESIGN, or any other deceptively similar trade mark with regard to leather garments etc. , and sought an ad interim injunction without notice to the defendants/respondents.
( 7 ) ON the averments made in the plaint and in the application, by my order dated 3. 8. 1990, I granted an ad Interim injunction sought, restraining the defendants from carrying on the business as HI-DESIGN CREATIONS, and putting labels on the goods mark HIDESIGN. This injunction was in the first instance, issued till the next date of hearing, but it was later on continued.
( 8 ) THE respondents put in appearance, filed their reply to the application, and also filed written statement.
( 9 ) I have heard parties counsel, and I proceed to dispose of the interim application.
( 10 ) PRIMA facie, the word HIDESIGN is a very unusual word combination, once it is kept in view that the articles to which this mark is applied are made of leather. Broken up in a particular way, it may read as HIDE-SIGN One of the documents filed by the plaintiff as annexure "a" has a stylised representation of the face of a bull/buffalo, with horns on the head. In this stylised form the face of the bull and the horns would indicate HIDE-SIGN or sign of hide.
( 11 ) WRITTEN in another way, the word HIDE-SIGN becomes HIDESIGN. The purpose of mentioning of this is that the alphabets selected to make up the trade mark lend themselves to two distinct representation and meanings, and this by itself makes this a ver
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