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High Court Of Delhi
CENTURY TRADERS - Appellant
Versus
ROSHAN LAL DUGGAR,CO - Respondent
First Appeal (OS) 46 of 1976
Decided On : 04/27/1977
TRADEMARK - PASSING OFF - INJUNCTION - PRIMA FACIE CASE - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - COMMON TO THE TRADE - USER - REGISTRATION - SECTION 27, 106 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - ORDER 39 RULES 1 AND 2, SECTION 151 OF THE CODE OF CIVIL PROCEDURE, 1908 - PRIMA FACIE CASE ESTABLISHED BY USER - REGISTRATION IRRELEVANT - BALANCE OF CONVENIENCE IN FAVOR OF FIRST USER - IRREPARABLE INJURY LIKELY CONFUSION AND PLEA OF COMMON OR CONCURRENT USER - INJUNCTION GRANTED.
Fact of the Case:
Appellant, a manufacturer of textiles, claimed proprietary interest in a trade mark used on voiles, alleging passing off by respondents. Respondents claimed the mark belonged to respondent No. 3, a processor, or was common to the trade. The Single Judge dismissed appellant's application for an interim injunction, finding a prima facie case but considering the mark common to the trade and appellant guilty of piracy.
Finding of the Court:
The court held that registration of a trademark is irrelevant in an action for passing off and that user, not registration, establishes proprietary interest. The court found a prima facie case in favor of the appellant based on admitted user, despite the mark allegedly being common to the trade and prior registrations. The court also found the balance of convenience in favor of the appellant as the first user and the likelihood of irreparable injury due to confusion and the potential plea of common or concurrent user by the respondents.
Issues: 1. Whether registration of a trademark is relevant in an action for passing off? 2. Whether user or registration establishes proprietary interest in a trademark? 3. Whether the appellant established a prima facie case of passing off? 4. Whether the balance of convenience favored the appellant? 5. Whether irreparable injury would be caused to the appellant if an injunction was not granted?
Ratio Decidendi: 1. Registration of a trademark is irrelevant in an action for passing off. (Section 27 of the Trade and Merchandise Marks Act, 1958) 2. User, not registration, establishes proprietary interest in a trademark. 3. The appellant established a prima facie case of passing off based on admitted user, despite the mark allegedly being common to the trade and prior registrations. 4. The balance of convenience favored the appellant as the first user and the likelihood of irreparable injury due to confusion and the potential plea of common or concurrent user by the respondents. 5. Irreparable injury would be caused to the appellant if an injunction was not granted due to the likelihood of confusion and the potential plea of common or concurrent user by the respondents.
Final Decision: The court allowed the appeal, reversed the judgment of the Single Judge, and issued an interim injunction against the respondents restraining them from using the trademark on voiles.
( 1 ) THIS appeal is directed against the order of a learned Single Judge of this court dismissing an application under Order 39, rules I and 2, read with Section 151 of the Code of Civil Procedure, moved by the appellant in Suit No. 381 of 1976, filed by it in this court claiming that the respondents herein were guilty of passing off their goods bearing the appellant s trade-mark and in consequence praying for the issue of a permanent injunction restraining respondents from using the trade mark of the appellant and holding that they arc liable to render accounts, pay damages and surrender all goods bearing the appellant s trade mark. Pending the disposal of the suit, the appellant prayed for issue of temporary injunction interms of its prayer for permanent injunction against the respondent.
( 2 ) THE appellant manufactures and markets various textiles including voiles and mulls. Respondent No. 1 is also a manufacturer of textiles, including voiles and mulls. Respondent No. 2 is the proprietor of respondent No. 1. Respondent No. 3 is a processor who is supplied unbleached textiles, including voiles, by manufacturers for being processed, dyed and printed with marks which are ultimately marketed by the manufacturers.
( 3 ) THE appellant s case is that it is manufacturing voiles and from the year 1973 upto the end of 1975 got the same processed by respondent No. 3. Thereafter it is getting goods manufactured by it processed from another party. It is claimed that the appellant directed respondent No. 3 after processing to put the trade mark in question on its voiles and respondent No. 3 complied with that direction. From 1976 the appellant gave this processing work to another party and is getting the same trade mark placed n its goods. However, in the middle of 1976 it came to know that respondents 1 and 2 arc using the identical mark for voiles manufactured by it by getting it processed from respondent No. 3.
( 4 ) THE respondents case is that the said trade mark is a mark developed by and belongs to respondent No. 3. It is a processor s mark which it used to previously affix on the voiles processed by it for the appellant but is now affixed by it on the voiles processed by it for respondents 1 and 2. It is also claimed by respondents that the said mark is common to the trade.
( 5 ) THERE was some confusion caused as to what the mark in suit is. We would first like to clarify that. The mark in question are the words "rajarani" and these two words arc written or embossed or printed or stamped in a particular manner. The proprietory interested claimed by the appellant is only to the extent mentionedabove. The appellant docs not claim any proprietary interest in any pictures printed or embossed or stamped on textile goods including voils. No proprietorship in any device of "man and Woman" or "kings or Queen" is claimed by the appellant.
( 6 ) AS noticed earlier, the proprietary interest in the aforesaid trade mark is claimed by the appellant by virtue of user. This claim is contested on the grounds, (a) that the mark belongs to respondent No. 3, (b) that the mark is common to the trade, and (c) there have been registrations of this mark prior to 1973 in one case even with a disclaimer in the use of the words "rajarani".
( 7 ) THE learned Single Judge on the material placed before him came to the conclusion that although, prima facic, the trade mark cannot be said to be the processor s mark, as claimed by the respondents; yet the appellant would not be entitled to the discretionary relief of injunction inasmuch as (a) the words "rajarani" were common to- the trade, (b) there have been cases where applications for registration of the words "rajarani" have been declined by the trade mark registry, and (c) it appeared that both the appellant and respondent No. 3 were guilty of piracy in adopting a mark which was well known earlier. It may be noticed that the learned Single Judge, has observed that the appellant had u
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