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High Court Of Delhi
AMAR SOAP FACTORY - Appellant
Versus
PUBLIC GRAM UDYOG SAMITI - Respondent
Suit 1500 of 1979
Decided On : 10/10/1984
COPYRIGHT - INFRINGEMENT - PASSING OFF - TRADE MARK - JURISDICTION - TERRITORIAL - ADVERTISEMENT IN NEWSPAPER - SUIT FOR INJUNCTION - REGISTRATION OF TRADE MARK - PRIOR USER - SIMILARITY OF MARKS - RELIEF - INJUNCTION - ACCOUNTS.
Fact of the Case:
Plaintiff, a partnership firm, filed a suit for perpetual injunction restraining infringement of copyright, passing off, rendition of accounts, damages, etc. against the defendants, alleging that they were using an identical trade mark 'Talwar Marka' for their soap products, which was deceptively similar to the plaintiff's registered trade mark and artistic label. The defendants contested the suit, claiming that they were the prior users of the mark and that the plaintiff's mark was not distinctive or had acquired any goodwill.
Finding of the Court:
The court held that the plaintiff had territorial jurisdiction to entertain the suit as the defendants had advertised their mark in a newspaper widely circulated in Delhi and had sold their product in Delhi. The court also found that the defendants had failed to discharge the onus of proving that any other person was using the impugned trade mark or that the trade mark 'Sword' and the device of cross swords was registered in the name of The Ganesh Flour Mills Co. Ltd. The court further held that the plaintiff was the prior user of the trade mark 'Talwar Marka' and that the defendants' use of the mark was likely to deceive the unwary class of purchasers. The court also found that the plaintiff was entitled to a permanent injunction restraining the defendants from infringing their registered copyright and trade mark.
Issues: 1. Whether Delhi Courts have territorial jurisdiction to entertain and decide the present suit? 2. Is the plaintiff proprietor of trade mark 'Talwar Marka' in respect of washing soap? 3. Is the plaintiff proprietor of the wrapper entitled 'Talwar Marka'? 4. Does the use of trade mark and wrapper entitled 'Talwar Marka' by the defendant amount to passing of the goods as those of the plaintiff? 5. Have others been using the trade mark having the device of cross-swords in question and if so, what is its effect? 6. Is the plaintiff entitled to rendition of accounts? 7. Relief.
Ratio Decidendi: 1. The publication of an advertisement by the defendants in a newspaper widely circulated in Delhi can be said to be an infringement of the plaintiff's trade mark, giving the court territorial jurisdiction to entertain the suit. 2. The plaintiff, as the registered proprietor of the trade mark 'Talwar Marka' under the Copyright Act and as the prior user of the mark, has the exclusive right to use the mark and is entitled to an injunction restraining the defendants from infringing their registered copyright and trade mark. 3. The defendants' use of the mark 'Talwar Marka' with a similar colour scheme, get up, lay out, and arrangement as that of the plaintiff's label is likely to deceive the unwary class of purchasers and amounts to passing off.
Final Decision: The court granted a decree for permanent injunction against the defendants, restraining them from infringing the plaintiff's registered copyright and trade mark. The relief of rendition of accounts was declined.
( 1 ) IN a suit for perpetual injnction restraining infringement of copyright, passing off, rendition of accounts, damages etc. , the case set up by the plamtiff Amar Soap Factory, in brief is that it. is a partnership firm consisting of four partners duly registered under the provisions of the Indian Partnership Act; that Shri Surjit Singh, one of the partners, is well acquainted with the facts of the case and autherised to file, sign and verify the pleadings for and on behalf of the firm; that the plaintiff is doing the business of manufacturing and selling of all kinds of scaps since the year 1960, continuously and extensively; that since then the plaintiff has been using a. distinctive trade mark recognised by the device of crosssworas and called by the name of Talwar Marka for their products and have acquired a valuable goodwill; that the plaintiff firm is registered proprietor of artistic labe) entitled Talwar Marka which is duly registered under No. A-7562/72 under the provisions of the Copyright Act; that the salient features of the plaintifi artistic label are that two side panels are having device of two swords placed in cross position; one side panel contained the bust portrait of two partners of the plaintiff firm that the overall colour scheme, get up, lay out, arrangement of words of plaintiff soap wrapper in unique and distinctive and its registration is valid, subsisting and effective throughout India; that the plaintiff has acquired exclusive rights for the use of trade mark talwar Marka and none is entitled to use and trade upon the plaintiffs trade mark; that the plaintiffs sales of soap under the impugned mark runs in lakhs of rupees; that the defendants are doing the business of manufacturing of E washing soap under the name and style of M/s. Public Gram Udyog Samiti and had adopted identical trade mark Tslwar Marka" sometime in the year 1977: that the plaintiff immediately served a notice dated 1-8-1977 through their attorney calling upon the defendants to desist the use of trade mark Talwar Marka and consequently the defendants ceased to use the said marka; that the defendants have again started the-use of the impugned trade mark in the year 1979 and again a notice dt. 2-3-1979 calling upon the defendants to desist the use of the said trade mark was served; that the defendants inspite of the service of the notice have not cared to stop the manufacture and sale of soap under the impugned trade mark: that the plaintiff has already filed an application under No. 314116 in Class 3 for the registration of the trade mark Talwar Marka" alon gwith the device of cross-swords under the provisions of Trade and Merchandise Marks Act: that the impugned application was advertised in the Trade Marks Journal No. 716 dated 1-4-1979, to which the defendant has filed an opposition that the similarity between the marks and wrappers of the plaintiff any newspaper being published or having circulation in Delhi; that even the alleged infringement of copyright does not confer any jurisdiction; that the suit of the plaintiff is barred by principles of acquiescence inasmuch as the plaintiff and defendant are trading in the nearby localities to the knowledge of each other; that the claim of the plaintiff over the proprietorship of the trade mark talwar Marka aic subjudice before the Competent Authority; that the defendants are using the said trade mark talwar Marka with the bust photos of two persons bonafidely, honestly and concurrently. On merits, they denied the averments that the trade mark of the plaintiff has become distinctive or has acquired valuable goodwill inasmuch as their trade mark is not at all known in the market and the same is under serious dispute between the parties; that the trade mark SWORD and device of cross swords is already registered in the name of The Ganesh Flour Mills Co. Ltd. under No. 113682 in respect of soaps, duly advertised in Trade Marks Journal No. 133 and as such the pla
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