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1991 Supreme(Del) 508
High Court Of Delhi
PEARL APPLIANCES PRIVATE LIMITED - Appellant
Versus
JAY ENGINEERING WORKS LIMITED - Respondent
Interim Application 3818 of 1990
Decided On : 09/13/1991
M.L.MANGALA, PARVIN ANAND, R.K.JOHN
The use of a deceptively similar trademark for cognate and allied goods is likely to cause confusion and deception among consumers and constitutes infringement of the prior user's trademark rights.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF TRADEMARKS - COGNATE GOODS - BALANCE OF CONVENIENCE - INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, a manufacturer of electrical appliances, sought an injunction against the defendant, who intended to use the trademark "pearl" for its electric fans and components. Plaintiff claimed prior user and reputation for its "pearl" trademark for electrical goods, including washing machines, electric irons, and heating and lighting appliances.
Finding of the Court:
The court found that the defendant had not been using its trademark "perle" for electric fans and components and that the plaintiff was the prior user of the "pearl" trademark for electrical appliances. The court also found that the goods of the plaintiff and the defendant were cognate and allied goods, sold through the same channels and to the same customers.
Issues: 1. Whether the defendant's intended use of the "pearl" trademark for electric fans and components would infringe the plaintiff's trademark rights. 2. Whether the plaintiff had acquired a reputation and goodwill in the "pearl" trademark. 3. Whether the balance of convenience favored the grant of an injunction.
Ratio Decidendi: 1. The court held that the defendant's intended use of the "pearl" trademark for electric fans and components would infringe the plaintiff's trademark rights because the marks were deceptively similar and the goods were cognate and allied. 2. The court found that the plaintiff had acquired a reputation and goodwill in the "pearl" trademark through its prior use and extensive advertising. 3. The court held that the balance of convenience favored the grant of an injunction because the plaintiff would suffer irreparable harm if the defendant were allowed to use the "pearl" trademark.
Final Decision: The court granted an injunction restraining the defendant from using the "pearl" trademark for electric fans, components, and regulators.
( 1 ) M/s Pearl Appliances Pvt. Ltd. are seeking injunctionagainst M/s Jay Engineering Works Limited who are intending to use the trademark consisting of the words "pearl" for its products namely fans and components thereof. Plaintiff has based his claim mainly on the ground that he isprior user of this , registered trade mark and has earned reputation and goodwill because of his superior pro ducts.
( 2 ) THE plaintiff s case is that he is one of the leading manufacturersand traders of "electrical appliances". Plaintiff is the proprietor of trade markconsisting of the word "pearl" for its electrical goods. This trade mark wasoriginally registered in the name of Raman Electricals (P) Ltd. but subsequentlyby virtue of the Deed of Assignment plaintiff took over this trade mark. Plaintiff has been using this trade mark extensively and continuously. Plaintiffhas been issuing advertisement for its products under this trade mark as a resultof which they have earned a goodwill and reputation. Plaintiff s trade markis registered under class 7 in respect of washing machine which is also coveredunder class 11 and has been accepted for registration under class 9 for electricirons". Plaintiff has been using this trade mark "pearl" for the last morethan 15 years for its various electrical appliances. The defendants intend toadopt this trade mark "pearl" for its product namely fans with components,the trade mark which the defendants wants to adopt is deceptively similar/ identical with that of the registered trade mark of the plaintiff. Because of this similarity the defendants are going to infringe the right of the plaintiff of passingoff. Not only there is infringement of his right but because of the use of similartrade mark by the defendant, the reputation of the plaintiff will be effectedadversely. Defendant filed an: application for registration of the trade mark"pearl" which was published in Journal dated 1/08/1990. When theapplication appeared in the Journal, only then the plaintiff acquired the knowledge about the defendant s intention to use this trade mark "pearl". Onacquiring this knowledge plaintiff lodged a protest with the defendant and alsointimated that plaintiff is the prior and extensive user of the trade mark"pearl" therefore the defendant should desist from using the same. Theprotests from the plaintiff fell on the deaf ear of the defendant hence thisapplication.
( 3 ) DEFENDANT contested this application, inter alia on the grounds thatdefendant is the registered proprietor of trade mark pearl" in respect ofelectric fans, components thereof and electric regulators in class 11. Defendantgot its trade mark with word "perle" registered on 7/01/1974. Thesaid registration is still valid. Even otherwise there is no infringement of anyright of the plaintiff. In fact, it is the plaintiff whose trade mark is deceptivelysimilar to that of the defendant. Plaintiff s trade mark was registered in 1983,whereas defendant s trade mark "perle" was registered in 1974. It is thus theplaintiff who is guilty of concealment of this fact. The defendant is a priorregistrant of its trade mark "perle". Defendant has a right to use the trademark "perle" for electric fans because plaintiff is registered only for heatingand lighting electrical appliances and not for cooling appliances like fans. Thetrade mark of the plaintiff does not cover electric fans and to. this extent he hasmisrepresented the facts. Plaintiff does not deserve any discretion of thiscourt.
( 4 ) I have heard Mr. M. L. Mangla, Counsel for the plaintiff andmr. Praveen Anand for the defendants. Both the Counsel have placed relianceon the fact that they are proprietor of their respective trade marks. Plaintiff isseeking relief on the ground of continuous user of this trade mark whereasdefendant is challenging the claim of the plaintiff on the ground of prior- registtant of its trade mark "perle". Further according to defendant, plaintiff strade mark is registered fo
