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High Court Of Delhi
PRAKASH ROADLINE LIMITED - Appellant
Versus
PRAKASH PARCEL SERVICE PRIVATE LIMITED - Respondent
Interim Application 14319 of 1991
Decided On : 03/27/1991
TRADEMARK - PASSING OFF - INJUNCTION - SUIT FOR INJUNCTION TO RESTRAIN DEFENDANT FROM INFRINGING COPYRIGHT IN ITS NAME WITH LOGO AND FOR PASSING OFF ITS TRADE NAME/GOODWILL - INTERIM INJUNCTION GRANTED IN FAVOUR OF PLAINTIFF - APPLICATION BY DEFENDANT TO VACATE/DISCHARGE INJUNCTION ORDER - HELD, INJUNCTION ORDER CONFIRMED TILL DISPOSAL OF SUIT.
Fact of the Case:
Plaintiff, a transport company, filed a suit for injunction to restrain defendant from infringing its copyright in its name with the logo and for passing off its trade name/goodwill. An interim injunction was granted in favor of the plaintiff. Defendant moved an application to vacate/discharge the injunction order.
Finding of the Court:
The court held that the plaintiff had a prima facie case for an injunction. The word "prakash" had acquired a secondary meaning for the plaintiff in the trade on account of its use by the plaintiff over a long period of time and the use of the word "prakash" in the name of the defendant was not bona fide. The use of the word "prakash" in the name of the defendant gave an impression even to an educated or qualified person that the defendant company belonged to the same group as the plaintiff. The balance of convenience was also in favor of the plaintiff.
Issues: 1. Whether the plaintiff had a prima facie case for an injunction? 2. Whether the word "prakash" had acquired a secondary meaning for the plaintiff in the trade? 3. Whether the use of the word "prakash" in the name of the defendant was bona fide? 4. Whether the balance of convenience was in favor of the plaintiff?
Ratio Decidendi: 1. The court held that the plaintiff had a prima facie case for an injunction because the plaintiff had been using the word "prakash" in its name for over 30 years and had spent a significant amount of money on advertising and promotion. The defendant had only recently been incorporated and had not yet established a reputation in the market. 2. The court held that the word "prakash" had acquired a secondary meaning for the plaintiff in the trade because the plaintiff had been using the word for a long period of time and had spent a significant amount of money on advertising and promotion. The word "prakash" had become associated with the plaintiff's business in the minds of the public. 3. The court held that the use of the word "prakash" in the name of the defendant was not bona fide because the defendant had been floated by former Directors/employees of the plaintiff who were in the know of the plaintiff's business secrets and trade connections. The defendant was trying to exploit the plaintiff's goodwill by using the word "prakash" in its name. 4. The court held that the balance of convenience was in favor of the plaintiff because the plaintiff had been using the word "prakash" in its name for a long period of time and had established a reputation in the market. The defendant had only recently been incorporated and had not yet established a reputation in the market. An injunction would prevent the defendant from causing further damage to the plaintiff's business.
Final Decision: The court confirmed the interim injunction order in favor of the plaintiff till the disposal of the suit.
( 1 ) THE plaintiff has filed the present suit for injunction to restrain defendant No. 1 from infringing its copyright in its name with the logo and for passing off its trade name/goodwill and for rendition of accounts. Defendant No. 2, who was an artist who prepared the logo used by the plaintiff, has been impleaded as defendant No. 2. However, no relief is claimed against him. The said defendant has died in the meanwhile. Therefore, the suit is now only against defendant No. 1. Alongwith the suit, the plaintiff filed an application being I. A. No. 14519/91 under Order 39 Rules 1 and 2 of the Code of Civil Procedure for grant of interim injunction in its favour. On the said application, ex parte interim order was passed in favour of the plaintiff on 5th December, 1991 whereby the defendant was restrained from using the trade name prakash or trade logo, which is deceptively similar to that of the plaintiff. The defendant moved an application being I A. No. 14690/91 under Order 39 Rule 4 of the Code of Civil Procedure for vacating/discharging the said injunction order. This order will dispose of both the aforesaid applications.
( 2 ) THE case of the plaintiff is that for the last over 30 years, the plaintiff company is engaged in the business of transport and carriage of goods and parcels. The said business is being run under the name and style of prakash Road Lines Ltd. The plaintiff has also been using the artistic work comprising of the figure of a cat with a crown on its head and a parcel in its hands as its logo. According to the plaintiff, the continued user of the words prakash Road Lines , with the aforesaid logo has acquired a distinct identity. The said logo and the trade name has acquired enormous goodwill for the plaintiff in the transport business. The plaintiff claims to have acquired and established a superior reputation due to its impeccable record of providing high quality service to its clients. It has over 3,300 offices all over India and is employing more than 2,500 employees. The annual turn over of the plaintiff company is almost Rs. 50 crores. The plaintiff has given a break-up of its expenses on advertisement and promotion of its trade name/logo which during the last three years has been about Rs. 15 lakhs, Rs. 21 lakhs and Rs. 21 lakhs respectively.
( 3 ) ON the basis of the above facts, it is claimed that the said trade name/logo have been identified as a trade name and logo of the plaintiff in the entire transport industry through out the country to such an extent that plaintiff s name prakash and/or the logo comprising of the combination of a cat with a crown and a parcel is displayed, shown or mentioned, the common man associates the same with the plaintiff. The plaintiff claims to have obtained the endorsement of its copyright over the said logo from the Registrar of Companies. By virtue of long and established user coupled with vast publicity given to the said trade mark, the plaintiff claims to have acquired exclusive rights as proprietor thereof. The word prakash and the logo of the cat with a crown and a parcel in its hand is prominently displayed and is written in bold and distinctive writing in all the advertisements, publicity material, hoardings, sign-boards, printed material, price lists, stationary etc. of the plaintiff. Thus, the word prakash and the logo have become associated distinctively with the enormous goodwill enjoyed by the plaintiff.
( 4 ) IT is further the case of the plaintiff that the defendant company has been recently floated by former Directors/employees of the plaintiff company with the malafide intention of exploiting/encashing/mis-using the goodwill associated with the trade name prakash and the logo of the plaintiff. The defendant company has been floated under the name and style of prakash Parcel Services (P) Ltd. The manner of the use of word prakash in the name of the company and the use of the logo of a cat with a crown and a parcel in
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