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High Court Of Delhi
KEDAR NATH - Appellant
Versus
MONGA PERFUMERY AND FLOUR MILLS - Respondent
Interim Application 1680 of 1972
Decided On : 11/23/1972
TRADEMARK - INFRINGEMENT - SUDERSHAN DHOOP - SIMILARITY OF CARTONS AND LABELS - DECEPTIVE SIMILARITY - INJUNCTION GRANTED - STAY OF PROCEEDINGS UNDER SECTION 111 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 REFUSED.
Fact of the Case:
Plaintiff, a manufacturer and seller of Dhoop and Agarbatti under the trade mark SUDERSHAN, filed a suit for permanent injunction restraining the defendant from infringing the plaintiff's registered trade mark and copyright and from passing off his goods as those of the plaintiff. The defendant claimed that he had been using the trade mark VIJAY SUDERSHAN since 1952 and that the plaintiff's registration was obtained mala fide and illegally.
Finding of the Court:
The court found that the defendant's cartons and labels were deceptively similar to the plaintiff's and that the use of the mark VIJAY SUDERSHAN was likely to deceive purchasers. The court also found that the defendant had not placed any material on the record to prove a prima facie case that the plaintiff's registration was invalid or that the defendant had been carrying on business since 1952 as alleged by him.
Issues: 1. Whether the defendant's use of the mark VIJAY SUDERSHAN was an infringement of the plaintiff's registered trade mark SUDERSHAN? 2. Whether the plaintiff's registration was obtained mala fide and illegally? 3. Whether the defendant was entitled to a stay of proceedings under Section 111 of the Trade and Merchandise Marks Act, 1958?
Ratio Decidendi: 1. The court held that the defendant's use of the mark VIJAY SUDERSHAN was an infringement of the plaintiff's registered trade mark SUDERSHAN because the two marks were deceptively similar and were likely to deceive purchasers. 2. The court held that the plaintiff's registration was not obtained mala fide and illegally because the defendant had not placed any material on the record to prove a prima facie case. 3. The court held that the defendant was not entitled to a stay of proceedings under Section 111 of the Trade and Merchandise Marks Act, 1958 because the defendant had not shown that the petition under Section 111 was bona fide.
Final Decision: The court granted a temporary injunction restraining the defendant from using the mark VIJAY SUDERSHAN and from selling or offering for sale dhoop bearing the trade mark SUDERSHAN. The court also dismissed the defendant's application for a stay of proceedings under Section 111 of the Trade and Merchandise Marks Act, 1958.
( 1 ) THIS oder disposes of I. A. S. 1032 and 1680 of 1972. The plaintiff has instituted a suit for permanent injunction restraining the defendant from infringing the plaintiff s registered trade mark and copyright and from pass- ing off his goods as those of the plaintiff. The plaintiff also claims rendition of accounts. The material facts as stated in the plaint are that the plaintiff is a manufacturer and seller of Dhoop and Agarbatti and is trading under the name and style of Mysorewala Suga. ndhit Dhoop Factory at Delhi. The plaintiff is manufacturing and selling dhoop under the trade mark SUDERSHAN which is in regular and continuous use since the year 1954. The plaintiff s trade mark SUDERSHAN is registered under the Trade and Merchandise Marks Act. 1958. The plaintiff also holds copyright registration relating to the artistic representation of its cartons pertaining to SUDERSHAN DHOOP BATTI. It is alleged that by virtue of the aforesaid registration as well as by long and established user and wide publicity the plaintiff has acquired right to the exclusive use of SUDERSHAN trade mark in relation to DHOOP BATTI so much so that the use of any such or similar trade mark with or without any prefix or suffix by another trader is bound to cause confusion and dhoop of such manufacturer is liable to be associated with the plaintiff s goods and his business. Defendant is also a manufacturer of dhoop and it is alleged that he has deliberately infringed the plaintiff s trade mark SUDERSHAN and has also copied artistic design relating to the plaintiff s cartons and wrappers. The defendant has introduced its dhoop with the trade mark SUDERSHAN prefixed by the word VIJAY in small print on its cartons and wrappers. The defendant is also a printer as he is running his own press and is printing infringing cartons, labels, seals and wrappers bearing SUDERSHAN trade mark with the word VIJAY in small size added thereto. The defendant is infringing the plaintiff s trade mark by printing the cartons at his own press and by using a mark which is a colourable imitation and deceptively similar to the plaintiff s SUDERSHAN DHOOP. It is alleged that the defendant has deliberately copied the trade mark and the design of the wrapper and the cartons pertaining to the plaintiff in order to deceive the public and in order to to earn profits to which he is not entitled and in order to trade upon the goodwill and reputation acquired by the plaintiff. The plaintiff has filed his cartons of SUDERSHAN dhoop which are marked A and B, while the cartons of the defendant have been marked C and D. The plaintiff has also alleged that the defendant s business is of recent origin as compared to the old and established business of the plaintiff. The plaintiff Got his trade mark registered on September 28 1960. The plaintiff claims a decree for permanent injunction restraining the defendant, its servants, agents and representatives from infringing the trade mark SUDERSHAN belonging to the plaintiff in relation to dhoop-batti. The plaintiff has also claimed an injunction restraining the defendant from reproducing, printing wrappers, cartons, labels, seals or artistic representation amounting to infringement of copyright.
( 2 ) THE defendant has filed his written statement. The main defence of the defendant to the suit is that the registration of the trade mark has been obtained by the plaintiff mala fide and illegally. The defendant says that he has been carrying on the business since 1952 and it is the plaintiff who is guilty of piracy of the defendant s trade mark. It is denied that the plaintiff came into business in 1954. According to the defendant the plaintiff started his business in 1965. It is further stated that the defendant has been trading in dhoop and agarbatti since 1952 and has been selling dhoop and agarbatti under the trade name of VIJAY SUDERSHAN, VIJAY DURGA and VIJAY SUDAMA in case of dhoop-batti and has been using the cartons, wrapper
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