Deceptive similarity of trademarks and the intention to pass off products can lead to a grant of permanent injunction in cases of trademark infringement and passing off.

JUDGMENT :

M.L. Mehta, J.

This is a suit seeking permanent injunction against infringement of trademark and passing off. The plaintiff has also prayed for damages and delivery up of all infringing articles qua the plaintiff's trademark "FREEMANS", adopted for measuring tapes and part components thereof. The brief facts of the case are as under. The plaintiff is a company registered under the Companies Act, 1956 and carries on the business of manufacturing and/or marketing and exporting measuring tapes and part components thereof. The trademark FREEMANS was registered under No. 215880 on 06.12.1963, in respect of tape measures under class 9 and the same trademark were registered under No. 44095 on 26.06.1985 with respect to measuring tapes and allied goods under the same class. It is contended that the plaintiff company has been in the said business for the past five decades, during which period, the trademark FREEMANS was adopted by National Tape Co., a partnership firm. This firm had a sister concern namely Freemans Sales Pvt. Ltd. Vide a family settlement, the trademark FREEMANS and the sister concern Freemans Sales Pvt. Ltd. was allotted to one Mr. Madan Mohan Nayar, who was a partner in the firm National Tape Co. The plaintiff company i.e. Freemans Sales Pvt. Ltd. then subsequently changed its name to Festo Measuring Industries Ltd. This name was again changed on 08.12.1999 to the existing name FMI Limited.

2. The plaintiff submits that its predecessors initiated the manufacture of Metal Wired Tape (under the trademark FREEMANS) for the first time in India, way back in the year 1950. The plaintiff contends that due to the long use of this trademark over the past five decades, the said trademark has become a leading brand in the country with a substantial market share. The plaintiff also submits that their products have been recognized on a global level with the plaintiff exporting the said products to over sixty countries and has increased its distribution by promoting its brand through the media.

3. The plaintiff alleges that they came to know of the activities of the defendants through advertisements in Economic Times dated 09.01.2004 and the Times of India dated 08.01.2004, regarding the defendant's intention to use the trademark FREEDOM for measuring tapes by FREEDOM MEASURES (defendant no. 2 company), which was being promoted by defendant no. 1, Mr. Ashok Jain. It is alleged that defendant no. 1 was previously a distributor of the plaintiff's products for over 25 years under the name and style of Sudesh Hardware Pvt. Ltd. (defendant no. 3). The plaintiff contends that the use of the trademark FREEDOM by the defendants is not coincidental, but is done with an intention to confuse prospective customers with regards to the plaintiff's trademark FREEMANS. The plaintiff submits that this act of the defendants constitute infringement of the trademark FREEMANS and that by advertising the trademark FREEDOM and by filing an application for its registration and by using the said mark as a trading style, the defendants are trying to give the public an impression that they are associated with the plaintiff's product.

4. The defendants in their written statements denied that their trademark was visually similar to that of the plaintiff's. It was submitted that on a mere look at the two trademarks, it would be established that the manner and style in which the two marks are written, are completely different. In the plaintiff's mark, the word FREEMANS is written prominently whereas in the defendant's mark, the alphabet 'F' is written within a circle and the word FREEDOM is written on the circumference. It is also denied that both the trademarks sound phonetically similar. In addition all the averments made in the plaint have been denied by the defendants.

5. It is pertinent to note that an interim injunction was granted in favour of the plaintiff under Order XXXIX Rules 1 and 2, whereby the defendants were restrained from launching, using