A prior user of a trade mark has superior rights in passing off actions, preventing unauthorized use by subsequent users, especially when marks are likely to confuse consumers.

1. Though the matter was earlier posted for consideration of the vacate stay petition but on 19-6-97, both the counsel submitted that the main matter (i.e. appeal) itself could be heard and finally disposed of. Accordingly the appeal itself was heard on merits.

2. This is defendant's appeal challenging the order of the II Additional Chief Judge, City Civil Court, Hyderabad dt. 13-12-96 in I.A. No. 649/96 in O.S. No. 14/96. By the impugned order the Court below granted an injunction in favour of the respondent / plaintiff restraining the appellant / defendant from using the trade mark in question i.e. "Mathurag Ghee" with the pictoral device of Lord Krishna in sitting posture.

3. The learned counsel appearing for the appellant strenuously contended that the impugned judgment and order of the lower Court is illegal and without jurisdiction and the Court below has not applied its mind to the facts of the case properly and as such the impugned order is liable to be set aside. On the other hand the learned counsel for the respondent strenuously supported the impugned order.

4. In order to appreciate the rival contentions I have to summarily noted the facts of the case. For the sake of convenience I refer to the ranking of the parties as assigned by the Court below, as plaintiff and defendant.

5. It is the case of the respondent / plaintiff that he started manufacturing and marketing ghee under the trade name Mathura Ghee at Vijayawada from 1990. For the purpose of his business he adopted the trade mark as Mathura Ghee for marketing ghee. He also adopted a pictoral device of Lord Krishna in sitting posture, taking out butter from the pot. He stated that the pictoral device of the pot are printed in a distinctive blue and red colours and silver white background which is surrounded by the bright red background, on pouches. The plaintiff further submitted that he has spent a sum of Rs. 6.0 lakhs for promotion of the sales of the ghee and due to his untiring efforts and huge investment and the parity of the quality maintained, his product ghee has assumed reputation in the market and as such it has become an household word among the consumers. He submitted that the housewives identify his ghee manufactured with the trade mark as Mathura Ghee and with pictoral device of Lord Krishna in the sitting posture. As a result the turnover of his ghee during the year 1995-96 reached to an amount of Rs. 53,38,042/-. His turnover itself reflects the reputation he has built. The plaintiff further submitted that to safeguard his trade mark he filed an application for its registration under the Trade and Merchandise Markets Act, 1958 vide his application No. 677822 on 24-8-95 claiming the use of the trade mark from the year 1990. He further submitted that he got trade mark caution notice published in Eenadu, telugu daily on 18-11-95, warning the ghee manufacturers against the adopting and marketing ghee under the said trade mark. When the things stood as that, he learnt that the appellant / defendant started manufacturing and marketing ghee in pouches bearing the replica of the petitioner's trade mark by adding only a letter "G" to the petitioner's trade mark, making it to read as "Mathurag". He also adopted the same Lord Krishna in the sitting posture taking butter from the pot. He further submitted that a comparison of both the pouches filed along with the plaint would clearly indicate that the defendant has borrowed all the features from the plaintiff's pouches so as to have a trade mark as "Mathurag" by committing piracy and infringement of the plaintiff's copy right in the trade mark. The plaintiff further alleged that immediately after coming to know of this