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1960 Supreme(MP) 206
IN THE HIGH COURT OF MADHYA PRADESH AT JABALPUR
P.K. TARE, J.
Mohan Lal Ramprasad
Vs.
Lal Mohammad
Misc. F. As. No. 139 and 146 of 1960
Decided On: 09.08.1960
For Appellant/Petitioner/Plaintiff: A. Awasthi
For Respondents/Defendant: R.S. Padhye and P.S. Khairwadkar
In cases of trade mark infringement, the court must consider the overall similarity of the labels, including the selection of colors, the picture of a cow, and the name of the firm, to determine if there is a likelihood of confusion or passing off.
Headnote:
TRADE MARK - INFRINGEMENT - INJUNCTION - SIMILARITY OF LABELS - BALANCE OF CONVENIENCE - [ORDER 39, RULE 2, CODE OF CIVIL PROCEDURE, 1908]
Fact of the Case:
The Plaintiff, a registered trade mark owner, filed a suit against the Defendant for infringement of its registered trade mark by putting similar labels in the market. The Plaintiff's trade mark consisted of an oblong square with a green background, a picture of a cow in the middle, and the name of the Plaintiff firm. The Defendant's labels also had a green background, a picture of a cow, and the name of the Defendant firm. The District Judge granted a temporary injunction to the Plaintiff on certain terms, including an undertaking by the Plaintiff to pay to the Defendant one-twelfth of the total net profits earned by it in its bidi business during the continuance of the injunction for each of the two labels E and G.
Finding of the Court:
The Court found that the only similarity between the two labels was in the selection of colors and the picture of a cow. The labels were otherwise distinctive and could be easily identified by a mere perusal. The Court also found that the Plaintiff's business was spread over four different States, while the Defendant's business was centered in three districts of Madhya Pradesh, where the Plaintiff had practically no sales. The Court further found that the Defendant had been using the labels in question for the last 24 years and had built up its business on the reputation of that particular trade mark.
Issues: 1. Whether the Defendant's labels infringed the Plaintiff's registered trade mark? 2. Whether the grant of a temporary injunction was justified?
Ratio Decidendi: The Court held that the Defendant's labels did not infringe the Plaintiff's registered trade mark. The Court applied the tests laid down by the Privy Council and the Supreme Court in cases of trade mark infringement and found that there was no likelihood of confusion or passing off. The Court also held that the grant of a temporary injunction was not justified as it would cause irreparable injury to the Defendant, while the Plaintiff would not suffer any irreparable injury if the injunction was not granted.
Final Decision: The Court dismissed the Plaintiff's appeal and allowed the Defendant's appeal. The temporary injunction granted by the District Judge was vacated.
P.K. TARE, J.
1. This order shall also govern the disposal of Misc. (First) Appeal No. 146 of 1960 (Firm Lal Mohammad, a registered firm through partners v. M/S Mohanlal Harprasad a registered firm through partners).
2. The present appeal is by the Plaintiff against the order, dated, 9-8-1960, passed by Shri S.M. Pagnis, Distiict Judge, Hoshanga bad in Civil Suit No. 7-A of 1959, granting a temporary Injunction to the Plaintiff under Order 39, Rule 2 of the Code of Civil Procedure on certain terms. The Plaintiff in the present appeal questions the imposition of the terms. The term imposed was that the Plaintiff should undertake and bind itself in writing that in case it fails in the suit, it will pay to the Defendant for each of the two labels E and G, one-twelth of the total net profits earned by it in its bidi business during the continuance of this injuncrion and for this purpose, the Plaintiff was directed to keep regular, complete and correct accounts of its business.
3. The connected appeal, namely, Misc. (First) Appeal No. 146 of I960 is filed by the Defendant against the same Older of the District Judge. The Defendant impugns the order relating to giant of a temporary injunction.
4. The Plaintiff-Appellant has a registered trade mark, which is marked as Exh. A and Exh.B. in the documents filed by the Plaintiff. The wrapping covers are kept in a separate envelope. The Plaintiff's trade mark consists of oblong square with with the background of green colour. At the top is printed the name of the Plaintiff firm, namely, Mohanlal Harprasad and Company, Sihora(sic) Road. At the bottom the same thing is printed in Hindi. In the middle there is a circle within which is panted the picture of a cow in saffron colour with a green background showing the earth, and white and blue background showing the sky. On the lour corners of the circle are printed the words in English and Hindi Bidi No. 7. On the left of the circle are printed words 'G. Jabalpur' while on the right are printed Urdu words. Wrapper of the Bidis is a plain white Jhilli paper at d(sic) on it is stuck up an oblong piece of paper with white, blue and red colour showing the name of the founder, namely, Lalcband Agrawal and the name of the firm, namely, Mohanlal Harprasad, Sihora Road, District Jabalpur.
5. The Plaintiff filed the present suit, alleging that the Defendant-firm had infringed its registered trade mark by putting in the market similar labels. Therefore, the Plaintiff's suit was mainly based on the allegation of infringement of a registered trade-mark. The Plaintiff's case, it appears, was not based on any passing of action, nor is it the Plaintiff-Appellant's case that the Defendant-firm tried to pass off its goods as the goods of the plain tiff-Appellant.
6. It would, therefore, be necessary to examine the particulars of the labels E and G of the Defendant-Respondent-firm, regarding which the learned District Judge has granted a temporary injunction on certain terms.
7. The label E of the Defendant-Respondent consists of a red border similar to the label of the Appellant. It has a green background. On the top, are printed the words 'Lal Mohammad Jan Mohamad Harda'. The same words are printed at the bottom in Hindi. Instead of a circle there is an anclosure of a heart-shape, wherein is shown a cow with green background for the earth and dark blue back-ground for the sky, The cow in the Appellant's label (Exh. A and Exh. B) is shown a little side wards and her head towards the right side of the person 8eeing the same. In the Defendant's labels Exh. E and Exh. G, the cow faces towards the left of the person seeing the label. Upon a perusal of the two labels side by side, the only limiiarity(sic) between the two appears to be that they consist of yellow, red, green and blue back ground and there is a cow shown in both the labels. Besides these facts, the two labels do not appear to bear any similarity. Upon a visual impression they appear to be quite dissimi
