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IN THE HIGH COURT OF DELHI
S.MURALIDHAR
ATUL RAWAL T/A M/S.NAVIN POLYCON - Appellant
Versus
S.B.EQUIPMENTS - Respondent
FAO (OS) 364/2008 and CM APPL No. 12142/2008
Decided On : 20-10-2008
TRADEMARK - Passing off - Code of Civil Procedure, 1908 (CPC) - Trade Marks Act, 1999 - [Order 39 Rules 1 and 2 CPC, Class 3 of the Schedule to the Trade Marks Act, 1999] - The court discussed the passing off of trademarks and the use of the mark 'SUPER BRIGHT' by the defendant in the context of tenders invited by the Army. The court examined the defendant's intention to pass off its products as those of the plaintiff and the defendant's assertion that the use of 'SUPER BRIGHT' was only as a descriptive term. The court found that the defendant's use of the mark was dishonest and likely to cause confusion, leading to the grant of an injunction in favor of the plaintiff.
Fact of the Case:
The appellant, a detergent manufacturer, filed a suit against the respondent for passing off its trademark 'SUPER BRIGHT' and sought an ad interim injunction. The respondent had submitted bids for supplying 'SUPER BRIGHT' detergents to the Army, leading to a dispute over the use of the trademark.
Finding of the Court:
The court found that the defendant's use of the mark 'SUPER BRIGHT' was dishonest and likely to cause confusion, leading to the grant of an injunction in favor of the plaintiff. The court also noted that the plaintiff had a prima facie case and that the balance of convenience favored granting the injunction.
Issues: The court considered whether the defendant intended to pass off its products as those of the plaintiff and whether the plaintiff had acquiesced in the defendant's use of the trademark.
Ratio Decidendi: The court held that the defendant's use of the mark 'SUPER BRIGHT' without informing the Army that it was not manufacturing the product under that mark was prima facie a dishonest use of the plaintiff's mark, leading to the grant of an injunction in favor of the plaintiff.
Final Decision: The appeal was allowed, and an injunction was granted in favor of the plaintiff, restraining the defendant from using the trademark 'SUPER BRIGHT' and similar marks. The injunction would continue until the disposal of the suit.
1. Admit. With the consent of learned counsel for the parties, the appeal is taken up for final hearing.
2. This appeal is directed against the impugned order dated 11th July 2008 passed by the learned Single Judge dismissing the appellant s IA No. 9140 of 2007 being application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 ( CPC ) in suit CS (OS) No. 1454 of 2007 filed against the respondent-defendant. The prayer in IA No.9140 of 2007 was for an ad interim injunction restraining the defendant from manufacturing, selling, marketing, advertising or in any manner whatsoever using the trademarks SUPER BRIGHT , SUPER BRIGHT EL , SUPER BRIGHT EL-C , SUPER BRIGHT EL-81 , SUPER BRIGHT HD ULTRA and SUPER BRIGHT Bleach or any other trademark which is deceptively similar or confusingly similar to the above trademarks.
3. The appellant is in the business of manufacturing and selling various detergent products. The case of the appellant is that it has developed several unique and novel detergent products solely on the basis of its own research. Its products are being marketed and sold under the trade mark SUPER BRIGHT followed by suffixes, such as EL, EL-C, EL-81, HD ULTRA,etc . These products, according to the appellant, identify specific detergent products. The documents placed on record in the suit go to show that the appellant has been using the trade mark since 1990 in respect of detergent chemicals. In the year 1999 the appellant developed two different products and starting marketing its products as SUPER BRIGHT ULTRA and SUPER BRIGHT EL-81 . In the year 2001 it applied for and initiated talks for supply of its SUPER BRIGHT range of detergent to the Armed Forces for use in various Army hospitals all over the country. It is submitted that the appellant developed specific formulations for the Army and on 12th October 2004 Director General of Armed Forces (Medical Services) called the appellant for a technical discussion regarding the products. The sample of the appellant s product was tested and approved by the army establishments. In June 2004 the appellant was awarded ISO 9001: 2000 Quality System by International Certifications Limited. On 17th August 2006 the appellant applied for registration of its trade mark SUPER BRIGHT under Class 3 of the Schedule to the Trade Marks Act, 1999 and the said application is stated to be pending registration with the Registrar of Trade Marks. In the plaint the appellant has given the sale figures for the product SUPER BRIGHT for the last four years are as follows: Year Net Sales (Rs.) 2003-2004 1,26,44,573.36 2004-2005 1,43,75,606.61 2005-2006 2,43,36,047.47 20062007 4,87,17,617.88
4. It is claimed that on account of the popularity of its product and use of the mark by it, the appellant has become the exclusive owner of the trade mark SUPER BRIGHT and that any use to the contrary without the leave and consent of the appellant would constitute passing off and encroachment upon the appellant s intellectual property.
5. On 20th December 2004 the Director General of Ordinances Service s (Procurement Division) invited tenders for supply of SUPER BRIGHT Bleached (not for coloured cloth). The technical specification of product was also indicated. The requirement as to marking on the packages, as indicated in the terms and conditions attached to the tender form reads as under:
6. Marking: On initial pack, (a) Cat/Part No. NIV, Nomenclature, Name of manufacture, quality contained therein shall be legibly and indelibly marked on each container. (b) On final pack. Cat/part No. NIV, Nomenclature, Name of manufacture, quality contained therein shall be legibly and indelibly marked on each container also A/T No. and date, inspection Note No. and date, Name and address of manufacturer, Name and address of the consignee should be clearly visible. The tenderer has also to fill the questionnaire which is column No. 8 requires to indicate whether you are the manufa
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