Pankaj Jaiswal And Anr. vs Virendra Prasad Jaiswal And Ors. on 19 September, 2006

    Pankaj Jaiswal And Anr. vs Virendra Prasad Jaiswal And Ors. on 19/9/2006

JUDGMENT

   Pinaki Chandra Ghose, J.

   1. This appeal has been filed from an order dated 17th February, 2006 passed
by the Hon'ble First Court whereby His Lordship was pleased to restrain the
defendant/appellant herein using the word "SEC" anywhere to market their
product. His Lordship was also pleased to grant stay for a period of two months
from date in the event the defendants change their mark "SEC".

   2. Fact of the case briefly are as follows:

     The plaintiff/respondent No. 1 carries on business as Shiva Engineering
Company. The said Shiva Engineering Company was earlier a partnership firm with
its partner Virendra Prasad Jaiswal and Surendra Prasad Jaiswal. After the said
dissolution the plaintiff carries on business in the name of the said firm as a
proprietor thereof. The plaintiff is a manufacturer of electric fan under the
trade mark "SEC". Plaintiff uses the said trade mark since about the year 1988
and having its registration No.683188 in respect of the said trade mark "SEC and
device" which is registered under the provisions of Trade Marks Act, 1999
(hereinafter referred to as the said Act) in Class 11. The plaintiff also having
a registration No. 754247 in Class 11 in respect of another variation of the fan
which is "SEC Trust" and the same is also registered under the said Act.
Plaintiff is also having a certificate in respect of the said trade mark. Both
the said registrations and valid and subsisting. Plaintiff also holds a
registration of copyright under the Copyright Act, 1957 in respect of "SEC and
device" having its registration No. A-58363/2001. The plaintiff sells its
ceiling fans in a cardboard box having a distinctive get-up, colour scheme,
design ad lay-out. The fans of the plaintiff are sold under "2 years Guarantee"
with a guarantee card which is stamped by the dealer at the time of sale of a
fan.

   3. During the period 1998-99 to 2003-04 of the turnover of the plaintiff firm
is as follows:

Year Sales Figures (In Rs.)

1998-1999 35.29.510.00

1099-2000 47.98.320.00

2000-2001 45,99,498.84

2001-2002 48,74,522.00

2002-2003 45,62,560.00

2003-2004 44,06,292.00

   4. The defendant No. 1/appellant herein deals with fans of various kinds in
particular ceiling fans and uses the trade mark "SEC" and "Chief SEC". The
defendant No. 1 also uses a box for packaging and the same is a colourable
imitation of the box of the plaintiff. The guarantee card also used by the
defendant No. 1 is a colourable initiation of guarantee card of the plaintiff.

   5. Besides that the defendant No. 1 uses the name of "Shiva Engineering
Company", it is also alleged that the defendants are using the said trade name
which is deceptively similar to the plaintiffs trade name wholly with a wrongful
motive and intention to deceive people and pass off its inferior quality
products and that of the plaintiff. The appellant/defendant No. 1 has obtained
the registration of the impugned trade mark under the No. 809843 by suppression
of material facts from the Registrar. The defendant Nos. 2 to 4 are the dealers
and business associates of the defendant No. 1. Plaintiff/ respondent No. 1
claimed its trade mark "SEC" is extremely popular in the past. The plaintiff in
the past has had to issue legal notice to several persons for the unauthorized
use of the trade mark "SEC". The plaintiff has taken legal action against the
infringing parties, also instituted a suit in this Court being C.S. No. 271 of
2001 and the Hon'ble Court was pleased to restrain the appellant/defendant in
that case for using the said trade mark "SEC" of the plaintiff and orders were
passed on May 25, 2001 and July 5, 2001 in the said Suit No. 271 of 2001.

   6. The plaintiff/respondent herein filed a suit on these allegations
including that the defendants/appellants are wrongfully and illegally selling
fans using the artistic representation of the mark which is structurally and
visually identical to the label of the plaintiff/respondent herein so as to give
the impression to the purchasing public that the said "SEC" fans of the
defendant/appellant are products of the plaintiff/respondent. The defendants are
also using the said mark deceptively similar with the plaintiff/respondent's
mark with a mala fide intention of deceiving the consumers, traders and
retailers to believe that they are buying the products of the
plaintiff/respondent thereby causing confusion and deception.

   7. Such mala fide intention is also apparent from the adoption and vise of a
deceptively similar label which is wholly similar to the original artistic work,
design, colour scheme of the plaintiff/respondent's label including the
guarantee card. In these circumstances, plaintiff filed a suit before this Court
after obtaining leave under Clause 12 of the Letters Patent.

   8. In the said suit application was filed before the Hon'ble First Court
inter alia praying for the following orders:

     (a) Injunction restraining the respondents or each of them whether by
themselves, their employees, servants, agents, representatives and dealers or
otherwise howsoever from using the trade mark "SEC", or any trade mark
consisting of the word "SEC" and trade dress of box and/or guarantee card shown
in Annexures "A", "E" and "F" hereto or any style, get-up, colour scheme or
design which so nearly resembles the said trade mark and trade dress of the
respondents shown in Annexures "G", "H" and "I" hereof as to be calculated to
deceive and induce the people that the fans or other products of the respondents
or each of them originates from the petitioner or is in any way connected
therewith or to pass off the said trade mark SEC, trade dress of box and/or
guarantee card of the petitioner in any way or marine' whatsoever;

     (b) Injunction restraining the respondents or each of them whether by
themselves, their employees, servants, agents, representatives and dealers or
otherwise howsoever from infringing the copyright in respect of the artistic
style of the word "SEC" and other features of the label by using the label shown
in Annexure "D" hereto or using other label so nearly resembles the same;

     (c) Injunction restraining the respondents or each of them whether by
themselves, their employees, servants, agents representatives and dealers or
otherwise howsoever from infringing the registered trade mark SEC and Device
under No. 683188 as shown in Annexure "B" hereto or any other mark consisting
the word "SEC" or marks so nearly resembles the same;

     (d) Injunction restraining the respondents or each of them whether by
themselves, their employees, servants, agents, representatives and dealers or
otherwise howsoever from passing off or attempting to pass off the business of
the respondents as and for the business of the petitioner or the products of the
petitioner by the use in connection therewith of the trade mark SEC, trade dress
of box and the guarantee card or any colourable imitation thereof in respect of
fans, or by any other means or manner whatsoever;

     (e) Injunction restraining the respondents or each of them whether by
themselves, their employees, servants, agents, representatives and dealers or
otherwise howsoever from passing off or attempting to pass off the business of
the respondents as and for the business of the petitioner or the products of the
petitioner by the use in connection therewith of the words "SHIVA ENGINEERING"
as a trading name or part of trading name;

     (f) Ad interim order in terms of prayers (a) to (d) above;

     (g) Costs of incidental to this application be paid by the respondent;

     (h) Receiver;

     (i) Such further and other order or orders be made and/or direction or
directions be given as to this Hon'ble Court may deem fit and proper.

   9. On 22nd December, 2004 at the time of moving of the application the
Hon'ble First Court granted an interim order in terms of prayer (a) till 17th
January with a liberty to apply for extension and for further order on the said
application upon notice to the other side. On 28th January, 2005 the matter was
heard and after hearing the parties the Hon'ble First Court passed the following
order:

     Having heard the respective contentions of the learned Counsel it appears
to me from the aforesaid catena of decisions cited by Mr. Bachawat that
registration of marks does not give any better right or any protection against
the action of illegal passing off. Passing off action is based on prior or
senior user of the marks. Admittedly, the plaintiff is the senior user of the
mark "SEC" and admittedly again the defendant has got the marks registered in
2003 and having a reference of user in 1998. Before registration of the marks
the application of the plaintiff must have been circulated in the gazette or
bulletin issued by the appropriate officials, so the plaintiff must have
knowledge or is deemed to have knowledge of such user. Moreover the plaintiff
has lodged a complaint though apparently against some other establishment before
the appropriate Criminal Court. The defendant No. 2 who is the father of the
defendant No. 1 appears to be one of the accused person in the charge framed by
the Competent Court. This criminal action was initiated by the State on the
complaint of the plaintiff in the year 2001. From the records I find that there
has been a search and seizure in the house of the defendant No. 2 and this face
was well known to the plaintiff as this action was brought pursuant to his
complaint. Therefore, why the plaintiff has not brought the suit against the
defendant No. 2 in the year 2001 itself, has not been explained and it has not
also been explained as to why such delayed action has been taken at least
against the defendant No. 2 Defendant No. 1 is a minor and being represented by
the defendant No. 2 as it appears from the records of the trade mark
registration. So action in this suit is really against the defendant No. 2.
Therefore, I do not appreciate the statement made in the petition that the
plaintiff has come to know for the first time in the year 2004. From 1998 till
2004 the plaintiff stood by and no action was taken. In case of passing off
action the delay and/or acquiescence at least at the ad interim stage is a
matter to be reckoned with.

     The defendant has come forward with a change of their trade mark with some
addition and they have already changed their colour-scheme feature and get-up of
the carton and also the guarantee card. Under such circumstances, I think
interim order passed already is to be modified in the manner as follows:

     Mr. Chakraborty's clients shall destroy all the old carton having offending
get-up, colour-scheme and guarantee cards to the notice and knowledge of the
plaintiff. With this changed get-up and colour combination of carton their
product may be sold. However, the monthly statement of such sale shall be filed
in a sealed cover and the same shall be deposited with the Advocate-on-record of
the defendant No. 1 and such sealed cover shall not be opened and disclosed to
any one without the leave of the Court. A sample of the offending carton and
guarantee card and the changed carton with changed colour combination and varied
trade mark and changed guarantee card shall be jointly signed by the Advocates-
on-record of both the parties and the same shall be kept in a sealed package
with the Advocate-on-record of Mr. Bachawat. The defendant is permitted to
market and sell their product with the aforesaid change and variation. Mr.
Chakraborty's clients shall give sale figure of their product already marketed
with this offending marks and this shall be kept in a sealed cover with the
Advocate-on-record of the defendants until further orders of this Court. Mr.
Chakraborty's clients shall not sell their product with the offending marks
anymore and the cut off date is fixed on January 11, 2005.

     Let affidavit-in-opposition be filed within two weeks from date; reply; if
any, shall be filed within one week thereafter. Let this matter appear four
weeks hence.

     This order, however, will not prevent and prejudice the action already
taken by the plaintiff before the Trade Mark Registry as well as before the
Criminal Competent Court. This order shall not be treated to be any lawful
premium to the defendants and the aforesaid proceedings shall go in its own
merits without any influence or any observation made by this Court....

   10. Thereafter, the matter was finally heard out by His Lordship on 17th
February, 2006 when His Lordship was pleased to hold as follows:

     ...I am satisfied that there is a strong resemblance between the two marks
even after change of colour combination and get up of the said mark.

     Therefore, I restrain the defendants and each of them from using the word
'SEC anywhere to market their product. However, this order will remain stayed
for a period of two months from date in the event the defendants change their
mark 'SEC to 'SEW or 'SEE' whatever they think fit, but the word 'SEC must not
be used....

   11. Mr. Mukherjee, learned senior Advocate appearing in support of this
appeal contended that the respondent No. 1 was not entitled to orders as claimed
in the suit or in the interlocutory application by reason of suppression of
material facts and also by reason of deliberate delay and laches. In support of
his contention he relied upon the decisions reported in 2004 (1) CHN 448 Barbara
Taylor Bradford and Anr. v. Sahara Media Entertainment Ltd. and Ors. and MCD v.
State of Delhi and Anr. He further contended that the balance of convenience was
wholly against the order passed in favour of the respondent No. 1. Mr. Mukherjee
submitted that there was no question of any infringement or passing off as
contended by the respondent No. 1. The petitioner/appellant's products had been
sufficiently identified and there was no question of any confusion or deception.
He further contended that the respondent No. 1 had failed to give any
explanation as to why he did not bring the suit against the petitioner No. 2 in
2001 itself. The respondent No. 1 has failed to explain as to why false and
misleading statements had been made in the petition with regard to the knowledge
of the respondent No. 1 of the use of the mark "Chief SEC" and the delay in
filing the suit.

   12. Mr. Mukherjee further submitted that the Hon'ble First Court has erred by
failing to appreciate that the appellants have relied on the order dated 28th
January, 2005 to change the colorable combination and get-up and thereby there
was no question of passing off or infringement of the mark of the respondent No.
1. He further contended that the Hon'ble First Court has also erred in holding
that after the order was passed by the Court and even after changing the
colourable combination there was a strong resemblance between the two marks. He
contended that no reasons were given by the Hon'ble First Court for passing the
said impugned order.

   13. Mr. Mukherjee also submitted that his client has already changed the
colour scheme used on the carton. He has agreed to make a distinction of the
mark and further has already changed the guarantee card which will no longer be
similar to that of the plaintiff/respondent. He further submitted that his
client using the said mark since 1998. The said fact was suppressed by the
plaintiff/respondent from the Court. He also drew our attention to the process
and orders of the competent Criminal Court which has already framed a charge
against the defendant No. 2/appellant No. 2 who happens to be the father of the
defendant No. 1/appellant No. 1 in the suit. It is submitted that the plaintiff
knew in the year 2001 itself about the user of the said mark. In view of such
suppression of the fact as to the date of discovery of user interim order of
injunction should be vacated. According to him, a competing mark though having
prior registration will not have exclusive right under the provision of Section
3 of the Trade Marks Act, 1999. It is further submitted that the defendant No. 2
who is the father of the defendant No. 1 appears to be one of the accused person
in the charge framed by the competent Court. Such action was taken at the
instance of the plaintiff/respondent No. 1 in the year 2001. Therefore, it is
submitted that why the suit was not filed in the year 2001 has not been
explained by the plaintiff/respondent. Therefore, he submitted that the
plaintiff/respondent came to learn of the said fact first time in the year 2004
cannot be accepted. He further submitted that in case of a passing off action
the delay and/or acquiescence has to be taken into account at the time of moving
such application. He further submitted that the Court itself allowed and
permitted the appellant/defendant to use the said mark the get-up and further
allowed the appellant to mark after changing the same in a new get-up.
Therefore, at this stage it cannot be said that there is a chance of deception
or passing off the product of the respondent/plaintiff.

   14. Mr. Mukherjee further drew our attention to the prayer of the plaint and
the petition and submitted that after the change of the get-up no amendment has
been made by the plaintiff in the pleadings. He further submitted that there is
no sale figure furnished by the plaintiff.

   15. Mr. Mitra, learned senior Advocate appearing on behalf of the respondent
drew our attention to paragraph 7 of the affidavit-in-reply filed before the
Trial Court (appearing at pages 116-117) and submitted that a complaint was
lodged with the Deputy Commissioner, Enforcement Branch, Calcutta Police against
Vijay Jaiswal under Section 63 of the Copyright Act, 1957, Sections 78 and 79 of
the Trade and Merchandise Marks Act, 1958 and under Section 420 of the Indian
Penal Code. He further contended that Mahendra Jaiswal being the defendant No. 2
and the said Vijay Jaiswal are the brothers and the defendant No. 2 is the
father of the defendant No. 1 Pankaj Jaiswal. He further submitted that a suit
was filed against said Vijay Jaiswal, Lingaraj Rao and Ishwar Electrics and in
the said suit the order so passed at the ad interim stage on 25th May, 2001 was
confirmed on 5th July, 2001 since none appeared in the said proceedings despite
a repeated service. Thereafter, only to bypass the said orders the defendant
Nos. 1 and 2 have started trading in the name and style of "Shiva Engineering
Corporation" and are wrongfully and illegally using the trade marks "SEC" and
"SEC Trust" to pass off their inferior fans as that of the plaintiffs.

   16. Mr. Mitra further contended that it was specifically denied that the
plaintiff was ever aware that the defendant Nos. 1 and 2 were carrying on
business in the name of "Chief SEC". Therefore, there is no question of delay in
this proceedings to file this suit. He further contended that there is no
suppression of material facts since the suit was filed earlier against the
brother of the defendant No. 2. The said facts are specifically stated by the
plaintiff in the plaint itself. He submitted that there is no question of any
suppression of material facts in this matter as it would be evident from the
pleadings of the plaintiff. He further submitted that the suppression has
already been explained in the affidavit-in-reply filed before the Trial Court.

   17. He also relied upon the decisions

   Kaviraj Pandit Durga Dutt Sharma, (in both the appeals), v. Navaratna
Pharmaceutical Laboratories (in both the appeals); Corn Products Refining Co. v.
Shangrila Food Products Ltd.; Laxmikant V. Patel v. Chetanbhai Shah and Anr.;

    Hygiene Industries (P) Ltd. and Anr. v. Sudhir

   Bhatia and Ors.; Satyam Infoway Ltd. v. Sifynet

   Solutions (P) Ltd. and S.J.S. Business Enterprises (P) Ltd. v. State of Bihar
and Ors. In support of his contention and submitted that there is no
irregularity made by the Hon'ble First Court to pass such interim order. He
further contended that there is no confusion in respect of the senior user in
respect of the goods in question. Hence, in these circumstances, he submitted
that the injunction so passed by the Court should continue.

   18. We have heard the learned Counsel for the parties. We have also perused
the carton now used by Mr. Mukherjee's client which was produced before us. We
have perused the carton used by the respondent herein. Both the cartons we have
compared and we have found that after comparing the same, we must come to the
conclusion that we have not been able to make a proper distinction in respect of
the said carton in question. Therefore, in our opinion, change of colour scheme
used on the carton or the mark used by the appellant on the said carton and the
get-up we do not have any hesitation to agree with the Hon'ble First Court that
there is a strong resemblance between the two marks even after such change of
colour combination and get-up. The said fact we cannot brush aside when we want
to decide this matter.

   19. Furthermore, after comparing the same we have to come to the conclusion
that the said get-up, colour scheme or design of the appellant/ defendant are so
nearly resembled with the said trade mark and trade dress of the
plaintiff/respondent and thereby we have to form an opinion that if we allow the
appellant/defendant to use the said get-up and colour scheme, it would cause a
deception and induce the people.

   20. We also have taken into consideration the fact as alleged before us by
Mr. Mukherjee on the ground of delay and we have found that a suit was filed by
the respondent/plaintiff in the year 2001 against Vijoy Jaiswal, Lingaraj Rao
and Ishwar Electrics and steps were taken against them. But in the facts of this
case it cannot be said that there is a delay since the suit is against the
present appellants/defendants.

   21. Mr. Mukherjee also relied upon the decisions reported in 2005 (4) SCC 605
(supra) and 2004 (1) CHN 448 (supra) and contended that the application should
be dismissed on the ground for suppression of material facts.

   22. Mr. Mitra pointed out that the complaint was lodged against Vijoy
Jaiswal, who is a party in this proceedings and not against the defendant No. 2.
The police authorities took steps in the matter and made enquiries thereafter.
He further contended that the interim order passed in this suit is confirmed and
he also drew our attention to the said complaint dated May 15, 2001 lodged by
his client and further pointed out that it has been specifically stated in the
said complaint that one Vijoy Jaiswal carries on business under the name and
style "Vijoy Enterprises" and the allegation was made against the said Vijoy
Jaiswal and not against Mahendra Jaiswal. Therefore, it cannot be said to be
that there is suppression of material facts. He also drew our attention to the
earlier suit and the interlocutory application filed therein by the respondent
No. 1. After scrutinising the said application in the earlier suit as well as
the complaint lodged by the respondent No. 1, it appears to us that the
respondent No. 1 duly took steps in the matter in the year 2001 against Vijoy
Jaiswal and therefore, as contended by Mr. Mitra that the said fact cannot be
said to be a material fact in the present suit in question since no allegation
has been made by the plaintiff in the suit against the said Vijoy Jaiswal.
Therefore, after scrutinising those facts we do not find that there is any
suppression of material facts has been made by the plaintiff/respondent herein
from this Court. We also do not find that there was any deliberate delay or
laches on the part of the respondent/plaintiff is filing the suit in question.

   23. On the ground of delay as tried to be pointed out by Mr. Mukherjee, we do
not find that the said ground has any substance in the facts and circumstances
of this case since we have found that the plaintiff did take steps against the
said Vijoy Jaiswal earlier in the year 2001.

   24. After considering these facts and decisions cited before us it appears to
us that in Kaviraj Pandit Durga Dutt Sharma (in both the appeals) v. Navaratna
Pharmaceutical Laboratories (in both the appeals) (supra) the Apex Court held as
follows:

     The other ground of objection that the findings are inconsistent really '
proceeds on an error in appreciating the basic differences between the causes of
action and right to relief in suits for passing off and for infringement of a
registered trade mark and in equating the essentials of a passing off action
with those in respect of an action complaining of an infringement of a
registered trade mark. We have already pointed out that the suit by the
respondent complained both of an invasion of a statutory right under Section 21
in respect of a registered trade mark and also of a passing off by the use of
the same mark. The finding in favour of the appellant to which the learned
Counsel drew our attention was based upon dissimilarity of the packing in which
the goods of the two parties were vended, the difference in the physical
appearance of the two packets by reason of the variation in their colour and
other features and their general get-up together with the circumstance that the
name and address of the manufactory of the appellant was prominently displayed
on his packets and these features were all set out for negativing the
respondent's claim that the appellant had passed off his goods as those of the
respondent. These matters which are of the essence of the cause of action for
relief on the ground of passing off play but a limited role in an action for
infringement of a registered trade mark by the registered proprietor who has a
statutory right to that mark and who has a statutory right to that mark and who
has a statutory remedy in the event of the use by another of that mark or a
colourable imitation thereof. While an action for passing off is a common law
remedy being in substance an action for deceit, that is, a passing off by a
person of his own goods as those of another, that is not the gist of an action
for infringement. The action for infringement is a statutory remedy conferring
on the registered proprietor of a registered trade mark for the vindication of
"the exclusive right to the use of the trade mark in relation to those goods"
(Vide Section 21 of the Act). The use by the defendant of the trade mark of the
plaintiff is not essential in an action for passing off, but is the sine qua non
in the case of an action for infringement. No doubt, where the evidence in
respect of passing off consists merely of the colourable use of a registered
trade mark, the essential features of both the actions might coincide in the
sense that what would be a colourable imitation of a trade mark in a passing off
action would also be such in an action for infringement of the same trade mark.
But there the correspondence between the two cases. In an action for
infringement the plaintiff must, no doubt, make out that the use of the
defendant's mark is likely to deceive, but where the similarity between the
plaintiffs and the defendant's mark is so close either visually, phonetically or
otherwise and the Court reaches the conclusion that there is an imitation, no
further evidence is required to establish that the plaintiffs rights are
violated. Expressed in another way, if the essential features of the trade mark
of the plaintiff have been adopted by the defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the packets in which he
offers his goods for sale show marked differences, or indicate clearly a trade
original different from that of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the defendant may escape
liability if he can show that the added matter is sufficient to distinguish his
goods from those of the plaintiff.

   25. In Corn Products Refining Co. v. Shangrila Food Products Ltd. (supra) the
Hon'ble Supreme Court held that the question whether the two marks are likely to
give rise to confusion or not is a question of first impression. It is for the
Court to decide that question. In deciding the question of similarity between
the two marks, the marks have to be considered as a whole.

   26. In Laxmikant V. Patel v. Chetanbhai Shah and Anr (supra), the Hon'ble
Supreme Court held as follows:

     It is common in trade and business for a trader or a businessman to adopt a
name and/or mark under which he would carry on his trade or business. According
to Kerly (Law of Trade Marks and Trade Names, 12th Edn, para 16.49) the name
under which a business trades will almost always be a trade mark (or if the
business provides services, a service mark, or both). Independently of questions
of trade or service mark, however, the name of a business (a trading business or
any other) will normally have attached to it a goodwill that the Courts will
protect. An action for passing-off will then lie wherever the defendant
company's name, or its intended name, is calculated to deceive, and so to divert
business from the plaintiff, or to occasion a confusion between the two
businesses. If this not made out there is no case. The ground is not to be
limited to the date of the proceedings; the Court will have regard to the way in
which the business may be carried on in the future, and to its not being carried
on precisely as carried on at the date of the proceedings. Where there is
probability of confusion in business, an injunction will be granted even though
the defendants adopted the name innocently.

   27. The Hon'ble Apex Court further held as follows:

     A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such business
or services associated with a person acquire a reputation or goodwill which
becomes a property which is protected by Courts. A competitor initiating sale of
goods or services in the same name or by imitating that name results in injury
to the business of one who has the property in that name. The law does not
permit any one to carry on his business in such a way as would persuade the
customers or clients in believing that the goods or services belonging to
someone else are his or are associated therewith. It does not matter whether the
latter person does so fraudelently or otherwise. The reasons are two. Firstly,
honesty and fair play are, and ought to be, the basic policies in the world of
business. Secondly, when a person adopts on intends to adopt a name in
connection with his business or services which already belongs to someone else
it results in confusion and has propensity of diverting the customers and
clients of someone else to himself and thereby residing in injury.

   28. The Hon'ble Supreme Court also held that Salmond & Heuston in Law of
Torts (20th Edn. at p. 395) call this form of injury as "injurious falsehood"
and observe the same having been "awkwardly termed" as "passing-off and state:

     The Legal and economic basis of this tort is to provide protection for the
right of property which exists not in a particular name, mark or style but m an
established business, commercial or professional reputation or goodwill. So to
sell merchandise or carry on business under such a name, mark, description, or
otherwise in such a manner as to mislead the public into believing that the
merchandise or business is that of another person is a wrong actionable at the
suit of that other person. This form of injury is commonly, though awkwardly,
termed that of passing-off one's goods or business as the goods or business of
another and is the most important example of the wrong of injurious falsehood.
The gist of the conception of passing-off is that the goods are in effect
telling a falsehood about themselves, are saying something about themselves
which is calculated to mislead. The law on this matter is designed to protect
traders against that form of unfair competition which consists in acquiring for
oneself, by means of false or misleading devices, the benefit of the reputation
already achieved by rival traders.

   29. In Midas Hygiene Industries (P) Ltd. and Anr. v. Sudhir Bhatia and Ors.
(supra) the Hon'ble Supreme Court held as follows:

     The law on the subject is well-settled. In cases of infringement either of
trade mark or of copyright, normally an injunction must follow. Mere delay in
bringing action is not sufficient to defeat grant of injunction in such cases.
The grant of injunction also becomes necessary if it prima facie appears that
the adoption of the mark was itself dishonest.

   30. In the facts and circumstances of this case which attracts our attention
that admittedly the appellant adopted the mark after the respondent. There is no
dispute Hint, the respondent is the prior user and has a right, to debar the
appellant/defendant from eating into flu; goodwill it may have built op in
connection with the name. Therefore, after considering the decision of Satyam
Infoway Ltd. v. Sifynet Solutions (P) Ltd. (supra.) we can easily come to the
conclusion that the plaintiff/respondent has been able In make out a case for
passing off.

   31. In S.J.S. Business Enterprises (P) Ltd. v. Stair of Bihar and Anr.
(supra) the Hon'ble Supreme Court held that as a general rule, suppression of a
material fact by a litigant disqualifies such litigant from obtaining relief.
This rule has been evolved out of the need of the Courts to deter a litigant
from abusing the process of Court by deceiving it. But the suppressed fact must
be a material one in tin: sense that had ii not been suppressed it would have an
effect on the merits of the case. It must be a matter which was material for the
consideration of the Court, whatever view the Court may have taken.

   32. After applying the said tests we do not find that the appellant/defendant
has been able to make out a case which calls for interference by us in respect
of the order so passed by the Hon'ble First Court is no case has been made out
by the appellant which can be said to be a suppression of material facts.

   33. For the reasons stated hereinabove, we uphold the decision of the Hon'ble
First Court and dismiss this appeal.

   Tapan Kumar Dutt, J.

   34. I agree.