S.A. Bobde, J.
1. This Notice of Motion is taken out by the Plaintiffs for an injunction restraining the Defendants from passing of, in the course of trade, their goods as those of the Plaintiffs by the use of the trade mark SIA. The plaintiffs grievance arises mainly because it uses the word SIA which is prominently displayed on its shop and also on its invoices. The Plaintiffs trade in costume jewellery i.e. imitation jewellery which is sold under the trade name SIA, which is also the names given to their shop. The Defendants sell dress materials and sarees in a shop bearing the name SIA. The plaintiffs claimed to have started using the name SIA from the year 1995 and the Defendants adopted sometime in December, 2000. The photograph of the Plaintiffs shop is at Exhibit 'H' to the Plaint and the photograph of the Defendants shop is at Exhibit 'K' to the plaint. In both shops the name SIA is prominently displayed.
2. The Plaintiffs application for registration of the trade mark SIA is pending. Plaintiffs therefore only claim an injunction against passing off. The test of passing off has been stated by the Court in various judgments. The principle was succinctly stated in an early case i.e. The Clock Ltd. v. The Clock Hotel Ltd., (1936) 53 RPC 269, as follows:--
'The principle is this, that no man is entitled to carry on his business in such a way or by such a name as to lead to the belief that he is carrying on the business of another man or to lead to the belief that the business which he is carrying on has any connection with the business carried on by another man.'
The question therefore is whether the Defendants are passing off their goods as those of the Plaintiffs by the use of the trade mark SIA on their shop.
3. It is important to note in this case that neither the Plaintiffs goods nor the Defendants goods bear the trade mark SIA. Therefore, the likelihood of confusion must be judged solely on the basis of the Defendants having commenced trade in a shop which prominently displays the name SIA, which is also displayed on the Plaintiffs shop.
4. Dr. Tulzapurkar, the Learned Counsel for the Plaintiff referred to its sales figures at Exhibit 'D' to the Plaint, from which it appears that the Plaintiff has been doing substantial business in the year 2000-2001. Sales figures of the Plaintiff are in the region of Rs. 2,22,53,779.00. The sales figures have been more than a crore from 1998. These figures shown at Exhibit 'P' to the rejoinder are certified by the Chartered Accountants. The Plaintiffs appear to have spent an amount of Rs. 3,93,000.00 on advertisement. The Plaintiffs business was originally owned by a partnership firm and is now owned by the Plaintiffs company. Prima facie, it appears, from the above material that the name SIA is associated with the Plaintiffs.
5. Mr. Daruwalla, the Learned Counsel for the Defendants, submitted that the word SIA is a name by which the goddess Sita is known and is a common name in India. There cannot be said to be distinctive as is understood in law. He submitted that therefore the Plaintiffs are not entitled to maintain this action. There is no doubt that the word SIA is so common that it is difficult to hold that it is adapted to distinguish. However, it cannot be said that it is inherently incapable, of acquiring distinctiveness. There are instances in the trade mark registration where another similar trade mark SEETA has been registered as a trade mark. In any case, it seems to be a settled position in law that an action against passing off can be maintained against the trade mark, but is distinctive. The well known passage from Shavaksha's Treatise on the Trade and Merchandise Marks Act, 1958, 3rd edition, reads as follows:--
'It is, therefore, possible for a mark to be distinctive and yet not adapted to distinguish. In such a case, the proper course for the Registrar to adopt is to refuse registration of the mark, for instance, the word best, which is used by other traders in respect of their goods or which, in any case, the, are as a right entitled to use. In Bombay, the Bombay Electric Supply & Tramway Co. Ltd. uses its initials, i.e. BEST, on its buses and trams. There cannot be the slightest doubt that if another company were to use the letters BEST on their buses, it would certainly be passing off its buses as the buses of the Bombay Electric Supply & Tramway Co. Ltd. Nevertheless, if the Bombay Electric Supply and Tramway Co. Ltd. were to apply to register the word 'Best', in respect of buses, the application would fail inter alia on the ground that the word Best is not adopted to distinguish. In a series of cases, therefore, it has been laid down that even though the mark may be distinctive, it does not follow that the mark is adapted to distinguish,'
Prima facie, therefore, the Plaintiffs trade mark SIA must be taken to be distinctive for the purpose of passing off action, though it may not have been adapted to distinguish.
6. It is also not possible to uphold the objection of the learned Counsel for the Defendants that the word SIA which is a common name can be registered under Section 9 of the Trade Marks Act. There is no doubt that under Section 9 of the Trade Marks Act a proper name can be registered when written in a stylised manner. In fact, any such name can be registered as a trade mark except or unless the name is one of the names specified under the Emblems and Names (Prevention of Improper Use) Act, 1950.
7. The next contention raised on behalf of the Defendants is that the Defendants are not in the same field. According to the Defendants their goods are not in the common field of activities; and their goods i.e. sarees and dress materials are not in the same field as those of the Plaintiffs which are costume jewellery. There is no doubt that the existence of a common field of activity of the Plaintiffs and the Defendants is not a condition precedent for the grant of an injunction against the passing off. There may be cases where an attempt is made to pass off even if the Defendant's goods are not in the common field of activities. As observed by this Court in Kirloskar Diesel Recon Pvt. Ltd. and Anr. v. Kirloskar Proprietary Ltd. and Ors., : AIR1996Bom149 , with the passage of time, law on the requirement of a common field of activity in a passing off action has radically changed. There is no requirement of common field of activity as a necessary foundation of a claim in passing off. This Court further relied on the case of Mirage Studios v. Counter Feat Clothing Co. Ltd., (1991) FSR 145, and observed that the real question in each case is whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus has shifted from the external objective test of making a comparison of the activities of parties to the state of mind of the public in deciding whether it will be confused.
8. Thus, whether the Defendants goods i.e. sarees and dress materials are goods which are cognate to the Plaintiffs goods i.e. costume jewellery, which I am of view they are, it is more important to see whether the customers, most likely female in this case, would think upon coming across the Defendants shop that the shop has some connection with the Plaintiffs shop which bears the same name. The Defendants shop is at Vile Parle and Plaintiffs shop is at Santacruz, They are not consi'dered to be very far away from each other. As such there is no doubt that a customer who comes across the Defendants shop with the name SIA boldly displayed on it would think that there is some connection with the Plaintiffs shop which also has the name SIA displayed on it. There is every likelihood of consequent confusion that the Defendants shop is connection in some way with the Plaintiffs' shop although it deals with different goods such as sarees and dress materials.
9. While on this question I would like to record my prima facie observation that the Defendants goods are goods which are cognate to the Plaintiffs goods, they may not have as integral a connection as tooth brushes and tooth pastes. However, it is clear that both the goods are used by females and their use is also complementary being part of the dress worn by Indian women. On the question of cognate goods, reference has been made to the decision in (i) Bajaj Electricals case, AIR 1998 Bom. 167, (ii) Kirloskar Reckon Pvt. Ltd. (supra) and (iii) Volvo v. Volvo Steels, 1997 4 LJ 373. Some of the relevant precedents were also considered by me while deciding the Notice or Motion No. 682 of 2003 in Suit No. 667 of 2003 on 9th April, 2003 in the case of Harish Motichand Sariya v. Ajanta India Limited. All these cases support the view that costume, jewellery and sarees and dress materials may be treated as cognate goods.
10. Having come to this conclusion, it is clear that the Defendants business is likely to be associated with the Plaintiffs business and is therefore likely to cause damage to the Plaintiffs reputation. It is interesting to note that the only reason given by the Defendants for adopting the same SIA is that the Defendants have a great faith in the goddess Sita and have therefore adopted the same. There is every possibility that the Defendants like so many others have faith in the goddess but it is obvious that the reason for adopting the name of the goddess for the name of a shop is purely commercial. This name has been most likely adopted because over a period of five years the Plaintiffs have successfully carried on business in costume jewellery under the same name in an adjacent locality. The parties seem to be known to each other. I am thus of view that the acts of the Defendants in adopting the word SIA is not fair. In Laxmikant V. Fatel v. Chetanbhai Shah and Anr., : AIR2002SC275 , the Supreme Court has observed as follows:---
'It does not matter whether the latter person does so fraudulently 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 or 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 resulting in injury. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiffs. The same principle, which applies to trade mark, is applicable to trade name. Passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception.'
11. Mr. Daruwalla, the learned Counsel for the Defendants heavily criticised theuse of persistent reported cases by relying on the observation of Kerly's Law of Trade Marks and Trade Names, 13th Edition, as follows:--
'How can observations of judges upon other and quite different facts bear upon the present case, in which the only question is what is the result of the evidence? Lord Watson asked in Johnston v. Orr-Ewing; but the habit of referring to reported cases at the hearing of such questions is inveterate and list of case are given below.'
I have indeed relied on the decision of this Court referred to by the learned Counsel, but even apart therefrom, it seems to be clear that the name SIA suggests that Defendants shop has some connection with the Plaintiffs shop or may be even a branch of that shop. Mr. Daruwalla, the learned Counsel for the Defendants has relied on the case of String fellow and Anr. v. McCain Foods (G.B.) Limited and Anr. (1984) 24 RPC 501. He referred to the following passage:--
'The Plaintiffs, as a matter or law, can claim no monopoly in the use of the surname String fellow, or indeed in the use of the unregistered word 'String fellows'. The law does not encourage any such monopoly. McCain or any other persons (albeit with full knowledge of, the Plaintiffs prior use) are perfectly free to use that same word in marketing or advertising their goods, provided only that they are not thereby in breach of contract or guilty of passing off, within the principles laid down by the Advocaat case, or some other tort.
This passage does not help the Defendants since in my view the Defendants are guilty of passing off. I must mention, however, it would not have been possible to reach the conclusion I have if the Defendants goods were related to some entirely different lines of business such as motor car accessories or some other.
12. The learned Counsel for the Defendants also relied on Blazer plc. v. Yardley & Company Limited, (1992) Fleet Street Reports 301, where the Plaintiffs who was manufacturing garment with BLAZER as a trading name and trade mark used the Defendants for an injunction against manufacturing and marketing toiletries in the United Kingdom with ,the range called 'Yardley English Blazer'. The injunction was refused by the English, Court. However, that was a case where the trade mark in question appeared on the goods or the parties and not on the shop. In that case the goods of the parties were not in the same field and in circumstances were very different from the present case. As I have observed in this case the trade mark of the parties does not appear on the goods. The likelihood of confusion that need to be assessed is one that might arise because two shops nearby vicinity bearing the same name and marketing allied goods. As I find there would definitely be a likelihood of confusion.
13. In the circumstances of the case, I consider it appropriate in the interest of justice to allow the notice of motion in terms of prayer Clause (a), which reads as follows:--
(a) That pending the hearing and final disposal of the Suit, the Defendants by themselves, their servants and agents be restrained by an order and injunction of this Honourable Court from in any manner using in relation to business or manufacturing and selling or dealing in dress materials the trading name 'SIA' or any other trading name consisting of the word/letters 'SIA' written in any script or the impugned trade mark and the impugned logo mark as appearing in the photograph Ex. 'K' hereto annexed or any other deceptively similar trade mark or label mark and logo mark as that of the Plaintiffs so as to pass off or enable others to pass off the Defendant's goods and/or business and for the goods of the Plaintiffs or in any manner whatsoever so as to indicate some connection with the Plaintiffs.
14. At this stage, Mr. Daruwalla, learned Counsel for the Defendants seeks stay of this order. Having regard to the fact that the Defendants have been doing business under the said trade mark for a period of about two and half years, there shall be a stay of this order for a period of six weeks from today.
15. The Notice of Motion is disposed of accordingly. In the circumstances of the case, there shall be no order as to costs.
All Authorities concerned to act on an ordinary copy of this Order duly authenticated as true copy by the Associate of this Court