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Judgment
V.K. Jhanji, J.—This first appeal is by the plaintiff against order dated 13-2-1999 of Additional District Judge, Ludhiana, whereby application of plaintiff under Order XXXIX, Rules 1 and 2, Code of Civil Procedure, has been dismissed and defendants'' application under Order XXXIX, Rules 1 and 2, Code of Civil Procedure, has been allowed and in consequence thereof, plaintiff has been restrained from using the trade mark Golden View till the disposal of the suit.
In brief, the facts are that plaintiff filed suit for injunction restraining the defendants from using the trade mark Golden View in respect of electric motors sold by the defendants. Defendants filed counter-claim with a prayer that plaintiff be restrained from passing off his goods as those of the defendants by using trade mark Golden View or any other trade mark or marks which are identical or deceptively similar to the trade mark Golden View of the defendants and for delivery and destruction of all dies, labels etc. and for rendition of accounts as well. Plaintiff alleged that he is the sole proprietor and is carrying on business of re-sale of electrical goods including electric motors for domestic and industrial uses under the name and style of V.K. Electric Company at Ludhiana since 8-12-1964. Since 1964, he has been purchasing electric motors from various manufacturers and selling the same under its own trade mark Golden View. Plaintiff alleged that he has been purchasing the electric motors from M/s. Sanson Electric Company, Hoshiarpur. In the year 1983, he also set up a sister concern for manufacture of electric motors under the name and style of M/s. Sansons Electricals, G.T. Road, Opposite Chand Cinema, Ludhiana. Due to high quality and long standing, trade mark Golden View has become very popular and quite distinctive of the goods sold by the plaintiff. Plaintiff claimed user of the trade mark Golden View since 1-4-1964. Plaintiff alleged that on 18-12-1994, he issued press notification/advertisement for the appointment of dealers for the sale of Golden View electric motors. In the last week of December, 1994, he came to know that defendant No. 1 is using plaintiff''s trade mark Golden View in respect of electric motors, i.e., when defendants published a caution notice in the Punjab Kesari on 18-12-1994. Plaintiff alleged that he is prior user of the trade mark Golden View in respect of electric motors and therefore, use of identical trade mark by the defendants amounts to passing off the goods, which plaintiff is entitled in law to protect the right based upon prior user of the trade mark Plaintiff further alleged that defendant No. 1 came in business much and by using the trade mark of the plaintiff, defendants have caused an irreparable loss and injury to the business of the plaintiff. Along with the suit, plaintiff also filed an application for grant of ad interim injunction praying that during the pendency of the suit, defendants be restrained from using trade mark Golden View of its goods.
Defendants in their written statement alleged that defendant No. 1 is a established manufacturer of electric motors. Alternators and Generating sets for the last several years. Defendant No. 1 and its predecessor-in-title firm M/s. Golden View Industries has been manufacturing, selling and dealing in the electrical goods since the year 1960. The trade mark Golden View which also forms part of the trading is invented, adopted and has been in use by defendant No. 1 since the very inception of the predecessor-in-title firm i.e., 1960. Defendant No. 1 on its incorporation as a company has also adopted and has been selling its goods under the other trade mark ''G.V." and ''Power King''. These trade marks including Golden View of defendant No. 1 by their high quality, exclusive and wide publicity and efficient services, have acquired very high reputation and goodwill in the market and amongst the customers of these category of goods. The trade marks ''GV" and ''Power King'' have been registered under the Trade and Merchandise Marks Act, 1958, whereas the trade mark Golden View is in the process of registration. Defendants alleged that defendant No. 1 is owner and proprietor of trade mark Golden View as original inventor, prior adoptor, continuous user and also having acquired a great goodwill and reputation by their high quality, exclusive sales and publicity. The trade mark Golden View has become distinctive of the goods of defendant No. 1 and the dealers, customers and purchasers, in the market connect and accept goods sold under the trade mark Golden View as the goods of defendant No. 1. Defendants further averred that plaintiff dishonestly got published an advertisement in the Hindi Weekly, Darya Dil dated 10-11-1994 wherein he claimed himself to be linked with trade mark Golden View and invited applications for appointment of dealers in respect of electric motors and alternators to be marketed under the said trade mark. On coming to know of the illegal act of the plaintiff, defendant No. 1 immediately got a caution notice published in the newspaper, Punjab Kesari, dated 18-12-1994. Legal notice dated 5-1-1995 under registered post was also issued to the plaintiff through its Advocate, she Surinder K. Bajaj. Plaintiff faced with imminent action from the side of defendants, instead of desisting from passing off their goods as goods of defendant No. 1 under the trade mark Golden View, filed the present suit with a mala fide intention and as a counter-blast. Defendants thus, contended that plaintiff is not entitled to injunction. In addition to the filing of written statement defendants also filed counter-claim restraining the plaintiff, his servants, dealers, stockists and all persons acting on his behalf from passing his goods as those of defendants by using trade mark Golden View or any other trade mark which is deceptively similar to the trade mark Golden View of defendant No. 1 and for delivery and destruction dies, labels, transfers blocks, stationery or other goods, articles bearing the impugned trade mark and for rendition of accounts etc.
In support of their case, plaintiff as well as defendants filed various documents. The learned trial Court on perusal of documents and hearing the counsel, vide order dated 2-12-1995 dismissed the application filed by plaintiff under Order XXXIX, Rules 1 and 2, Code of Civil Procedure, and allowed the application filed by defendants. Resultantly, the plaintiff was restrained from using the trade mark Golden View on electric goods to be marketed by him till the disposal of the suit. Plaintiff being aggrieved filed first appeal (FAO No. 2410 of 1995) in this Court. Along with the appeal, plaintiff as well as defendants filed numerous documents for consideration along with Civil Misc. No. 589-CII of 1996 and two other applications dated 22-1-1996. The said documents has not been filed before the trial Court when it passed order dated 2-12-1995. The first appeal came up for consideration before Mrs. (Dr.) Justice Sarojnei Saksena on 22-2-1996. The learned Judge on finding that consideration of the documents filed in this Court is material for deciding the prayer for grant of injunction either in favour of plaintiff or defendants, set aside order dated 2-12-1995 and remanded the case of the trial Court to reconsider both the applications filed by the plaintiff and also by defendants for grant of temporary injunction, with the help of all documents including the one filed in this Court.
The learned trial Court on remand, after reconsideration of the matter and with the help of documents filed by the parties, again came to the conclusion that the plaintiff is not the manufacturer of the goods but purchases the same from the other firms and resells the same, whereas the defendants are, manufacturers of electric goods on which disputed trade mark is applied. The learned trial Court also held that the trade name of the defendants is Golden View and it is using the registered trade mark ''GV'' which may be taken as an abbreviated form of Golden View. The trial Court also took into consideration the various documents filed by the defendants showing that defendant No. 1 had advertised its goods under the trade name and trade mark Golden View by spending huge amount. It further took into consideration that the plaintiff himself had purchased the goods from the defendants and he knew about the use of trade mark by the defendants. Trial Court thus, dismissed the application of the plaintiff and in turn, allowed the application filed by the defendants and restrained the plaintiff from using the trade mark Golden View on its goods, till the disposal of the suit. Hence, the first appeal by the plaintiff.
Mr. I. K. Mehta, Sr. Advocate, appearing on behalf of plaintiff has contended that the dispute in this case is as to whether plaintiff or defendants is/are entitled to the use of trade mark Golden View and till such time it is determined, order of injunction restraining the plaintiff from using the trade mark on its goods is not proper one to be passed. He contended that defendants have disentitled themselves for the grant of equitable relief of injunction by reason of delay. It is contended that plaintiff has been marketing electric motors under the trade mark Golden View since 1974 and as such, defendants are not entitled to injunction. In answer to these submissions, learned counsel appearing on behalf of defendants has contended that the learned trial Court has exercised discretion in favour of defendants while deciding application under Order XXXIX, Rules 1 and 2, Code of Civil Procedure, and the order passed by the trial Court is not liable to be interfered with. Counsel contended that the discretion has been exercised by the trial Court in a judicial manner and in accordance with the settled principles of law regulating the grant or refusal of interlocutory injunction. Counsel further contended that the documents placed on record by the defendants clearly prove that defendant No. 1 has been manufacturing and marketing its electric goods under the trade mark Golden View and registered trade marks ''GV'' and ''Power King'' since 1960 whereas the plaintiff threatened to sell electric motors under the mark Golden View in December, 1994 when he issued advertisement for the appointment of dealers for the sale of electric motors under the trade mark Golden View. Counsel contended that there is no delay on the part of the defendants to bring an action against the plaintiff for restraining him from using the trade mark Golden View on his goods.
In a suit for injunction in a passing off action, relief can only be granted on the ground that defendant has done something which is calculated to deceive. It is essential in passing off action to show that there has been a false representation. He must show that he has used the mark claimed by him on his goods or in connection with them and that the mark has become associated in the minds of the public with his goods. There must be a user of the mark because without user, no reputation can be acquired. A reputation has to be established. In National Electric Stores v. General Electric Co. (AIR 1944 Lah 386.), it has been held that the plaintiffs who have acquired a reputation in the market through a trade mark or name with which their goods have become associated, have a right to restrain the defendant from using a trade mark or name which is identical with or similar to that of the plaintiff''s and such right extends not only to the particular goods sold by the plaintiff but also to cognate classes of goods, provided the cumulative effect of the similarity of the mark, the commercial connection between the plaintiff''s goods and those of the defendant and surrounding circumstances is such as to lead the unwarry customers to mistake the defendant''s goods for those of the plaintiff." In Nageswar Rao v. Ram Bahadur (14 Mysore LJ 1), it was been held that "A man has a right of properly in the goodwill of his business, which he has either built up or acquired. If any one interferes with that right by passing off his goods as the farmers, the remedy is available to him by way of injunction to entrain the passing-off even if the person so passing off is entirely innocent and acts in ignorance of the fact that he is interfering with the rights of another. If the passing off is done fraudulently, then the owner of the trade mark or goodwill can either ask for an account of the profits made by the person passing off his goods in that way or for damages". The Court further held that "the passing off of goods may be done directly by one person representing that his goods are another''s goods, and it may also be done without any direct representation of the sort. It may be done by selling B''s goods, for example, as made by real or imaginary person of the same name as A or another name so much like A''s that person being B''s goods under that name may be led to believe that they are bying A''s goods. Secondly, it may be done by selling B''s goods under a trade name or title which has become associated in the trade with A''s goods, or by selling B''s goods under a name so nearly like the trade name of A''s goods that purchasers may be led to believe when buying B''s goods under a mark associated in the trade with A''s goods. Or, thirdly, it may also be done by selling B''s goods under a mark associated in the trade with A''s goods so get up or so packed and marked in figures or words that their appearance or get-up is that of A''s goods or so nearly that of A''s goods, that a purchaser of B''s goods so marked or packed may be deceived into believing that he is getting A''s goods. An injunction may be obtained on good grounds to prevent such passing-off which is actually in progress. It is not necessary for the plaintiff in such case to allow that the public know what his name is and associate his personal name with these goods. He will be entitled to his remedy even though the public have never heard of him." In Century Traders Vs. Roshan Lal Duggar Co., , a Division Bench of the Delhi High Court on consideration of various judgments held that in an action for passing off in order to succeed in getting interim injunction, plaintiff has to establish the user of the mark prior in point of time than the impugned user by the defendants.
In the plaint, the plea of the plaintiff is that he is making electric motors under the trade mark Golden View since 1964 whereas defendants'' version is that they had been using the trade mark Golden View since 1960. In order to show that the trade mark Golden View is in use since 1964, counsel appearing on behalf of plaintiff has referred to photo copies of 12 bills vide which electric motors were allegedly sold in the year 1965, 1967, 1969 and 1972. It is contended that from these bills, it is clearly established that plaintiff is selling electric motors since 1964-65. A perusal of the bills, referred to by counsel shows that these are not bills but challan forms. In the plaint dated 18-1-1995, plaintiff alleged in para 6 of the plaint that he contacted some old customer who had purchased electric motors under the trade mark Golden View and has obtained affidavits from them supported by documentary evidence of sale invoices issued by the plaintiff showing therein the sale of electric motors with mark Golden View. The statement made in this paragraph is patently incorrect because the statements made in affidavits are dated 10-3-1994, i.e., later to the date given in the plaint, meaning thereby these were obtained not at the time of filing of the suit, but almost after two months of the filing of the plaint. The so-called sale invoices are not legible and an attempt has been made to score off the words ''challan'' printed on it. These bills cannot be termed as authentic or unimpeachable. The other documents placed on record by the plaintiff are the bills from 1994 onwards and the explanation given for not producing the bills from 1972 to 1993 is that because of the dispute with his landlord, his shop was demolished and all the record laying therein was destroyed. Plaintiff however, has not placed on record any proof to show that the records got destroyed. The bald assertion of the plaintiff without any supporting proof cannot be accepted.
To the contrary, the evidence adduced by the defendants is to be termed as highly reliable and authentic. The bills produced by the defendants are from 1969-70 onwards. Apart from the bills, the defendants have also produced on record copy of the licence/registration under the Central Excise Rules showing that licence issued in the name of Golden View Electric Inds. Private Limited, photo-copy of the registration of sales-tax dated 14-5-1960 in the name of Golden View Electrical Inds. Private Limited; certificate of p.m. T. Registration dated 28-9-1961 revalidated upto 28-9-1985; copy of certificate of incorporation of Golden View Electrical Inds. Private Limited dated 30-11-1974; photo-copy of cash memo., dated 17-8-1991 showing the goods sold to plaintiff by its dealer, M/s. General Electric & Machinery Stores, Ludhiana, sales-tax from issued by V.K. Electric Co. against bill No. 10374 dated 17-8-1991; Catalogue of electric motors with trade mark G.V., Power King Golden view; various advertisements for the period 1-1-1975 to 1-1-1995 published in Trade Observer Journal, Newspapers wherein defendant No. 1 had advertised electric goods manufactured by it with trade mark Golden View, G.A. & Power King. Defendants have also placed on record the certificate issued by Shri V. P. Vij & Company, Chartered Accountants, of the sales and advertisement expenses. The certificate is from the financial year 1-2-1974 to 31-3-1994 showing the following figures of sales and advertisement expenses :
Financial year Sales Advt. expenses 1-12-1974 to 31-12-1975 43,81,876.08 50,913.60 1-1-1976 to 31-12-1976 19,41,760.19 26,422.50 1-1-1977 to 31-12-1977 28,27,585.06 24,185.43 1-1-1978 to 31-12-1978 22,14,048.70 28,660.50 1-1-1979 to 31-12-1979 37,56,836.50 25,997.00 1-1-1980 to 31-12-1980 90,46,494.61 45,703.66 1-1-1981 to 31-12-1981 1,09,53,389.90 69,427.90 1-1-1982 to 31-12-1982 69,38,493.75 126,508.76 1-1-1983 to 31-12-1983 50,27,030.96 93,392.86 1-1-1984 to 31-12-1984 63,92,543.11 67,528.00 1-1-1985 to 31-12-1985 75,40,634.40 93,179.09 1-1-1986 to 31-12-1986 52,87,301.46 91,776.56 1-1-1987 to 31-12-1987 68,96,738.23 87,963.75 1-1-1988 to 31-12-1989 1,03,81,363.32 129,990.35 1-4-1989 to 31-12-1990 89,26,731.00 129,076.29 1-4-1990 to 31-12-1991 1,22,77,168.72 129,621.05 1-4-1991 to 31-12-1992 1,26,65,284.57 161,021.25 1-4-1992 to 31-12-1993 1,13,41,525.15 205,925.68 1-4-1993 to 31-12-1994 1,55,29,401.40 235,472.50
In the light of the aforementioned evidence produced on record by the defendants and accepted by the trial Court, I am of the view that defendant No. 1 has prima facie made out a case for grant of ad interim injunction in its favour for restraining the plaintiff from using the trade mark Golden View.
The contention of the counsel that defendants are not entitled to injunction sought for in the counter claim on account of delay is also without any merit. As already seen, there is nothing on record to show that plaintiff was manufacturing or selling the electric motors with the mark Golden View earlier to the defendants. In fact, according to his own showing the plaintiff does not manufacture the electric motors but buys the same from the market, whereas defendant No. 1 admittedly is manufacturing electric motors and other electric goods. For the first time, defendants came to know of the use of mark Golden View by the plaintiff when an advertisement was issued by the plaintiff in Hindi weekly, Darya Dil, and in Dainik Punjab Kesari, Jalandhar dated 18-12-1994, inviting applications for appointment of dealers in respect of electric motors and alternators to be marketed under the trade mark Golden View. The moment the said advertisement came to the notice of the defendants, defendant No. 1 through its counsel Shri Surinder K. Bajaj, Advocate, served notice dated 5-1-1995 calling upon the plaintiff to desist forthwith from manufacturing, marketing and offering for sale electric motors with the trade mark Golden View or any other trade mark used by defendant No. 1. Plaintiff instead of giving reply to the notice served upon him by the defendant, filed suit on 18-1-1995 thereby pre-empting the legal action which defendant No. 1 had threatened to take in case plaintiff failed to use trade mark Golden View on electric motors to be marketed by him. Defendant No. 1 on receipt of the summons of the suit, immediately filed counter claim along with an application under Order XXXIX Rule 1 and 2, Code of Civil Procedure, for restraining the plaintiff from using the trade mark Golden View on his goods. There is thus, no delay on the part of the defendants to bring an action against the plaintiff.
For the reasons recorded above, I am of the view that the discretion exercised by the trial Court in granting injunction in favour of defendants and against the plaintiff is not based on mistake of facts and law and therefore, calls for no interference in this appeal.
Resultantly, the appeal fails and it is accordingly dismissed. No costs.
It is however, made clear that the observations if any made herein shall not be construed to be an expression on the merits of the suit.
Appeal dismissed.