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1990 Supreme(Mad) 563
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE P. K. SETHURAMAN
Lakshmi Pvc Products Private Limited - Appellant
Versus
Lakshmi Polymers - Respondents
No
Decided On : 25 July 1990
A person cannot be restrained from instituting a suit for passing off, even if they have issued threats to that effect. However, the court can direct the parties to maintain status quo pending the disposal of the application for registration of the trade mark.
Headnote:
LAKSHMI PVC PRODUCTS (PVT.) LTD. V. LAKSHMI POLYMERS - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 120(1) - INJUNCTION - THREATS OF PASSING OFF - MAINTAINABILITY OF SUIT - INTERIM INJUNCTION - STATUS QUO - REGISTRATION OF TRADE MARK - PENDING APPLICATION.
Fact of the Case:
Lakshmi PVC Products (PVT.) Ltd. (plaintiff) filed a suit under Section 120(1) of the Trade and Merchandise Marks Act, 1958, seeking an injunction against Lakshmi Polymers (defendant) for issuing threats of passing off of goods and affecting the plaintiff's business reputation. The plaintiff claimed to have adopted the mark 'Lakshmi' since 1984 and incorporated the company in 1987, while the defendant, a partnership firm registered in 1985, claimed to have used the mark 'Lakshmi' for PVC pipe fittings since 1988 and had applied for registration of the mark.
Finding of the Court:
The court found that the defendant had been using the mark 'Lakshmi' for over two years and had applied for registration, while the plaintiff had recently entered the market. The court also noted that the plaintiff had not provided any sales turnover figures, unlike the defendant.
Issues: 1. Whether the suit under Section 120(1) of the Trade and Merchandise Marks Act, 1958, was maintainable in the absence of a registered trade mark? 2. Whether the notice issued by the defendant to the plaintiff constituted an unjustifiable threat? 3. Whether an interim injunction should be granted in favor of the plaintiff?
Ratio Decidendi: 1. The court held that the maintainability of the suit under Section 120(1) of the Act was not being decided at this stage. 2. The court found that the notice issued by the defendant, considering the defendant's prior use of the mark and the application for registration, could not be prima facie considered an unjustifiable threat. 3. The court directed the defendant not to issue any further notices or circulars pending the disposal of the application for registration of the trade mark by the Registrar of Trade Marks.
Final Decision: The court directed the defendant not to issue any further notices or circulars pending the disposal of the application for registration of the trade mark by the Registrar of Trade Marks. It clarified that the defendant was free to file a suit against the plaintiff.
P. K. SETHURAMAN, J.
This is an application filed by the plaintiff praying for an interim injunction restraining the respondent from issuing circulars advertisements and notices threatening action for passing off of goods or any threats affecting the business or its reputation pending disposal of the suit.
2. One of the Directors of the plaintiff-Company has filed an affidavit submitting that the suit has been filed under Section 120 of the Trade & Merchandise Marks Act, 1958, for a declaration that the threat contained in the notice dated 31-5-1990 issued by M/s. Kamath and Kamath, Patent and Trade Mark Attorneys for and on behalf of the defendant contains threats which are not justifiable and for an injunction against the continuance of the threats. Since 1987 the plaintiff has adopted the work 'Lakshmi' as a part of their name, their trade name and their trade mark 'Lakshmi'. Prior to that, Directors of the company had formed a partnership firm in the name of Lakshmi Engineering Industries in 1984. They become eligible to proprietors of the mark with respect to their product from the date of their adoption. Contrary to that right the defendant claiming to have used the mark for the past 2 years on similar products has threatened legal action.
3. If the defendant executes and implements the threat contained in the notice dated 31-5-1990 by sending notices, circulars to plaintiff's customers either directly or through the press media, the plaintiff will be put to irresparable loss. The goodwill and the credit-worthiness will be lost and the financing institutions may demand the return of the loan.
4. In the counter filed by the respondent through a partner of the defendant firm it has been submitted that the suit itself under Section 120 of the Trade and Merchandise Marks Act, 1958 is not maintainable. The defendant firm was constituted under the name and style of 'Lakshmi Polymers' in the year 1985 by a Deed of Partnership dated 25-12-1995. It has been duly registered under the partnership Act.
5. The name Lakshmi occurs in the trading style of several groups concerns of the defendant and they are as follows.
Lakshmi Finance Corporation 1952
Lakshmi Engineering Co. 1966
Lakshmi Agencies 1968
Lakshmi Wood Industries 1983
Lakshmi Marketing 1990
The defendant commenced marketing their PVC pipe fittings bearing their trade mark LAKSHMI from March 1988. The defendant has filed an application for registration of the said trade mark "LAKSHMI" in respect of goods including PVC pipe fittings in the Trade Marks Registry under the Trade and Merchandise Marks Act, 1958. After giving sales, turnover, it has been submitted that PVC pipe fitting bearing the said trade mark 'LAKSHMI' are being sold in various states including the State of Tamil Nadu. The defendant has a depot at Coimbatore for the sale of the said goods in Tamil Nadu.
6. The defendant has also spent considerable amount on advertisements and they have spent a sum of Rs. 64, 000/- on such advertisements over the period 1988-90. While so in May, 1990 it came to the notice of the defendant that the plaintiff had commenced marketing PVC pipe fittings bearing an offending mark 'LAKSHMI'. Accordingly, the defendant duly caused a registered notice dated 31-5-1990 to be issued to the plaintiff in that behalf calling upon them to desist from using the said offending mark LAKSHMI. The plaintiff has sent in interim reply dated 6-6-1990 stating that they have handed over the said notice to their Advocate who will take suitable action including sending a detailed reply in a short time. No such detailed reply has been received; instead, the plaintiff has rushed to the court and filed the present suit.
7. Further denying the averments made in the affidavit filed in support of the application, it has been stated that the suit is not maintainable and the notice dated 31.5.1990 caused to be issued by the defendant to the plaintiff does not contain any unjustifiable threats, but justifiably cal
