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JUDGMENT Sanjay Kishan Kaul, J.
IA 6198/2002 (U/O 39 Rs 1 & 2 CPC) & IA 8461/2002 (U/O 39 R 4 CPC) 1. The plaintiff has filed a suit for perpetual injunction restraining piracy of trade mark, copyright, passing off and rendition of accounts in respect of the mark 'Gujrat' in relation to his products steel pipes, etc. The defendant is selling 'MS ERW' pipes under the trade name 'Gujarat'.
2. The plaintiff company claims to have been established in the year 1985 and started manufacturing steel pipes since 1988. The trade mark 'Gujrat' is stated to have been adopted in the year 1985 by the predecessor of the plaintiff and the plaintiff has been using it since 1988. The said trade mark is stated to have acquired secondary meaning and distinctiveness on account of its open, regular, continuous, extensive and exclusive use coupled with large scale publicity and advertisement. The plaintiff is stated to have filed an application for registration of the trade mark in respect of all kinds of steel tubes, pipes falling in class-06 on 06.12.1994 before the Registrar of Trade Marks, New Delhi. The total sales figures of the product have been given in Para 10 of the plaint as under:
Period Amount (in Rupees) 1987-88 46,07,166/- 1988-89 2,73,30,707/- 1989-90 9,79,04,969/- 1990-91 13,33,78,743/- 1991-92 8,94,85,890/- 1992-93 15,96,85,392/- 1993-94 19,19,18,765/- 1994-95 19,05,08,334/- 1995-96 28,42,54,485/- 1996-97 48,57,65,286/- 1997-98 53,31,31,491/- 1998-99 62,19,99,748/- 1999-00 86,93,78,057/- 2000-01 95,91,85,718/- 2001-02 93,84,66,437/-
3. The purchasers of the pipes are stated to be general labourers, illiterate or semi-literate purchasers, mechanics, plumbers, builders, etc. and if the test of effect on the mind of an unwary class of purchasers is applied, it is stated that any deceptively similar mark was liable to cause confusion. The defendant-company is alleged to have been established recently and started using the name 'Gujarat' under application no. 901936 and are the owners of copyright under no. A-60552/2002.
4 The plaintiff has alleged that the defendant is attempting to pass off his goods as that of the plaintiff by use of the trade mark 'Gujarat'.
5. The plaintiff filed an application for interim relief IA No 6198/2002 along with the suit and ad interim ex parte orders were granted on 22.07.2002. The defendant has entered appearance and filed its written statement. The defendant has also filed an application for vacation of stay vide application No 8461/2002.
6. Learned counsel for the defendant submitted that insofar as the disposal of the interim application is concerned, the same is a matter of pure question of law and though issues have been framed and evidence directed to be recorded, the application can be considered de hors the same.
7. Learned counsel for the defendant contended that there could never be an exclusive right in favor of the plaintiff in respect of the trade mark 'Gujrat' On the other hand, learned counsel for the plaintiff submitted that the defendant by its notice dated 26.06.2002 had claimed exclusive right in the word 'Gujarat' calling upon the plaintiff to stop the use. It is only in response thereto when the plaintiff submitted that it was the prior user, did the defendant change its stand and claimed that there could not be exclusive user in the word 'Gujrat' as the same is a geographical name and cannot be termed as a trade mark. The plaintiff's contention thus is that the defendant cannot shift the stand and is bound by the admission in the legal notice. Learned counsel for defendant seeks to explain away the said stand on the basis that the defendant was not properly legally advised, and on proper legal advise being rendered, has taken the appropriate stand.
8. In my considered view, it cannot be said that the defendant is precluded from raising the legal issue. No doubt the defendant initially wanted the plaintiff to restrain itself from using the trade mark, but was informed that the plaintiff is a prior suer. Over this issue, there is really no doubt. However, the question remains as to whether 'Gujarat' per se cannot be a trade mark. This is an aspect of law which is sought to be contended by learned counsel for the defendant and there cannot be any estoppel or admission against law. It is a different matter whether the said plea of the defendant can be sustained or whether the same would be dependent on the nature of evidence to be led arising from the claim of the plaintiff being a prior user.
9. Learned counsel for the defendant has proceeded on the basis that the plaintiff be assumed to be a prior user and then the proposition be tested whether it is permissible for the plaintiff to have exclusivity for the user of the trade mark 'Gujrat'
10. Learned counsel for the defendant submitted that geographical terms can be used as a trade mark only in certain exceptional situations as discussed hereinafter.
11. Thus if a place is geographically insignificant whether by reason of population or otherwise, it may be possible to adopt the name as a trade mark. This is stated not to be the position in case of 'Gujarat'. The present case is stated to be one of geographical mis-description as the plaintiff is admittedly based in Delhi and has no operation or commercial nexus with the State of Gujarat. It was thus submitted that the plaintiff is attempting to mislead the consumers, the purchasing public and the trade into believing that steel pipes originate or are manufactured in Gujarat. On the other hand, the defendant hails from Gujarat and is incorporated in the said State. Thus insofar as the defendant is concerned, it was submitted that the use of the trade name 'Gujarat' is an attempt to describe the origin of goods, which is bona fide and amounts to descriptive usage of the mark.
12. Learned counsel for the defendant submitted that 'Gujarat' is a prominent State of India, and in its ordinary or geographical significance, it is inherently neither distinctive nor adapted to distinguish or capable of distinguishing the goods of the plaintiff from those of others. An illustration of this is sought to be given by the fact that on a random internet search of the word 'Gujarat' on a single search engine, there were 5,13,000 results as opposed to only 36 hits for a lesser known place like Dodaballapur. State of Gujarat is stated to be the hub of industrial activity and the plaintiff's acts are detrimental not only to the defendant, but also to several other members of the trade who have a genuine right to use the word' Gujarat' as a source indicator of their goods. It was thus submitted that the plaintiff seeks to wrongfully acquire monopoly over the use of name of State of Gujarat.
13. In order to substantiate the pleas, the learned counsel for the defendant referred to McCarthy on Trademarks and Unfair competition which dealt with the issue of false designation of geographical origin in para 14:23 where it was observed as under:
A geographic designation that is used with goods that do not come from the place named by the designation, and which leads consumers to buy under a misapprehension as to origin, is probably deceptive. This is merely a form of false advertising. If a geographically generic term is used falsely by one who is not in fact selling goods accurately described by the term, then this is clearly a deceptive use. The use of a geographical term that might cause deception as well as confusion will lead to an inquiry as to the motive of defendant.
14. Learned counsel thus submitted that what the plaintiff is doing is actually a form of false advertising. Learned counsel referred to the Division Bench judgment of the Calcutta High Court in the Imperial Tobacco Company Limited v. Registrar of Trade Marks and Anr 1977 Supreme Court 413. The subject matter of the dispute therein was a wrapper of packet of cigarette bearing the device of snow clad hills in outline with the word 'Simla' written prominently. The Deputy Registrar of Trademarks held that though the trade mark was composite in character, its essential feature was 'Simla'. The similarity in its only and obvious signification is a well known geographical name and the chief town of a State, and further, the word 'Simla' was inherently not adapted to distinguish the goods of any particular trader. Insofar as the plea that mark had become distinctive on the material date by reason of extensive sales and advertisement, it was held that it would be unwise to accept the trade evidence as conclusive on question of acquired distinctiveness.
15. The decision of the Deputy Registrar was impugned before the High Court. It was held that the distinctiveness of the trade mark in respect of a geographical name which makes it capable of distinguishing the applicant's goods is vital and essential element for the purpose and such distinctiveness is not possible for any geographical name in its ordinary significance. Thus 'Simla' was held to be a prominent city, capital of Himachal Pradesh, well known in the country and abroad in its ordinary or geographical significance and it was inherently neither distinctive nor adapted to distinguish or capable of distinguishing the goods of the appellant as a particular trader from those of others. The Division Bench further observed that courts of law have further imposed a condition that no trade mark should be allowed to be registered which may hamper or embarrass the trader or trade now or in future in respect of the place or country which is proposed to be registered.
16. Learned counsel for the defendant thus submitted that only if a geographical name has inherent distinctiveness, can the same acquire distinctiveness. Learned counsel referred to the judgment of House of Lords in re: Yorkshire Copper Works Limited v. Registrar of Trade Marks 1952 69 RPC 207. The House of Lords held that the Registrar must consider both whether a mark is inherently adapted to distinguish and whether it is in fact adapted to distinguish. The mark 'Yorkshire' although in fact adapted to distinguish the applicant's goods was inherently not adapted to distinguish goods of any trader and the trade mark was held not to be distinctive and the application rightly rejected and the test laid down was that a geographical name can only be inherently adapted to distinguish the goods of A when you can predicate of it that it is such a name as it would never occur to B to use in respect of similar goods. The illustrations of such names as classic examples given were 'Monte Rosa' cigarettes or 'Teneriffe' for boiler plates. Learned counsel for the defendant also referred to the treatise of P. Narayanan on The Law of Trademarks and Passing Off (Fifth Edition) dealing with the issue of registration of geographical names in para 10.12 which is as under:
3. REGISTRATION OF GEOGRAPHICAL NAMES 10.12 Principles same as for descriptive words Although a geographical name or a word indicating geographical origin is not prima facie capable of distinguishing it may be considered for registration upon evidence of acquired distinctive character by use of the word as a trade mark in relation to particular goods or services. The name of a place when applied to any goods will on the face of it indicate that the goods are manufactured in that particular place; in other words it is descriptive of the place of manufacture. Thus the principles to be applied to the registration of a geographical names are analogous to those for the registration of descriptive words and vice versa.
Just as a manufacturer is not entitled to a monopoly of laudatory or descriptive epithet, so he is not to claim as his own a territory, whether country or district or town, which may be in the future, if it is not now, the seat of manufacture of goods as his own. A geographical name can only be prima facie capable of distinguishing the goods or services of one person from those of others when one can predicate of it that it is such a name as it would never occur to others to use as a trade mark in respect of his similar goods or services.
17. Learned counsel for the defendant next referred to the judgment of the Chancery Division in the matter of application by Liverpool Electric Cable Company; Volume XLVI; Reports of Patent, Design, and Trade mark Cases; Page 99. It was held that the word 'Liverpool' was not prima facie capable of distinguishing electric cables of the applicant or becoming distinctive of them. 'Liverpool' was one of a class of geographical names which were of such importance that that the name ought not to be registered to any one trader. 'Liverpool' was held to describe the common characteristic of vast quantities of goods, namely that they come from Liverpool, and that the phrase 'Liverpool Cables' therefore meant not the cables of the applicant company, but cables manufactured or dealt in at 'Liverpool' Learned counsel for the defendant thus submitted that 'Gujrat' falls in the same category and would be geographical name which would only occur to fellow traders. It would not fall in the category of geographical names with inherent distinction as in the case of 'Luxor', which is a place in Egypt and is used as a trade mark for pens. Such a name could never occur to other manufacturers of pen.
18. Learned counsel for the defendant lastly referred to the judgment of the House of Lords in A.Bailey & Co. Ltd v. Clark, Son & Morland, Ltd Volume LV; Report of Patent, Design, and Trade mark Cases Page 253. The controversy related to the registration of trade mark 'Glastonburys' in respect of slippers, slipper-shoes and motor over shoes. Lord Maugham observed as under:
The Respondents had in fact begun to use the word 'Glastonburys' as a trade mark applied to their slippers in the year 1931. It is agreed that Glastonbury is a geographical name and that the addition of the letter 's' at the end of it makes no difference to the questions which your Lordships have to determine. It is a word which could not be registered as a trade mark under any of the first four paragraphs of Section 9, and in the circumstances of the case it could only be registered at all under paragraph (5) upon evidence that it was distinctive, a word which in this connection is defined to mean; adapted to distinguish the goods of the proprietor of the trade mark from those of other persons The paragraph further provides that ' in determining whether a trade mark is so adapted, the 'tribunal may, in the case of a trade mark in actual use' - which was here in the case - take into consideration the extent to which such user has rendered 'such trade mark inf act distinctive for the goods with respect to which it is 'registered, or proposed to be registered'.
Lord Russel of Killowen in the same judgment observed as under:
The word 'Glastonburys' is an obviously geographical name indicating a locality, namely, the town of Glastonbury. In the town of Glastonbury there are ( and were at the date of the registration) two manufacturers of these sheepskin slippes, namely, the appellants and in the respondents. The town of Glastonbury enjoys a reputation connected with sheepskin slippers, arising from the fact that it is famous for its efficient tanning of the sheepskins with the wool on, which are used in their manufacturer. The buyer for the shoe department of Frederick Gorringe, Limited, testified as follows: It is customary for manufacturers of slippers whose factories are not situate in Glastonbury to make a big selling point of the fact that the skins from which their slippers are made were either tanned or finished in Glastonbury, and they therefore expect to obtain better prices solely for the reason that their skins had been treated in Glastonbury. I have always been prepared to pay more for a slipper which had been produced from a skin treated in Glastonbury than one treated elsewhere, as there is something in the Glastonbury tanning which does not appear to be produced elsewhere.
19. In view of the aforesaid, it was held that the word 'Glastonburys' ought not to have been registered as a trade mark.
20. Learned counsel for the plaintiff, on the other hand, has emphasised the fact that 'Gujrat' has never been known for tubes and thus can be used as a trade mark. The test according to learned counsel for the plaintiff is that if a town is known for a particular product then it would amount to a geographical indication and cannot be used. Thus 'Kolhapuri' cannot be used for chappals while while 'Kolhapuri' can be used for a perfume. Learned counsel for the plaintiff emphasised that the cases cited by the defendant are of registration of a mark. This would imply the proposed use and not a consistent past use.
21. Learned counsel for the plaintiff referred to the judgment in Imperial Tobbaco Company Case (Supra) to emphasise that even while dealing with the word 'Simla' the principle of law which was laid down was that there has to be strong evidence of distinctiveness. Similar would the situation with the judgment in Yorkshire Copper Works Limited's case (Supra). Thus the mark can qualify for registration if it acquires secondary significance.
22. Learned counsel for the plaintiff referred to the treatise of Mr. P.Narayanan to substantiate the plea that there can be a possibility of secondary significance to the name by user as a trade mark over a period of time. The application of the plaintiff was filed in the year 1994 and the plaintiff continued to use the same till the year 2000. In fact the user of the plaintiff as per the material furnished is even for a period longer than that. It was thus submitted that there could not occasion for the defendant to file an application for registration thereafter and the object was to pass off its goods as that of the plaintiff.
23. Learned counsel emphasised that the principles to be applied for a geographical name is the same as for descriptive words.
24. Learned counsel referred to the judgment of the learned Single Judge of the Gujarat High Court in Bharat Tiles and Marble Private Ltd v. Bharat Tiles Manufacturing Company 1978 Gujarat Law Reporter 518 to advance the proposition that merely because a trade name is geographically descriptive, it cannot be urged successfully that the proprietor of the trade is not entitled to succeed in a passing off action provided he is able to establish the requisite grounds of deceit by the use of similar names though it may be of relevant consideration when an application for registration is made Under Section 9 of the Trade and Merchandise Marks Act, 1958. It was held that the name of a business may acquire goodwill in the course of time and the courts would always protect them, and thus, if a rival businessman carries on his business in a name which is calculated to deceive or which may divert the business from the plaintiff to the defendant or may occasion confusion between the two businesses, a passing off action would lie. It would be useful to reproduce para 12,13 & 16 as under:
12. What then are the relevant principles, which the court should bear in mind in passing off action like the present one. The principles are well known and settled by the authorities. The name under which a business trades will almost always be a trade mark and it is always considered difficult, if not impossible, to distinguish between the trading business and a trade name (vide Reuter (R.J.) Co. v. Muhlens (1958) 70 R.P.C. 235). It is no doubt true that where the trade name of an individual business man is geographically descriptive, the mere fact of adoption of the same or similar geographically descriptive trade name would not by itself establish a cause for the relief in a passing off action. The aggrieved party has to prove, as in any other passing off action, that the use by the rival party of his trading style is calculated to lead to the belief that the business of the rival party is the business of the aggrieved party (see Office Cleaning Service v Westminsiter Window and General Cleaners (1946) 63 RPC 39 at page 42). Merely because a trade name is geographically descriptive, it cannot be urged successfully that the proprietary of that trade name is not entitled to succeed in a passing-off action, provided he is able to establish the requisite grounds of deceit by the use of similar name, though it may be a relevant consideration when an application for registration is made under section 9 of the Trade and Merchandise Marks Act, 1958. It is equally significant to note that the name of a business will acquire a goodwill in course of time and the Courts always protect them. A passing-off action would certainly lie at the instance of a business man, if his rival caries on his business in the name which is calculated to deceive or which may divert the business from the plaintiff to the defendant or it may occasion a confusion between the two businesses (vide Daimler Motor Car Co.(1904) Ltd.v. London Daimler Co. Ltd (1907) RPC 379)
13. The crux of the problem in passing off action of business or goods is that : 'Is a name so nearly resembling the name of another firm as to be likely to deceive? And that question is to be determined by the Court.
16. In Brestian v. Try (1958) RPC 161 a similar dispute between two ladies Hairdressers concerning the right jto use the name Charles of London in relation to their respective business arose before the Court of Appeal. Both the parties to the action carried on business as Ladies Hairdressers under the trading name 'Charles of London', Mr. Karl Brestian, the plaintiff, having branches in London, Wambley and Brighton, carried on his business under wholly owned private Company Maison Charles Limited' and the defendant, Mr. Charles Try, carried on business in Tronbridge under the wholly owned private Company 'Charles of London (Coiffeur) Ltd'. The plaintiff's use of the name was added from 1952 whileof the defendant was from 1955. Danckwerts, J.held that there was a certain amount of justified apprehension of potential customers of the plaintiff being diverted to defendant and, therefore, g ranted injunction restraining the defendant from using the name 'Charles of London'. The defendant carried the matter before the Court of Appeal. Jenkins L.J. In his opinion, stated the law applicable in action of such kinds in the following terms:
The law applicable in an action of this kind is not, I apprehend, really open to doubt but it was the subject of some discussion in the course of the hearing, and perhaps I should briefly deal with it before passing to a further examination of the facts. In an action such as this the plaintiff in order to succeed must show first that he has a proprietary interest in the name, or perhaps, it is more accurate to say in the goodwill attaching to the name, and secondly, that the adoption of name by the defendant brings about a tangible risk of damage whether in the form of diversion of customers or confusion of the plaintiff's and defendant's businesses or both. To that one must add that confusion in itself is held to import a sufficient risk or damage to maintain the action.
Romer L.J. In his concurring opinion stated the position of law as under:
.. If a name in which a plaintiff has a substantial goodwill is likely to be confused with a trade name which is adopted by a defendant, then passing-off is established. The law then assumes that damage will follow. Once a plaintiff has established substantial goodwill in a name, he has a property in it which he is entitled to have protected against passing off. When the plaintiff has established that property, the only question is : is there a likelihood in the future that, if the plaintiff and the defendant trade as the Courts think reasonably probably, confusion will arise from the trade name adopted by the defendant?
Ormered L.J. in his concurring speech stated the legal position in the following terms:
The plaintiff must prove a property in the name which he claims that he is entitled to protect and to prevent the defendant using and the name used by the defendant must be proved to be calculated to cause confusion in such a manner that either damages is actually caused or will be apprehended in record to the plaintiff's trade.
25. Learned counsel for the plaintiff sought to substantiate the aforesaid plea that if the submission of the learned counsel for the defendant were to be accepted then in Indian Oil Corporation or Bharat Petroleum, the word 'Indian' or 'Bharat' could not be used exclusively.
26. Learned counsel for the plaintiff referred to the judgment of the learned Single Judge of this Court in Geepee Ceval Proteins and Investment Pvt.Ltd v. Saroj Oil Industry 2003 (27) PTC 190 (Del). The plaintiff was engaged in the business of manufacturing of edible oils and selling its various oil products under the trade mark 'Chambal'. The defendant was selling oil under the trade mark 'Chambal Deep' Interim injunction was granted on the basis that the plaintiff had incurred substantial expenditure on advertisement to build its good reputation and the trade mark 'Chambal' had acquired distinctiveness with the plaintiff's product. The plaintiff was a prior user of the trade mark 'Chambal' and the products were identical. It may be noticed that the plea raised by the defendant was that the word 'Chambal' being a geographical name was not entitled to protection while counsel for the plaintiff argued that the action was one of passing off Under Section 27(2) of the Trade and Merchandise Marks Act, 1999. The defendant contended that its industry was situated on the bank of river Chambal whereas the plaintiff's industry was far off from the said place, and thus, the defendant had superior right to use the word 'Chambal' for selling its products in comparison to the plaintiff's. In this context, it was observed as under:
6. On behalf of the defendant it is vehemently canvased that the industry of the defendant is situated on the bank of river Chambal whereas the plaintiff's industry is far off from this place, therefore, the defendant has superior right to use the word 'Chambal' for selling its products in comparison to the plaintiff's. It is also argued that Section 9(10(a) of the Act prohibits the registration of the geographical name as trade mark and 'Chambal' is the name of river which flows through the 'Chambal' ravines and as such it is a geographical name to which the plaintiff cannot claim exclusive right. Certain judgments as referred to in the arguments of the counsel for the plaintiff have been referred in support of tis contention.
8. The word 'Chambal' is a geographical name and a geographical name can be registered as a trade mark if its distinctiveness is proved. Therefore, section 9 of the Act does not put a blanket ban on the registration of a geographical name as a trade mark. Moreover, the present case is based on passing off the goods of the defendant as that of the plaintiff's goods, therefore, Section 27 of the Act would save the action of the plaintiff.
9. In Bharat Tiles & Marbles Pvt. Ltd (Supra) the trademark involved was 'Bharat' and it was held that mere fact that geographical descriptive name is adopted is not always a defense in passing off action and an injunction was granted. In M/s Hindustan Radiators Co. (Supra) the trademark involved was 'Hindustan', which is a geographical name, and an injunction was granted. In M/s Khetu Ram Bishambar Das (supra) the disputed trademarks were 'Himalaya' and Himachal', both geographical names and were registered was trademark and the injunction was granted. In Shri Jawaharlal & Anr. (supra) the trademark 'Bharat', which was a geographical name and an injunction was granted. In Bajaj Electricals Ltd.(supra) the trademark was 'Bajaj' which was a surname and was registered as a trade. In a number of other suits which have been referred on behalf of the plaintiff the trademark was 'Gwalior' and 'Oxford which are geographical names and the injunction was granted. In South Indis Textiles & Ors (supra) the trademark was 'South India' and it was held that it does not affect the Emblem Act. In Sunder Nagar Association Regd. & Anr (supra) it was held that 'Sunder Nagar', a geographical name, can be a trademark. Same view was taken in Banwari Lal Sham Lal (supra) where 'Landra' a geographical word was upheld as trademark. In Mahendra & Mahendra Paper Mills Ltd. (supra) the work 'Mahendra' was accepted as a registered trade mark and an injunction was granted. All these judgments would show that geographical name, if it had acquired distinctiveness, can be used as a trademark and may even be registered under sub section (2) of Section 9 of the Act.
10. In Imperial Tobacco of India Ltd (supra) the registration of the trademark 'Shimla' was involved and case arose out of the proceedings before the Registrar of Trade Marks. It was not a case of passing off so does not apply to the facts of the case in hand. In R.S.K. v. Raghavan Trading as R.S.Krishna & Co. (supra) the case related to Thennamarakkudi Oil. Thennamarakuddi is a village in Tamil Nadu, which was famous for manufacturing a particular type of oil. The case arose out of the registration of the trademark which was being used by a number of traders for selling Nilgiri Oil and it was held that the word 'Thennamarakuddi could not be appropriated by any one trader since it was not distinctive of the plaintiff so registration of the said trademark was declined. IN M/s Surya Agro Oils Ltd.(supra), it was held that the word 'Surya' cannot be registered as a trademark. The decision turns on its own facts because in a number of other cases the word 'Surya' and 'Sun' have been protected as registered trademark where they have become distinctive of the plaintiff. In Hindustan Pencils Pvt. Ltd. & Ors (supra) the word 'Nataraj' was not protected but the judgment showed that it was decided on its own peculiar facts which are inapplicable to the present case since it is not a case of the registration of trademark. In fact, the counsel for the plaintiff has mentioned a number of well known trademarks like Gwalior Suitings, Ganga Mineral Water, Taj Mahal Tea,Lal Quila Rice, Charminar Cigarette, Hindustan Petroleum, etc. etc. which are geographical names and action based on them has been upheld. Having regard to the case law cited and the fact of the present case, prima facie, it may be held at his stage that Chambal, although it is a geographical name, is capable of becoming a trademark and action for passing off based on it could be maintained.
27. Learned counsel for the plaintiff also referred to the judgment of the learned Single Judge of this court in Bikanervala v. New Bikanerwala; 2005 (30) PTC (Delhi) 113. Interim injunction was granted restraining the use of trade name/trade mark 'Bikaner Walla'. Though the trade name contained a geographical name, but conveyed a distinct and specific meaning in common parlance in view of the user by the plaintiff of over 100 years. 'Bikaner' is a well known geographical city of Rajasthan, which is known and recognized for a particular type/kind of food articles for human consumption.
28. Learned counsel for the plaintiff lastly referred to the judgment of the Division Bench of the Karnataka High Court in The Nilgiri Dairy Farm v. S.A. Rathnasabhapthy 1975 KLJ 505 wherein 'Nilgiris' was a geographical name and 'Dairy Farm' was description of the business. The trade name and trade mark being used : 'Nilgiri Dairy Farm' and 'Nilgiris'. The milk used in manufacture of dairy products came from Coimbatore District and not from Nilgiri District. It was held though the words 'Nilgiris' was a geographical name and 'Diary Farm' was descriptive of the business, the name Nilgiri Dairy Farm had become a trade name to the extent necessary to maintain an action for passing off, and as the plaintiff had acquired valuable reputation, the court would restrain the unauthorised use of that name and mark in a manner calculated to deceive the public and cause damage to the plaintiff.
29. Learned counsel for the defendant in the end sought to rely upon the judgment of the House of Lords in re: York Trademark Case; 1984 RPC 231. It was held that the words 'capable of distinguishing' in the Trademark Act, 1938 Section 10 embraced not only 'capable in fact of distinguishing' but also 'capable in law of distinguishing'. In the case in question, the geographical significance of the mark 'York' was held to have rendered it incapable in law of distinguishing the applicant's goods, even though the mark was 100 per cent factually distinctive of those goods.
30. On consideration of the submissions of learned counsel for the parties, in my considered view, a material fact to be kept in mind is that the present action is one really of passing off. A number of judgments have been referred to by learned counsel for the defendant. They all are in respect of the parameters to be fulfillled before registration of a trade mark.
31. The paragraph referred to by learned counsel for the defendant from the treatise of McCarthy on Trademarks and Unfair competition propounds the principle of false advertising which would arise by geographical designation that is used with the goods which do not come from the place named by the designation. The trade mark in question is 'Gujrat'. It is general in nature since it cannot be said that the whole of Gujarat is known for any particular business/trade. It is not of a particular village or town or city which may be specifically known for goods of a particular origin. It is nobody's case that Gujarat is known for its steel pipes though Gujrat as a State may be known for its business enterprise and a large number of manufacturing units. The word 'Gujrat' is not being used as descriptive of the origin of the goods in the present case. The treatise of P.Narayanan also explains that for purposes of registration, a geographical name may be so registered upon evidence of acquired distinctive character by use of the word as a trademark in relation to particular goods/services. The position is more or less same with the other examples give by the defendant in relation to registration of Liverpool Cables, Glastonburys' slippers, Simla for Tobacco and Cigarettes which have been explained in the judgments referred to above.
32. There is a distinction to be made in respect of an application for registration of a mark which is really for proposed use and an action for passing off where reputation and goodwill associated with the mark being used by the plaintiff has a material bearing. Thus though Section 27(1) of the Trademark Act, 1999 stipulates that no person shall be entitled to institute any proceedings to prevent or recover damages of infringement of an unregistered trademark, right of action against any person for passing off the goods is not extinguished.
33. The important aspect to be considered is whether the word 'Gujarat' has acquired secondary significance and has distinctiveness in respect of the steel pipes produced by the plaintiff. This principle finds support from the judgment of the learned Single Judge of the Gujarat High Court in Bharat Tiles and Marble Private Ltd Case (Supra) as it was held that merely because a trade name is geographically descriptive, it does not imply that an action for passing off cannot be maintained provided the plaintiff is able to establish the requisite grounds of deceit by use of similar name.
34. It is not disputed that both the marks 'Gujrat' and 'Gujarat' are similar if not identical. The only issue is whether the plaintiff can abrogate to itself the use of the said trademark for its steel pipes or preclude the defendant from using the same in respect of the same product on the ground that such sale is an attempt by the defendant to pass off its goods as that of the plaintiff since by consistent prior use, the mark is associated with the product of the plaintiff.
35. It is interesting to note that GeepeeCeval Proteins and Investment Pvt Ltd Case (supra) there was an element of similarity of proposition. The word ' Chambal' was pleaded to be incapable of being protected being a geographical name. The industry of the defendant was situated on the bank of the river Chambal whereas plaintiff's industry was far away from the place. Thus superior right to sue the word 'Chambal' for selling its products in comparison to the plaintiff's products was pleaded. This is also the position in the present case where defendant pleaded that they are manufacturers located in Gujarat while the plaintiff has nothing to do with Gujarat. The learned Single Judge considered the judgments in Bharat Tiles and Marble Private Ltd Case (Supra) as also in the Imperial Tobacco Company Case (Supra) to come to the conclusion that Imperial Tobacco of India Limited Case (Supra) would not apply since that was not a case of passing off. The cases where injunction was granted in respect of the trademark: Himalaya and Himachal, were considered. Similar was the position with the trade mark 'Gwalior' and 'Oxford'. Even, Sunder Nagar, a geographical name was held to be a trademark.
36. In view of the aforesaid, it cannot be said that the plaintiff is dis-entitled on the ground of geographical mis-description as the trade mark 'Gujrat' is not being used to indicate the source of origin.
37. The only question to be considered is whether the continuous prior user of the mark by the plaintiff entitles it to an exclusive user and restraint order against the defendant.
38. A perusal of the plaint and documents shows that sufficient material has been placed on record to substantiate the plea, at least prima facie, of such user over a period of time from the sales running into crores under the said trade mark starting from 1987-88 till 2001-02, the details of which have already been mentioned hereinabove, it does appear prima facie that the name 'Gujrat' has acquired secondary meaning and distinctiveness and has thus come to be exclusively identified and recognised with the products of the plaintiff. The defendant is a much later entrant in the field. The various sample invoices and other documents placed on record do show such vast sales and trade in the particular product under the trade mark/name Gujrat has resulted in a situation where the trade mark/name has prima facie acquired secondary significance and distinctiveness with the plaintiff's product. The use by the defendant of the same trade name for the same nature of products does seem to be an attempt at passing off its goods as that of the plaintiff's. The defendant in fact wanted the plaintiff to restrain itself by a notice but on the plaintiff showing material of much prior use decided to take a turn in its defense. It may also be noted that further enquiry in this behalf can be made during the trial.
39. I am thus of the considered view that the interim orders granted on 22.07.2002 are liable to be confirmed during the pendency of the suit restraining the defendant from using the trade mark 'Gujarat' or 'Gujrat'.
40. IA 6198/2002 is allowed and IA 8461/2002 is dismissed leaving parties to bear their own costs.
41. Needless to say that the views expressed are prima facie in nature and will not effect the final disposal of the suit.