K. Ramamoorthy, J.
1. The suit is for injunction restraining the defendant from using the word 'RANGOLI' or any other trade mark identical and/or deceptively similar to the plaintiffs' reputed trade mark RANGOLI in respect of paint. There are two plaintiffs in this suit. 1st plaintiff is carrying on business under the name and style of Rasayanshala, he being the proprietor and the second plaintiff is a Company fist plaintiff is the Managing Director. They have common interest in the subject matter. The defendant is a Company having business at Calcutta. In paragraphs 4, 5, 6, 7 and 8 of the plaint, the plaintiffs have put the case thus :
"(4) That the plaintiff No. 1 adopted the trade mark RANGOLI in respect of 'the said goods' in the year 1987. That since April 1987 the plaintiff No. 1 has been using the trade mark RANGOLI for 'the said goods' manufactured and marketed by it. The said trade mark RANGOLI was honestly and bonafidely adopted by the plaintiff No. 1 in the year 1987 and since then has been used by it regularly, continuously, uninterruptedly and without any hindrance whatsoever, from any corner. That the trade mark RANGOLI is only the Trade Mark of Plaintiff No. 1 and is always used in relation to 'the said goods' since April, 1987.
(5) That the Plaintiff No. 1 is the adopter, originator, true owner and lawful proprietor of the said trade mark RANGOLI used by it in respect of 'the said goods' manufactured and marketed by it.
(6) That to secure the statutory rights in the said trade mark RANGOLI the Plaintiff No. 1 applied for the registration of the same to the Registrar of Trade Mark Journal. The Plaintiff No. 1 is likely to be allowed registration of the Trade Mark RANGOLI in due course of time.
(7) That the Plaintiff No. 1 has given publicity to its trade mark RANGOLI and the said products, under the impugned trade mark connotes and denotes the goods, and merchandise of the plaintiff's origin and none else. That plaintiff No. 2 is a trading company formed by Plaintiff No. 1 for the marketing of 'the said goods' manufactured by the Plaintiff No. 1.
(8) That on account of superior quality of the said goods and due to the continuous use of the trade mark RANGOLI for over seven years the plaintiff's said trade mark has acquired unique reputation and goodwill in public and trade and the goods under the impugned trade mark is exclusively associated with the plaintiffs by the purchasing public and trade."
2. About the defendant plaintiff states in paragraph 9 in the following words. "That the defendant has started manufacturing and marketing of paints, enamels, varnishes, dry colours, emulsions, insulating varnishes etc. under the identical and/or deceptively similar trade mark RANGOLI and/or BERGER RANGOLI. The use and adoption of the trade mark RANGOLI and/or BERGER RANGOLI by the defendant is in clear and flagrant violation of the legal and vested rights of the plaintiff in the well known and established trade mark RANGOLI. The goods of the defendant are same, similar in nature, cognate and allied to that of plaintiffs".
3. In paragraph 13 the plaintiff has mentioned about the letter dated 30.4.1990 from the defendant in respect of the trade mark RANGOLI. According to the plaintiffs, plaintiff No. 1 sent the reply on 17.9.1990 asserting that the plaintiff No. 1 is the exclusive proprietor of the trade mark RANGOLI. The further case of the plaintiff is that thereafter the plaintiff did not notice goods of the defendant in the market. According to the plaintiffs the cause of action arose in the 1st week of November 1993 when the plaintiff No. 1 came to know about the offending activities of the defendant. On 14.2.1994 the plaint in this case was presented. On 2.9.1994 the defendant filed the written statement in the suit stating that the defendant had filed a suit claiming right in the trade mark RANGOLI and had filed a suit on the file of the 5th City Judge, Calcutta and had obtained order of injunction against the plaintiffs. In the written statement in answer to paragraphs 3 and 4 of the plaint the defendant had mentioned the facts and circumstances as to how the defendant came to use this trade mark. The same is as under :
"The contents of paras 3 & 4 are denied. The true facts are that the defendant company is the Indian counterpart of the world wide reported Berger groups (formerly Worldwise reputed British Paints Groups of U.K.). In the year 1987, the defendant conceived, originated and adopted the trade Mark RANGOLI in respect of their products after a through market survey in India that there was no mark alike or similar to the defendants mark in respect of the goods manufactured by the defendant. The defendant has been using the mark RANGOLI in its special, particular and artistic scripts in respect of paints, varnishes, dry colours, synthetic enamels, acrylic emulsions, insulating varnishes, etc., ever since the year 1987 onwards. By virtue of long and continued use, extensive publicity, excellent quality of the product through research and experiment in the well-staffed laboratory and marketing skill, etc. the said name RANGOLI has become associated with the goods of the defendant and only with their goods in the minds of the trade and the consuming public. The defendant with a view to obtain statutory right in the said trade mark RANGOLI on or about 4.11.1987 applied for its registration under the Trade and Merchandise Marks Act, 1958 in respect of goods included in classes 2 and 17 of the fourth scheduled to the Trade and Merchandise Marks Rules, 1959. Immediately after filing of its applications for registration of its said Trade Mark RANGOLI the defendant launched its product with the said trade mark and ever since then the defendant has been manufacturing and marketing its products with the Trade Mark RANGOLI openly continuously and voluminously in the markets of India. The defendant also duly applied for registration of the mark RANGOLI in a special particular and artistic scripts and manner with the name of the defendant, "BERGER'S" and got the same registered as a piece of artistic work under the copyright Act, 1957, being copyright Registration No. A-51785/92 which is being continuously published and used by the defendant in the course of trade".
4. In paragraph 6 of the written statement the defendant had also stated that the plaintiff applied for registration of the trade mark RANGOLI and the application No. 491469, long after the defendant filed the application for registration of the same trade mark in application No. 480615B, which was advertised in the Trade Mark Journal dated 16.11.1992 in Clause II and the opposition in pending before the Registrar of Trade Marks being, Opposition No. DEL 8393. On 31.10.1994 the plaintiffs filed replication to the written statement reiterating the allegations in the plaint, inter alia, that the claim of the defendant cannot at all be sustained and the plaintiffs are the originator and true and bona fide owner of the said trade mark and the same being continuously used without any interruption since 1987. IA. 1453/94 has been filed for the issue of injunction pending the suit.
5. Now I notice the documents filed by the plaintiffs. Pages 1 to 26 show the bills by sales made by 1st plaintiff of paints under the name RANGOLI from April 1987 up to January 1990. The bills do not show any continuous sale but apparently the bills have been taken at random. At pages 27 to 33 advertisements made in newspapers in 1987-88 and 1989 are filed. At page 34 the certificate of incorporation of the second plaintiff Rangoli Pvt. Ltd. is shown. At page 35 the notice dated 30.4.1990 from the defendant to the plaintiffs is filed. In that letter the defendant stated :
"It is needless to say that you are fully aware of the various products being plaints, varnishes, Chemicals, etc., of our above named clients which have great demand, reputation and goodwill in the markets of India.
One of such products of our clients is being marketed with the Trade Mark RANGOLI which enjoys extensive sales, publicity, goodwill and reputation. Any product included in Class 2 with the name RANGOLI would cannot and denote as emanating from our clients only.
In the above premises, any adoption and use of the same and/or deceptively similar name viz., "Rangoli" in respect of paints, varnishes, etc., included in Class 2 by any person or persons without the assent of our said clients would render the act punishable for falsification of our clients' said Trade Mark RANGOLI and passing off.
Our clients understand that being tempted to mark wrongful gains by passing off of your impugned goods exploiting the reputation, goodwill and demand of our clients' RANGOLI product, you have wrongfully adopted and been using the name RANGOLI as Trade Mark/Brand clandestinely and without the least knowledge of our said clients. Simultaneously with the malign motive you have made application for registration of the said name as Trade Mark in class 2 being No. 491464.
Since it is the policy of our clients to caution the offender in the first instance to realise the consequences of the unlawful acts of falsification of well known Trade Mark and passing off of the goods not of our clients' manufacture and marketing, we have been instructed by our said clients to demand of you, which we hereby do, that you shall forthwith desist from using the impugned goods with the falsified and-or offending mark RANGOLI and also to withdraw all such goods with the offending mark, being clandestinely offered for sale. You shall also forthwith withdraw your application No. 491464 filed by you without lawful authority, under advise to us."
6. The plaintiff's counsel on 16.5.1990 sent reply to the defendants counsel stating that the counsel wants some more information from the defendant's counsel.
7. On 21.5.1990 the defendant's counsel wrote back to the plaintiff's counsel that the plaintiff was trying to fish out the evidence and the plaintiffs can ascertain the particulars from the Trade Mark Office.
8. On 17.9.1990 the plaintiffs' counsel wrote to the defendant's counsel asserting in paragraph 3 of the reply that as a matter of fact our clients are the exclusive proprietor of the trade mark RANGOLI in respect Distempers, Cement primers, Cement paint and various other paint goods which they have been using since April 1987 and the said mark has been well known, associated with and distinctive of his clients' goods.
9. According to the plaintiff, when it was made known to the defendant on September 1990 that the plaintiffs had been using the trade mark since April 1987, the defendant had not taken any steps indicating its exclusive right and did not take any steps to prevent the plaintiffs using the trade mark.
10. I now notice the documents filed by the defendant. A certificate from the Registrar of Copyrights dated 8.7.1992 has been filed. This shows that the defendant had registered its copyright in the artistic work of the name "Berger Rangoli" and the language of the work to be English. The defendant has also given the Xerox copy of the box in which the paints are sold. The defendant has also filed a certificate from his Chartered Accountant showing the sales from 1988-89 to 1993-94. They are as follows :
Year Product Brand Value 1988-89 RANGOLI Rs. 2,51,25,292 1989-90 RANGOLI 2,68,47,488 1990-91 RANGOLI 2,78,68,888 1991-92 RANGOLI 4,14,54,468 1992-93 RANGOLI 4,49,53,381 1993-94 RANGOLI 5,79,04,749
11. The defendant has also filed certificate of Chartered Accountant dated 28.6.1994 showing the expenditure incurred on advertisement/publicity relatable to product RANGOLI. They are as follows :
Period Product Brand Amount 1988-89 RANGOLI Rs. 11,06,552 1989-90 RANGOLI 27,51,138 1990-91 RANGOLI 18,16,790 1991-92 RANGOLI 13,66,730 1992-93 RANGOLI 24,17,677 1993-94 RANGOLI 20,92,270
12. There is a public notice issued by the defendant's counsel in the newspaper Statesman dated 4.1.1990 stating that the defendant is the exclusive proprietor of the trade mark in respect of acrylic emulsion and that Berger is internationally known and famous name in the field of paints and caution is issued not to use the name, which read as under :
"All persons, therefore, are hereby cautioned not to use the name BERGER and/or RANGOLI and/or BERGER RANGOLI or any other name or names being deceptively similar thereto in respect of being goods included in clauses 1, 2 and 17 of Fourth Schedule to the Trade and Merchandise Marks Rules, violation of which would be Actionable-at-Law."
13. In the Economic Times, Bombay dated 18.1.1990 similar notices were given. On 10.1.1990 similar notice was issued in Hindu Madras. On 7.1.1990 similar notice was issued in Sunday Statesman, Delhi Edition. The defendant has filed the Xerox copies of the outside portion of the tin of their products in various patterns. The defendant has also filed invoices showing the sales effected by the defendant to various places in India, viz. Durgapur, Cochin and various other places in Kerala, Tamilnadu, Karnataka. Defendant has filed the order of the Joint Registrar of Trade Mark dated 9.1.1989 wherein Camlin Private Limited sought registration of the trade mark in Class 2 and on the opposition by the defendant the application was withdrawn by Camlin Private Limited. The advertisement in the Trade Mark Journal by the defendant is also filed to the application filed by the defendant for registration on 30.1.1993. Plaintiff No. 1 had filed the opposition under Section 21(i) read with Rule 51 of the Rules. It was stated in the opposition that the registration of the trade mark applied for by the defendant herein will be contrary to Sections 9, 11A, 11E, 12(i) and 18(i) of the Trade Mark Act, 1958. On the 27th of June 1994 the defendant filed opposition to the application filed by the plaintiff NO. 1 for registration of the trade mark. In paragraph 3 of the opposition defendant stated that in the year 1987 defendant conceived the idea of adopting the trade mark RANGOLI after Trade after thorough market survey in India and the trade mark RANGOLI in respect of paints, varnishes, dry colours, synthetic enamels, acrylic emulsions, insulating varnishes since 1987 continuously and on 4.11.1987 the defendant applied for registration of the said trade mark RANGOLI in respect of the goods included in class 2 and clause 17 of the Trade Marks Act. The defendant stated that the market of the defendant mark has tremendous reputation and has acquired valuable goodwill and in paragraph 14 of the opposition the defendant had stated it in suit No. 8/94 in the City Civil Court, Calcutta and the learned Judge of the City Civil Court by-order dated 7.1.1994 had passed the ad-interim injunction restraining the first plaintiff from using the trade mark RANGOLI. Therefore, by June 1994 the plaintiffs were informed about the suit filed by the defendant in Calcutta City Civil Court. The defendant has also given specimen of the name/word RANGOLI now used by the plaintiff which is infringing the artistic work registered by the defendant under the Copyright Act. Plaintiff has also given an extract from the order passed by the City Civil Court and also a copy of the plaint.
14. The learned counsel for the plaintiff Mr. Goel made elaborate submissions and referred M/s. K. D. Malhotra Industries v. M/s. Ropi Industries (ILR (1976) 1 Delhi 278). The emphasis was made on the use of the mark and that was a case where this court dealt with the case of rectification. It was observed therein that the trade mark exists independently of the registration which merely affords further protection under the statute, but the anterior use by a person of a trade mark is protected under law.
15. In Century Traders v. Roshan Lal Duggar & Co. and others , this court quoted from the decision of the Bombay High Court in Consolidated Food Corporation v. Brandon & Co. Pvt. Ltd. (1965 Bom. 35). The relevant quotation is in the following terms :
"For the purpose of claiming such a proprietorship of a mark, it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use to instanti confers a right to such mark as a trade mark."
16. In paragraph 13 reference is made to Corn Products Refining Co. v. Shangrila Food Products Ltd. , where A. K. Sarkar, J. of the Supreme Court observed as under :
"Now of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of marks in the register."
At paragraph 14 at page 253 this court noticed the law and observed as follows :
"Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondent. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the make was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned single Judge and led him to commit an error."
The Bench expressed the view after referring to the judgment of the House of Lords in Oertil A.G. v. E. J. Bowman (London) Ltd. (1957 RPC 388) and observed "we cannot accept the contention that there is any rule of law laid down by any court that exclusive user must be shown before a case can be said to have been made out for issue of an interim injunction." The Bench also referred to the decision of the Supreme Court Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories , which was a case relating to the claim for infringement of registered trade mark and also for the passing off, The Bench observed further "if there is a likelihood of an offending trade mark invading the proprietary right, a case for injunction is made out". We are fortified in coming to this conclusion by the observations in a bench decision of this court in Prima Chemical Works v. Sukhdayal (ILR (1974) 1 Delhi 545). The Bench further observed in paragraph 21 as under :
"We now come to the question of balance of convenience. It has been urged on behalf of the respondents that the mark RAJARANI is common to the trade and for this purpose reliance has been placed on the registration in Andhra Pradesh and Amritsar. There is a distinction between a mark being "common on the register" and "common to the trade". There is no evidence on record to show that there is actual user of this mark by any party other than the parties before us. Inasmuch as trade mark is property right, an invasion of it should be protected and the balance of convenience would obviously be in favor of the appellant who was admittedly the first user of this mark. We cannot accept that there is any prima facie evidence of respondent No. 3 being the owner of the mark. Indeed, this is belied by the registration applications filed by the respondent No. 2. As we observed by Goddard, L.J. in Draper v. Irist ((1939) 3 All ER 513).
"In passing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business ......"
This right is to be protected and the balance of convenience is in favor of the person who has established a prima facie right to property."
17. The learned counsel drew my attention to the decision of this court B.K. Engineering Company, Delhi v. U.B.H.I. Enterprises (Regd.) Ludhiana and another (AIR 1985 210 = 1985 Arb. LR 269). The Bench noted that there are varieties of passing off.
In paragraph 20 the Bench observed as under :
"As examples of unauthorised use of the plaintiffs' commercial name three cases may helpfully be referred to. In Shorts Ltd. v. Short ((1914) 31 RPC 295), a firm of wine merchants, "Short Ltd." obtained an injunction against one, Short, who set up a similar business and styled it "Short's", deception may be useful as examples, and evidence of persons experienced in the ways of purchasers of a particular class of goods will assist the judge. But his decision does not depend solely or even primarily on the evaluation of such evidence. The court must in the end trust to its own perception into the mind of the reasonable man. This is in accordance with the dictum of Lord Parker in Spalding v. Gamage ((1915) 32 RPC 973) Parker-Knoll (1962 R.P.C. 265) pp. 291-292 per Lord Devlin."
The Bench also considered what would be the competition if two marks are allowed to exist in the market. The Bench referred to that aspect as unfair copetition. At page 214 the Bench observed :
"The balance to be maintained between the protection of a plaintiff's investment in the product and the protection of free competition. It is only if a plaintiff can establish that a defendant has invaded his 'intangible property right' in his product by misappropriating descriptions which have become recognized by the market as distinctive of the product that the law will permit competition to be restricted. Any other approach would encourage monopoly. The new small ma would increasingly find his entry into an existing market obstructed by the large traders will known as operating in it."
"This branch of the law of tort is still developing and expanding. English, American, Australian and Canadian cases have opened a new vista in this branch of law. The wine cases in England set a new trend. Ballinger v. Costa ring about it; it is not sterling coin; it has no right to the genuine stamp and impress of truth."
The Bench noticed in paragraph 54 "The roots of passing off tort lay in deceit, you the fraud was practiced not upon the plaintiff but upon the customers of the defendant who purchased the goods believing them to be of the plaintiffs' manufacture."
18. In Narayanan Trade Mark at page 539 paragraph 25.63, the following passage is relied on by the plaintiff :
"If a person persists in using the device of a rival trader which he had no right to use, after he knows it is wrong to use it, that is fraud, even if he originally used it inadvertently and innocently."
19. Learned counsel for the plaintiffs referred to the decision in Rev. On. Inc. and another Balakrishna Laboratories (India) and others (1991 (1) Arb. LR 24). It is a case of registered trade mark and, therefore, dictum laid down therein is of no assistance in this case. The learned counsel then referred to the decision of the Copyright Board reported in 1993 (2) Arbitration Law Reporter 374. I do not appreciate a decision of the Copyright Board to be cited as a decision and, therefore, I do not refer to it. The learned counsel relief upon the decision reported in Anand Silk Store v. M/s. Shree Ram Silk Mfg. Co. and others , for the proposition that law permits
counter suit also. The learned counsel for the plaintiff referred to Senaji Kapurchand and others v. Pannaji Devichand (AIR 1922 Bombay 276) Sujanbal Harbhau Kakde and others v. Motiram Prasappa Saraf and another , Baburao Vithalrao Sulunke v. Kadarappa Prasappa
Dabbanavar and another (AIR 1974 Mysore 63), Bishwanath Balakrishna v. Smt. Rampeyari Devi and others , V. R. Balakrishnan Nadar v. R. Velayudhan Nadar and others , and M.T.N.L. and others v. Tata Press , to show that under Section 10 CPC when the question of stay of subsequent suit is considered, interim orders in the suit can always be passed by a court. Nobody disputed the proposition propounded by the learned counsel.
20. The learned counsel for the defendant after referring to the commencement; of the business by the defendant referred to the sales figures and expenditures made an advertisement and how sales are made by the defendant all over India he submitted mainly that in September 1994 itself the plaintiff herein had come to know the order of injunction passed by the Calcutta City Civil Court and no steps have been taken by the plaintiff herein to vacate the injunction granted and on that score alone the plaintiff should be non suited in respect of the grant of interim injunction. He relied on the decision of the Bombay High Court in Appeal No. 159/87 wherein the Bench of the Bombay High Court dealt with a similar situation and refused to consider the question before it when the proceedings between the parties were parties were pending in the Calcutta High Court. The case cannot be relied on as a precedent for the proposition but it is all well settled once there is an order of injunction by a competent court against a particular party and that party is made aware of the proceedings, it is not open to that party against whom an order has been made by that court to institute proceedings in some other court with a view to getting round the order passed by that court.
21. I am aware that I am dealing with a situation at the interlocutory stage. The rights of parties have to be conclusively decided by this court in a trial. The plaintiff has been using the mark in spite of notice from the defendant and in spite of an order or injunction by the City Civil Court, Calcutta. As pointed out by Lord Diplock in Erven Warnink B.V. and others v. J. Townend & Sons (Hull) Ltd. and others ((1979) 2 All England LR 927), commercial honesty is to be maintained. The plaintiff has not shown extensive sale all over India with reference to the trade mark. As a matter of fact, the contention on behalf of the plaintiff is that plaintiff is a small trader and the defendant is a big one and, therefore, that consideration ought to weigh with the court in granting relief to the plaintiff. The defendant has improved his business extensively and has generated a great goodwill and if the plaintiff is allowed to carry on the business it will create unnecessary competition which is unfair and ultimately the customers will be affected. There is a real possibility that the persons, who are buying these products, would draw the association of the market with the plaintiffs and the plaintiff is appropriating the reputation of the defendant and that wrongful appropriation of the business reputation of the defendant cannot be permitted in law. The types of injury to goodwill noticed by the Bench of this court in B.K. Engineering Co. Delhi v. U.B.H.I. Enterprises (Regd.) Ludhiana and another would be opposite at the stage. The Bench observed as follows :
"The types of injury to goodwill may take such forms as where there is an apprehension of (a) diversion of sales and (b) "injurious association", (c) misappropriation of business reputation. (d) misappropriation of personality. They are all species of one genus, unfair trading or unfair competition. They are examples of dishonest trading. They are badges of common law fraud. Examples of injurious falsehood. Deception of the public is an important component of this tort. If there is no deception, there is no liability for taking advantage of a market created by another. (1981) 1 All ER 213 at p.
22. I am not able to resist the conclusion that the trade mark RANGOLI is a distinctive idicium of the defendant's mark and the plaintiff is trying to use it at the cost of the defendant. The effect of it is, a message is conveyed by this word RANGOLI to the purchasing public almost all over India that the goods now offered by the plaintiffs are that of the defendant. Any purchaser would be misled by this deceptive similarity.
23. Learned counsel for the plaintiff submitted that the plaintiff started using the product first and, therefore, the plaintiffs get precedent. I am quite unable to agree. The question of passing off has to be considered on the facts and circumstances of each case. The criteria adopted by a court in one case cannot be applied in all cases. Therefore, having regard to the totality of the circumstances in this case. I am of the view that the plaintiff has made out any prima facie strong case for the grant of injunction. The balance of convenience is also not in favor of the plaintiff because of the huge sales figures produced by the defendant. I may also note that without approaching the Calcutta Court for vacating the injunction, the plaintiff cannot said to be bona fide in approaching this court for the relief of injunction. The decision relied upon by the learned counsel (supra) is not at all helpful to him. Therefore, the application for injunction I.A. 1453/94 is dismissed. These shall be no order as to cost.
24. Petition dismissed.