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High Court Of Delhi
B.K.ENGINIRING COMPANY - Appellant
Versus
UBHI ENTERPRISES (REGD.) - Respondent
First Appeal Order 99 of 1984
Decided On : 11/12/1984
PASSING OFF - CYCLE BELLS - INJUNCTION - HOUSE MARK "B. K." - DECEPTIVE SIMILARITY - INJURY TO GOODWILL - UNFAIR COMPETITION - BALANCE OF CONVENIENCE - TEMPORARY INJUNCTION GRANTED.
Fact of the Case:
Plaintiffs, B. K. Engineering Co., manufacturers of cycle bells under the trade mark Crown and Venus, sued defendants, UBHI Enterprises, for passing off their cycle bells under the trade mark "b. K.-81". Plaintiffs claimed that defendants' mark was deceptively similar to their house mark "b. K." and was likely to cause confusion and deception in the course of trade.
Finding of the Court:
The court held that defendants' mark "b. K.-81" was deceptively similar to plaintiffs' house mark "b. K." and was likely to cause confusion and deception in the course of trade. The court also held that defendants' use of the mark "b. K.-81" was an injury to plaintiffs' goodwill and constituted unfair competition. The court further held that the balance of convenience favored the grant of a temporary injunction.
Issues: 1. Whether defendants' mark "b. K.-81" was deceptively similar to plaintiffs' house mark "b. K." and was likely to cause confusion and deception in the course of trade. 2. Whether defendants' use of the mark "b. K.-81" was an injury to plaintiffs' goodwill and constituted unfair competition. 3. Whether the balance of convenience favored the grant of a temporary injunction.
Ratio Decidendi: 1. The court held that defendants' mark "b. K.-81" was deceptively similar to plaintiffs' house mark "b. K." and was likely to cause confusion and deception in the course of trade because: * The marks were visually and phonetically similar. * The marks were used on similar products. * The marks were used in the same market. 2. The court held that defendants' use of the mark "b. K.-81" was an injury to plaintiffs' goodwill and constituted unfair competition because: * Plaintiffs had built up a reputation and goodwill in their house mark "b. K." * Defendants' use of the mark "b. K.-81" was likely to deceive consumers into believing that defendants' products were those of plaintiffs. * Defendants' use of the mark "b. K.-81" was likely to divert customers from plaintiffs to defendants. 3. The court held that the balance of convenience favored the grant of a temporary injunction because: * Plaintiffs had established a prima facie case of passing off. * The harm to plaintiffs if the injunction was not granted was greater than the harm to defendants if the injunction was granted.
Final Decision: The court allowed the appeal and issued an injunction against the defendants, U. B. H. T. Enterprises, restraining them, their servants, agents, representatives and dealers from manufacturing, selling or offering for sale or otherwise dealing in cycle bells under the mark "b. K.-31' or "b. K. " or any other mark which may be identical or deceptively similar to the house mark "b. K. " of the plaintiffs till the decision of the suit.
( 1 )
"in the interests of fair trying and in the interests of all who may wish to buy and sell goods. the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing rights. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straightforward principle that trading must not only be honest but must not even unintentionally be unfair". [parker Knoll Ltd. v. Knoll International Ltd. Lord Morris ).
( 2 ) I preface my judgment with this statement of the law The reason is that it contains a complete answer to the question raised in this appeal.
( 3 ) THE plaintiffs, the present appellants, B. K. Engineer ing Co. of Delhi, have brought a passing-off action against the defendants, the present respondents, UBHI Enterprises of Ludhiana. The plaintiffs claim permanent injunction, accounts and damages. The plaintiffs and the defendants are in the same line of business. Both firms are engaged in the manufacture of cycle bells. The plaintiffs started manufacturing bells as early as 1971. They adopted "b. K. " as their house mark they, manufacture cycle bells under the trade mark Crown and Venus. The house mark "b. K. " is used, prominently and in conspicuous manner, on the cartons as a circular logo device inthis form "b. K.-81". On the stand of the bell and the carton the name of the manufacture "b. K. Engineering Co. " is stamped.
( 4 ) THE defendants are marketing cycle bells under the. trade mark "b. K.-81". They entered the manufacturing line in 1981. The mark "b. K.-81" is embossed on the dome-shaped cover as well as on the push handle. "ubhi Enterprises Regd " is engraved on the dome-shaped cover alone; with words b. K. 81". On the stand of the bell and carton their manufacturing name UBHI appears.
( 5 ) NOW the plaintiffs case is that the defandants mark b. K.-81 is deceptively similar to the house mark "b. K of the plaintiffs and is bound to cause confusion and deception in the course of trade.
( 6 ) THE plaintiffs attach cardinal importance to their house mark "b. K. " They claim that they are the distinguishing characterstics of their goods. They seek to restrain the defendants from marketing their products under the trade mark "b. K.-81".
( 7 ) THE plaintiffs made an application for a temporary injunction seeking to restrain the defendants from using the mark "b. K.-81" on their cycle bells till the decision of the suit. A learned single judge by order dated 30-4-1984 refused the injunction. From his order the plaintiff appeal to this Court.
( 8 ) THE learned judge recorded the statement of Manmohan Singh, a partner of the defendant firm. He admitted that the plaintiffs have been selling cycle bells under the trade marks Crown and Venus. Immediately the judge appointed a local commissioner who, accompanied by the parties, went to the market on that very day. The commissioner found that the Crown and "b. K. " bells of the plaintiffs were on sale in the market. He collected plaintiffs cartons, big and small, having in a conspicuous manner "b. K. " circular house mark on. them,
( 9 ) THE learned judge held that on the dome-shaped cover of the bell manufacturer s mark UBHI. Enterprises of the defendants is engraved and "if any customer sees the bell carefully he can at once make out that the same is not manufactured by the plaintiff but by the defendant whose name appears on the bell . On balance of convenience he was disinclined to debar the defendants from manufacturing and selling bells bearing "b. K.-81". He therefore refused injunction but directed the defendants to maintain accounts.
( 10 ) WHETHER the learned Judge was right in retusing injunction on the admitted facts that the plaintiffs manufacturing name and house mark is "b. K. " and the defendants trade mark is "b. K.-81" is the q
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