1. I have heard arguments for deciding this application.
2. The facts of the case, in brief, are that the plaintiff, who is proprietor of M/s. Punjab Flour Mills, is engaged in the business of manufacturing and marketing Maida, Suji, Atta and Bran since March, 1982. It was pleaded that the plaintiff is the proprietor of the trade mark Lotus Brand with device of Lotus in respect of the aforesaid goods and has been continuously using the said trade mark with such device since March, 1982 onwards and the plaintiff is stated to have filed an application for getting the trade mark with said device registered in its name on January 17, 1983, which application is still pending. The Lotus label with device of Lotus already stands registered in the name of the plaintiff under the Indian Copyright Act, 1957. So, it is pleaded that the plaintiff has acquired statutory right to the use of the said trade mark and the device and the same has become distinctive with the goods of the plaintiff on account of its long, continuous, extensive and exclusive user. It is pleaded that the plaintiff has built up a valuable trade under the said trade mark on account of high quality of goods marketed by the plaintiff under the said trade mark. Plaintiff stated to have extensively advertised the said trade mark in newspapers and magazines and by other modes and is stated to have incurred heavy expenses in that regard since 1982.
3. It was alleged that the defendants have adopted the said trade mark of the plaintiff recently and in order to take undue advantage of the plaintiff's high reputation in the trade have started marketing their goods which are of low quality in the market and unwary purchasers are bound to be deceived in purchasing the goods of the defendants under the impression that they belong to the plaintiff. It is pleaded that the defendants have no right to use the said trade mark with the device of Lotus flower in respect of their similar type of goods and thus the plaintiff filed the suit seeking relief of permanent injunction restraining the defendants from using the said trade mark in respect of their goods. Then, the other consequential reliefs are also sought regarding rendition of' accounts and delivering up of the impugned finished and unfinished goods and the trade mark and the device of Lotus used on cartons etc.
4. Along with the plaint the plaintiff filed the present application seeking interim injunction in the similar manner till the disposal of the suit and ex parte ad interim injunction has been granted which is still in force.
5. Defendants have contested the suit as well as the application pleading that the said trade mark 'Lotus' and the device of white Lotus flower already stands registered in the name of other persons in the record of the Trade Marks Registry and the plaintiff being the pirator of the said trade mark is not entitled to obtain any relief of injunction in respect of the same against the defendants. It is also pleaded that this particular trade mark is being commonly used by the other manufacturers and thus the plaintiff has no exclusive right to use the said trade mark and in part 4 details were given of the applications pending with the Trade Mark Registry for registration of trade mark filed by different parties and also particulars were given that this trade mark stands registered in the name of M. Shah & Company, Baroda and also with Pure Food' Producing Company, Calcutta. It is pleaded that as the plaintiff is not registered owner of the said trade mark, hence, the plaintiff has no right to obtain any relief of injunction restraining the defendants from using the said trade mark and the device.
6. In the replication the plaintiff denied that the plaintiff is pirator of the said trade mark and the device .Plaintiff denied that this trade mark stands registered in the name of any other company. Plaintiff also denied that this is a common trade mark being used by different manufacturers and vendors in the market.
7. From the documents placed on the record it is evident that the plaintiff has been using this particular trade mark 'Lotus Brand' with the device of lotus flower on its products since 1982 and the plaintiff has extensively advertised this trade mark and incurred lot of expenditure on that score and the plaintiff has acquired considerable business under the said trade mark and defendants have started using this trade mark subsequently in respect of similar type of goods as the goods of the plaintiff being marketed under the said trade mark. The short question which arose before this Court was whether the plaintiff is the pirator of the said trade mark or not? Mr. S. K. Bansal, Advocate, has filed an affidavit based on the perusal of the record by Mr. Bansal of the Registry of Trade Mark at Bombay and he has deposed that the trade mark No. 174783 which stood in favor of Pure Food Producing Company, Calcutta, has not been renewed. He has mentioned that the application for registration of the said trade mark was filed in June, 1956 and the trade mark Lotus was advertised in the Trade Marks Journal September 1, 1957. Some opposition was filed and then, the applicant amended his application to show that his application was for preparation of flour and preparation made from cereal not included in other classes for use in the States of Bihar, West Bengal and Orissa and the trade mark was registered for sale of Atta/flour for human consumption for sale in the States of West Bengal, Bihar and Orissa on July 16, 1960. A condition was also imposed that the Lotus device containing the mark shall be limited to the colour white and the trade mark was liable to be renewed after seven years but the same has not been renewed and he obtained a certificate from Shri H.. L. Narain, Senior Examiner of Trade Mark in the office of Trade Marks Registry. This trade mark was liable to be renewed in the year 1984.
8. Defendants' proprietor Shri Bal Ram Gupta has filed counter affidavit stating that Shri Bansal has not clarified in his affidavit as to whether any fee has been deposited for getting the trade mark renewed or not. Shri Bal Ram Gupta has not made any categorical statement in his affidavit that any fee stands deposited with the Registered Trade Mark Proprietor for getting the said trade mark renewed. As the facts now stand it is evident that trade mark has not been renewed by the said registered trade mark owner. If that is so, prima facie, it must be held that the plaintiff cannot be considered pirator of the said trade mark. The learned counsel for the defendants has pointed out that the trade mark Lotus stands registered in the name of M/s. M. Shah & Company but it is clear from, the acts given in para 4 of the preliminary objections in the written statement that the said trade mark has been registered for making Bhujia,, Wada and Idli only and not in respect of Atta for which the plaintiff is using the said trade mark. It is true that various applications including the application of the plaintiff are pending for getting the said trade mark registered but the present case is not based on the factum of registration of trade mark in favor of the plaintiff but is a suit for infringement of the trade mark of the plaintiff as a passing off action.
9. Counsel for the defendants has made reference to a judgment given by a single Judge of this Court in I.A. 3631/86 in Suit No. 1148/86 : , M/s. Capital Plastic Industries v. Kaypee Plastic
Industries, decided on May 20, 1988, by which a pirator of the trade mark was refused the relief of temporary injunction and the appeal filed against that order was also dismissed by the Division Bench vide order dated March 2, 1989, in F.A.0. No. 185/88 but in the present case it is not possible to hold prima facie, that the plaintiff is the pirator of the said trade mark. Hence, nothing said in the aforesaid judgments is applicable to the facts of the present case.
10. Counsel for the defendants has drawn my attention to trade Marks Journals dated January 1, 1991 and January 16, 1991, showing that this trade mark is shown registered in the name of the said company of Calcutta and as yet registered trade mark has not been removed from the Register from the name of the said company for non-payment of renewal fees., It may be that the trade mark has not yet been removed from the Register of the Registry of Trade Marks for non-payment of the fees but the legal effect is quite clear that if the trade mark is not got renewed when it becomes due in accordance with the provisions of the Trade Marks Act, the person in whose name the trade mark stood registered cannot claim that he is the registered trade mark owner. Be that as it may, if the said owner deposits the fee and the matter remains pending with the Registry of Trade Marks for renewal of trade mark, in that situation it could be said that the person in whose name trade mark stands registered has not lost its proprietary rights in the said registered trade mark on account of any delay taking place in the office of the Registry of Trade Marks in renewing the said trade mark. Defendants have not furnished any material to show that the trade mark is not being renewed in the present case on account of any such delay taking place in the office of the Registry of Trade Marks. More over, there is nothing to show that the said company is still marketing its goods under the said trade mark. In National Bell Co. and Gupta Industrial, Corporation v. Metal Goods Mfg. Co. (P) Ltd., AIR 1971 SC 898, it, -was held that the distinctiveness of the trade mark in relation to the goods of a registered proprietor of such a trade mark may be lost in a variety of ways i.e. by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become public juris. The trade mark can also be lost by abandonment. What is essential for the plaintiff to establish in an action for passing off is the distinctive features of a trade mark, substantial user and wide reputation. The law casts an obligation on the defendant not to pass off his own goods as if they had been produced by the plaintiff. In the present case, all these ingredients are prima facie satisfied by the plaintiff. In the present case, the defendants are also committing breach of the registered copyright of the plaintiff. They have adopted totally similar device of Lotus as is being used by the plaintiff for which plaintiff has got it registered under the Copyright Act. Defendants have not come up with any explanation as to how defendants have chosen the similar get up and device as is being used by the plaintiff on its goods. In similar circumstances temporary injunction was granted in M/s. Anglo Dutch Paint, Colour & Varnish Works Pvt. Ltd. v. M/s. India Trading House, . It is well settled by a Division Bench of this Court in Century Traders v. Roshan Lal Duggar & Co., , that in an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants and the registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the Trade Marks Registry does not prove its user by the persons in whose name the mark is registered and is irrelevant for purposes of deciding the application for interim injunction unless, evidence has been led or is available of user of their registered trade mark. There is no evidence brought on the record by the defendants to show that the owner of the registered trade mark is using the said trade mark in the market. So, the law laid down by the Division Bench on this aspect of the case is clearly applicable to the facts of the present, case. Counsel for the defendants has, on the other hand, placed reliance on Gora Mal Hari Ram v. Bharat Soap and Oil Industries, . In the said case, instead of granting interim injunction the Court has directed the defendants only to maintain the proper accounts and file copies of the same in Court six monthly. It depends on the facts of each case to decide whether the plaintiff is entitled to have the interim injunction or not. The Court gave a finding on the peculiar facts of this case that interim injunction could not be granted there being no material on the record as would establish that the plaintiff enjoys such a reputation in relation to 'Savera' soap as would impel the Court to grant such injunction and it was found that the registration has been also granted of the said trade mark to some other manufacturers. The case is distinguishable on facts.
11. Lastly, counsel for the defendants had made reference to Prem Singh v. M/ s. Ceeam Auto Industries, . In the said case,
there was evidence brought on the record to show that the plaintiff had pirated the design of another trader who was shown to be marketing his goods on the basis of the similar design prior to plaintiff coming in the market. It is true that if defendants were to show prima facie that this particular design has been used by other traders in the market prior to the user of the said device by the plaintiff then the plaintiff, prima facie, would not be entitled to get injunction. In the present case, as already held, there is nothing to show prima facie that the plaintiff has pirated the device of Lotus. So, it cannot be said that the plaintiff has not become proprietor of the said trade mark and the device of Lotus and the defendants having come into the market using the same trade mark and the device are obviously, prima facie, passing off their goods as those of the plaintiff and the consumers who buy such goods are, prima facie, liable to be deceived by buying the goods of the defendants treating them to be of the plaintiff. So, I find that it is a fit case for grant of temporary injunction in favor of the plaintiff. Plaintiff has a strong prima facie case in his favor and the balance of convenience is also in favor of the plaintiff. If the injunction is not granted the plaintiff is bound to suffer irreparable injury.
12. I allow the application and confirm the interim I injunction already granted till the disposal of the suit.
13. Application allowed