M/s. Kale Khan Moh'd Hanif & Anr. vs M/s. Kale Khan & Ors.

Appellants/defendant no.1 & 2 have filed this appeal being aggrieved by the judgment and decree dated 25.02.2004 passed by the District Judge, Vidisha in Civil Suit No.2-A/2000 whereby the suit for permanent injunction filed by respondent no.1/plaintiff was decreed.

It is gathered from the record that defendant no.1, 3 & 4 were ex-parte before the trial Court and no written statement was filed on their behalf. Further, defendant no.2 also, though appeared and filed his written statement however, subsequently remained ex-parte. Thus, there is no evidence on behalf of the defendants.

The plaintiff filed a suit against the defendants inter-alia on the ground that earlier there was a firm known as 'M/s Kale Khan Mohd. Hanif Registered Partnership Firm', of which plaintiff, defendant no.2 and three others were the partners. The firm was engaged in the business of Bidi manufacturing in the name o f 'फोहारा छाप बीड़ '. It is further averred by the plaintiff that earlier firm was established in the year 1966. Thereafter, plaintiff as well as defendant no.2 constituted a separate firm and started running business in the name of 'फोहारा छाप बीड़ '. It has come in the evidence of plaintiff that except defendant no.2, all other partners of the earlier firm constituted the plaintiff/firm. It is gathered that vide Ex. P/1, plaintiff/firm was registered with the Registrar of Firm in the year 1986.

The plaintiff further averred that on account of running the business in the same product name, there was confusion in the minds of their customers. Accordingly, in the year 1994, plaintiff firm changed the design of its product and named it as ' पेशल फोहारा छाप बीड़ '. The business continued from the year 1994 to 1998 successfully and plaintiff's product became popular in the market. It is the plaintiff's case that in order to take undue advantage of plaintiff's good-will, defendants also started selling its product in the name of ' पेशल सुपर फोहारा छाप बीड़ '. It is the case of plaintiff that the name and design of defendants' product is deceptively similar to that of plaintiff's product, which is causing serious harm and loss to the plaintiff's business. Present suit was therefore filed praying for a decree of permanent injunction restraining the defendants from selling their product in the name and design, which is deceptively similar to the plaintiff's product.

5 . The defendant no.2 filed its written statement and denied the plaint averments. He averred that defendant's product is also of good quality and there is no similarity in the two products. Before the Trial Court, plaintiff led oral as well as documentary evidence in support of its case. Apart from the plaintiff, Baseem (PW-1), Harinarayan Chaurasiya (PW-2) and Ajay Singh (PW-3) were examined.

6 . After appreciating the plaintiff's evidence, learned Trial Court decreed the suit vide impugned judgment and decree dated 25.02.2004 passing the following decree:-

The appellant/defendant filed this appeal challenging the judgment and decree of the Trial Court. Learned counsel for the appellant raised a singular ground. It is submitted by him that under Section 27 of The Trade and Merchandise Marks Act, 1958, plaintiff was not entitled to institute the suit to prevent infringement of an unregistered trade-mark. In support of his submission, learned counsel placed reliance upon the judgement of this Court in the case of Himalaya Drug Co. Pvt. Ltd. Bangalore Vs. Arya Aushadhi Pharmaceutical Works reported in AIR 1999 MP 110 .

None appeared for the respondents though served.

Considered the submissions advanced by appellant's counsel and perused the record.

The learned counsel for appellant relied upon Section 27 of The Trade and Merchandise Marks Act, 1958. This Act, however, stood repealed by virtue of Section 158 of Trade Marks Act, 1999, with effect from 30.12.1999. The present suit was filed on 13th June, 1986 and, therefore, the Act of 1958 is not applicable.

However, the provisions of Section 27 of the Act of 1958 are pari-materia to Section 27 of the Act of 1999 which provides as under:-

The provision of Section 27 of Act of 1958 has been dealt with by this Court in the case of Himalaya Drug (supra), wherein this Court held in paragraphs 7 & 8 as under:-

The learned counsel for appellant is therefore, right in contending that the suit to prevent infringement of an unregistered trade mark is not maintainable. However, the issue in this case is as to whether the suit filed by plaintiff was one under Section 27(1) of the Act of 1999 or it was filed under Section 27(2) of the said Act?

Sub-section (2) of Section 27 of the Act protects the action against any person for passing off goods. The term passing off is not defined under the Act of 1999. However, it can be understood to mean illegal use of a trademark or trade name of someone else in such a way that the public is misled into believing that the products or services supplied by one party are genuinely those of another. This misrepresentation can harm the goodwill and reputation of the legitimate owner of the trademark. In other words, passing off would mean a man is not to sell his own goods under the pretense that they are the goods of another man. Thus, Passing off in the Indian Trademarks Act, 1999 seeks to safeguard the goodwill associated with unregistered trademarks.

Thus, where Section 27(1) provides a statutory remedy for infringement of registered trade mark, Section 27(2) of the Act provides for a common law remedy for passing off goods.

If the pleadings made in the plaint of this case are seen, it is gathered that the plaintiff does not allege that the defendant is using his trade mark or trade name. The allegation is that the plaintiff has made his trade name and design deceptively similar to that of his. Thus, it would be case of passing off where the defendant is selling its goods pretending it to be that of plaintiff's. Meaning thereby, it is a case of passing off goods and not that of infringement of trade mark. The suit was thus covered under Section 27(2) of the Act of 1999 and was thus maintainable.

Consequently, the only objection raised by learned counsel for appellant is not made out in the facts of this case. The judgment and decree passed by the Trial Court dated 25.02.2004 in Civil Suit No.2-A/2000 is found to be legal and valid and does not warrant interference in the present appeal. The same is accordingly upheld.

The appeal fails and is hereby dismissed.