The acquisition of a secondary meaning by a word or mark is a question of fact that requires evidence from both parties and is crucial in determining trademark infringement and passing off.

JUDGMENT :

Madan B. Lokur, J.

1. By this order, I propose to decide IA No. 2915 of 2004, which is an application filed by the Plaintiff under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC) for an injunction restraining the Defendants from, in any manner, dealing with erasers or any other allied goods under the trademarks Plasto and No dust, which are similar to the trademarks Plasto and 'Non dust' used by the Plaintiff on its erasers, so as to pass off its goods as those of the Plaintiff. An ex parte a interim injunction was granted on 6th May 2004 and this was argued for confirmation on 6th July 2005 when orders were reserved.

2. The Defendants filed IA No. 4129 of 2004 under Order 39, Rule 4 of the CPC for vacation of the ex parte ad interim injunction. Although no separate arguments were advanced in respect of this application, learned Counsels agreed that the decision in IA 2915 of 2004 would also dispose of IA No. 4129 of 2004 This order will, therefore, dispose of IA 4129 of 2004 also.

3. The Plaintiff is an established manufacturer of stationery items such as pencils, erasers, sharpeners etc. since 1957. It sells its products under the trademarks Nataraj and Apsara of which it is a registered proprietor.

4. Some time from August 1989 onwards, the Plaintiff started manufacturing and selling Nataraj Plasto erasers and in August 1993 the Plaintiff started manufacturing and selling Apsara Non dust erasers. The Plaintiff applied for registration of the trademarks Plasto and Non dust and these were pending consideration with the concerned authorities. During the pendency of the present proceedings, the applications for registration of the trademarks are said to have been allowed. Quite apart from this, the Plaintiff says that it has had considerable success in the marketing of its erasers over the years and has produced the sale figures and advertising expenses for each of these products. It is submitted by the Plaintiff that Plasto and Non dust have acquired a secondary meaning associated with the erasers of the Plaintiff.

5. Defendant No. 2 Faber Castell is a subsidiary of A.W. Faber Castell Aktiengellschaft, an internationally recognised German company also concerned in the manufacture and sale of stationery items, including wax crayons, pencils and erasers. According to the Plaintiff, it came to know in February 2004 that Defendant No. 2 is manufacturing erasers and selling them through Defendant No. 1 under the names Plasto and No dust. According to the Plaintiff the Defendants are trying to pass off their goods as those of the Plaintiff. On these broad facts, the Plaintiff has sought an injunction restraining the Defendants from doing so.

6. The Defendants have, of course, denied the allegations of the Plaintiff and contend that they have been selling their erasers under the trademark Faber Castell and are using the words No dust and Plasto in respect of such erasers since September 2000 and May 2003 respectively. According to the Defendants, these words are generic terms used to describe the erasers; they convey the property, characteristic and quality of the goods and so the Plaintiff cannot claim to have any monopoly over the use of these words. It is denied that the words 'Non dust' and 'Plasto' have acquired a secondary meaning associated with the products of the Plaintiff.

7. There is no dispute that the goods of the Plaintiff are sold under the trademark Nataraj and Apsara, while those of the Defendants are sold under the trademark Faber Castell. There can be no question of any infringement or passing off in so far as these two trademarks are concerned, and indeed this was not even contended by learned Counsel for the Plaintiff.

8. The limited controversy is whether the Defendants are passing off their Faber Castell Fluoro Plasto and 'Faber Castell QT Plasto' and Faber Castell No dust erasers as those of the Plaintiff, that is, Nataraj Plasto and Apsara Non dust and if so whether the Plaintiff is entitled to