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High Court Of Delhi
MODI THREADS LIMITED - Appellant
Versus
SOM SOOT GOLA FACTORY - Respondent
Interim Application 8959 of 1988
Decided On : 12/04/1990
TRADEMARK - INFRINGEMENT - COCK DEVICE AND CARTONS - SIMILARITY - PASSING OFF - LOCUS STANDI - ASSIGNMENT DEED - DELAY IN SUIT - INJUNCTION - NEW DEVICE - CONFUSION AMONGST PURCHASERS - DISTINGUISHING FEATURES - AVERAGE PURCHASER - EXCLUSIVE USER - REGISTERED TRADEMARK - STATUTORY RIGHT - GENERAL PRINCIPLES OF INJUNCTION.
Fact of the Case:
Modi Threads Limited, the plaintiff, filed a suit against the defendants for infringing their registered trademark, "cock BRAND," comprising a device of a cock wearing a coat and trousers. The defendants used a similar trademark and cartons, causing confusion among purchasers. The plaintiff sought permanent injunctions to restrain the defendants from infringing the trademark and passing off their goods as those of the plaintiff.
Finding of the Court:
The court held that the plaintiff had locus standi to file the suit as they had acquired proprietary rights in the trademark through an assignment deed, even though the transfer of the trademark in their name was pending before the Registrar of Trade Marks. The court also found that the defendants had infringed the plaintiff's registered trademark by using a similar device and cartons, and that there was a likelihood of confusion among purchasers.
Issues: 1. Whether the plaintiff had locus standi to file the suit despite the pending transfer of the trademark in their name. 2. Whether the defendants' use of a similar trademark and cartons constituted infringement of the plaintiff's registered trademark. 3. Whether the plaintiff was entitled to an injunction restraining the defendants from infringing the trademark and passing off their goods as those of the plaintiff. 4. Whether the defendants could be allowed to market their goods under a new, dissimilar device.
Ratio Decidendi: 1. The court held that the plaintiff had locus standi to file the suit as they had acquired proprietary rights in the trademark through an assignment deed, even though the transfer of the trademark in their name was pending before the Registrar of Trade Marks. The court relied on judgments from the Madras and Mysore High Courts, which held that an action for infringement of a trademark can be maintained even before an order is passed under Section 35 of the Trade Marks Act. 2. The court found that the defendants had infringed the plaintiff's registered trademark by using a similar device and cartons, and that there was a likelihood of confusion among purchasers. The court noted that the plaintiff's trademark had acquired a lot of reputation and was known as "murga CHHAP" in the trade. 3. The court held that the plaintiff was entitled to an injunction restraining the defendants from infringing the trademark and passing off their goods as those of the plaintiff. The court confirmed the injunction already granted till the disposal of the suit. 4. The court clarified that the defendants were not debarred from marketing their goods under a new, dissimilar device of a cock, which was filed in the case.
Final Decision: The court confirmed the injunction already granted till the disposal of the suit, restraining the defendants from infringing the plaintiff's registered trademark. The court also allowed the defendants to market their goods under a new, dissimilar device of a cock.
( 1 ) M/s. Modi Threads Limited, a company incorporated under the Indian Companies Act, has brought the suit seeking permanent injunctions against the defendants restraining them from infringing the trade mark of the plaintiff, namely, "cock BRAND" comprising of the device of the cock pertaining to threads and the yarn of the textile material and also restraining the defendants etc. from selling, advertising in any manner their threads and yarn of textile material in the impugned cartons or in similar or colourable cartons producing stylish imitation and substantial reproduction of the cartons of the plaintiff and also restraining them from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in threads and yarns of textile material under the impugned cock device and the impugned cartons or any other mark, device or carton, as may be identical to and/or deceptively similar with the trade mark and carton of the plaintiff. Relief of rendition of accounts and delivering of all the impugned articles have been also sought in the suit.
( 2 ) IN the suit the plaintiff has moved an application for grant of interim injunction till the disposal of the suit as contained in para 22 of the application. Ad interim ex parte injunction was granted vide order dated December 8, 1982. The defendants have moved two applications seeking revocation of the interim injunction granted and seeking some other relief in the alternative as they have now put up a draft device of cock which is stated to be not similar with the alleged registered device of the cock and permission is sought that the defendants may be allowed to market their goods under the new device.
( 3 ) I have heard arguments in these applications and proceed to dispose them of by this order.
( 4 ) THE facts mentioned in the plaint, in brief, are that the plaintiffs predecessor M/s. Modi Thread Mills, Modinagar, had been engaged in the business of manufacturing, processing, altering, exporting and selling cotton, silk, synthetic threads and yarns for several decades and in the year 1966 it adopted the trade mark comprising of a cock wearing a coat and a pair of trouser and standing on the two legs in a human posture and the same is referred as "cock BRAND" and this trade mark has been used continuously and extensively by it since very inception. It is pleaded that in 1983 the plaintiff took over the business, properties, liabilities, goodwill, trade mark and copyright of M/s. Modi Thread Mills and since then the plaintiff has been using the said trade mark in respect of the aforesaid mentioned goods continuosly and extensively all over India. The aforesaid trade mark stands registered under the trade mark registration No. 234324 dated March 22,1966, in class 23 in Part a of the Register for yarns and threads of textile materials in the name of M/s. Modi Thread Mills and the said registration is stated to be holding valid up till now and is in full legal force. It was pleaded that the plaintiff has been selling the "cock BRAND" threads in two cartons having capacity of 25 and 150 tubes each and the carton comprises a colour combination of grey, white and brown and upper portion of the carton comprises a square device within which the said device of the "cock BRAND" and the trade mark registration number appear with a circular device in brown border and blue background and adjacent to the said square is a rectangular device within which the trade mark MODI THREAD along with the expression "no. 60 GASSED MERCERISED" appear and then the description of the other carton of the plaintiff is also given and specimen cartons have been filed along with the plaint which are marked a and c . It was pleaded that the device of COCK and the material packed in the aforementioned cartons have acquired tremendous and enviable reputation in respect of the excellent quality of the goods of the plaintiff/its predecessor amongst the purchasing public and the tr
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