K. Ramanna, J.
1. The appellant-defendant has come up with this appeal challenging the order dated 12-12-2007 passed on I A. No. 1 in OS. 26819/2007 passed by the IV Add! City Chni and Sessions Judge, Mayohall Unit, Bangalore.
2. The facts of the case are that the appellant and respondent arc the companies incorporated under the Indian Companies Act and are the manufacturers and marketing the bakery items i.e., biscuits/cookies. The plaintiff-respondent is a registered proprietor of the trademark 'GOOD DAY', the plaintiff had also design registration m respect of Good Day biscuit, that in the year 1986 the plaintiff has introduced premium biscuits under the trademark-GOOD DAY and since its introduction it has carved for itself a niche in the market and the public and trade circles identity as 'GOOD DAY' with premium range of biscuits, manufactured/marketed by the plaintiff, and that they are spending enormous amounts for advertisement through print media in different languages. It is further case of the plaintiff-respondent that the defendant since 28th September 2007 onwards has started an advertisement campaign which disparages the products of the plaintiff, that the advertisement issued by the defendant prima-facie disparaging/defaming GOOD DAY product of the plaintiff Therefore the plain tiff-respondent filed the suit restraining defendant-appellant, its directors, principal, proprietor, partners, officers employees, agents, distributors, franchises, representatives and assigns by way of permanent injunction from issuing for print or telecasting/broadcasting the impugned advertisement copies, hand bills, etc, under the banner GREAT DAY or in any other manner disparaging or defaming the good will and reputation of the plaintiff arid its product sold under the trademark 'GOOD DAY' in any advertisement and in all media whatsoever including print and visual media and to direct the defendant to pay the liquidated damages to the tune of Rs. 1,01,50,000/- and costs and other reliefs. Along with the plaint, the plaintiff-respondent filed I.A. No.1. under Order 39 Rule 1 and 2 of CPC which came to be allowed and the defendant/appellant is directed to remove the word 'GOOD DAY' from the impugned newspaper advertisements and the word 'Forget the good' and 'pack' from the TV Ads frame, till the disposal of the suit, being aggrieved the appellant-defendant has come up with this appeal.
3. It is argued by Sri Udaya Holla, learned Counsel appearing for the appellant that the order of the trial court is wholly erroneous, contrary to the facts of the case, evidence on record, perverse and capricious, it is argued that the plaintiff has suppressed material fact and has made false statement before the court and obtained the interim order and that the plaintiff docs not have valid and subsisting registration in respect of 'GOOD DAY' and that the registered trademark of the plaintiff expired on 03-04-2007 and without bringing the same to the notice of the trial court the plaintiff claimed that the registration is still valid and subsisting. It is brought to the notice of the Court that Section 2[1][w] of the Trade Marks Act 1999, provides that 'Registered Trade Mark means a Trade Mark which is actually on the register and remaining hi force.' Therefore A is contended that the plaintiff has not approached the court with clean hands and has suppressed several material facts and is not entitled to the equitable relief of injunction.
4. It is further contended that the plaintiff has suppressed similar advertisement which they themselves have been carrying on in relation to the products of their competitors.
5. It is further case of the appellant that the advertisements of the defendant do not in any way disparage the products of the plaintiff, but only 'puffs up' the product of the defendant and claims that it is the best and that there is no statement used by the defendant appellant to show that the product of the plaintiff is bad nor does it in any way disparages or defames the product of the plaintiff.
6. That the advertisements of the defendant have been published/telecasted since May 2006 continuously and virtually every other day in various TV channels. That the plaintiff has kept quite for more than one and halt year and has made a false statement in plaint that form 28th September 2007 onwards, they came across the advertisements of the appellant being released which arc said to have disparaged the product of the plain tiny respondent That there is delay of 1 years in approaching this Court after appellant started advertisements as such the plaintiff is not entitle to any relief on the ground of acquiescence and delay.
7. It is further contended that the letters 'good day' is a common English word used in India and in several other countries. As such the plaintiff can not claim exclusive right or monopoly over common English letters or terms.
8. It is further contended that the impugned order of the trial court is erroneous as the same is in the nature of granting a mandatory injunction against the appellant without even a prayer being sought for by the respondent in this regard. Finally it is contended that the appellant will suffer immense hardship and irreparable injury if the order of injunction is not set aside and that no hardship or injury would have been caused to the respondent if the temporary injunction was not confirmed or granted. Therefore, he prays for allowing of the appeal by setting aside the order dated 12-12-2007 passed on I.A. No. 1 in the O.S. 26819/2007 and dismiss I.A. No. 1 filed by the respondent-plaintiff.
9. In support of his case, learned Counsel has relied on the following decisions in support of his contentions:
(1) Vadivel Mudaliar v. Pachianna Gounder : AIR1974Mad87
(2) Virupaxappa v. Erevanappa Siddappa Ganigar 1975 (2) Kar.L.J 96
(3) M.S. Narayanagouda v. Girijamma AIR 1977 Kar. 58
(4) Lakshminarasimhaiah v. Yalakki Gowda AIR 1965 Mysore 310
(5) S.P. Chengalavaraya Naidu (Dead) by L.rs. v. Jagannath (Dead ) By L.RS : AIR1994SC853
(6) Kirloskar Propriety v. Kirloskar Dimensions AIR 1997 Kar 1
(7) Power Control Appliances v. Sumeet Machines Pvt. Ltd. : [1994]1SCR708
(8) Eureka Forbes Ltd. v. Pentair Water India Pvt. Ltd. 2007 (4) Kar.L.J 122
(9) Reckitt Benckiser v. Naga Ltd. 2003 (36) PTC 535
(10) Dabur India v. Wipro Ltd. 2006 (36) PTC 677
(11) M. Balasundaram v. Jyothi Laboratories Ltd. 1995 (82) Company Cases 830
(12) J.R. Kapoor v. Micronix India 1994 Supplement (3) SOC 215
(13) MIPR 2007 (2) 316 : Rich Products Corporation v. Indo Nippon Foods Limited.
(14) : [1953]4SCR789 Trojan and Co. Ltd. v. Rm. N.N. Nagappa Chettiar.
10. On the other hand, learned Counsel appearing for the respondent Sri S.S. Naganand argued that the plaintiff applied for renewal of the trade mark on 24-03-2007 by paying prescribed fee even before expiry of registration i.e., on 0304 2007 and that the registrar of the trade mark sent a letter dated 26-11-2007 informing that the registration of trade mark No. 4520003 in class 30 has been renewed for a period of 10 years from 03-04-2007. It is argued that the plain tiff-respondent noticed that since September 2007 onwards has stalled an advertisement campaign which disparages the products of the plaintiff-respondent. It is argued that the advertisement issued by the defendant prima facie disparaging/detaining GOOD DAY product of plaintiff-respondent. He has produced copies of the advertisement and TV Ads before this Court. It is contended that in all the advertisement of the appellant, the aim of the defendant-appellant is to inform the consumers not to buy OOOD DAY products of the plaintiff-respondent hi the said advertisements the defendant-appellant indirectly suggesting the consumers not to buy the GOOD DAY product of the plaintiff-respondent. It is further argued that there is no illegality or incorrectness in the order passed by the Court below. Hence, tie prays for dismissal of the appeal.
In support of his case, learned Counsel for the respondent relied upon the following decisions:
[1] Reckitt & Coleman of India v. M.P. Ramachandran and Anr. 1999 PTC [19] 741
[2] Dabur India Limited v. Emami Limited 2004 PTC [20] 1 [Del]
[3] Karamchand Appliances v. Shri Adhikari Brothers and Ors. 2005 PTC [31] 1 [DEL]
[4] Dabur India Ltd. v. Colgate Palmolive India Ltd. 2004 PTC [29] 401
[5] Eureka Forbes Ltd. v. Pentrai 2007 [4] KAR LJ 122
[6] Pepsi Co. v. Hindustan Coca Cola 2003 [27] PTC 305 [Delhi)
11. Having heard the arguments of learned Counsel appealing for both parties, the questions that arise far my consideration is, Whether the advertisements made by the appellants really defames or slanders the product of the respondents and Whether the order of the court below is illegal, incorrect, perverse and capricious?
12. I have carefully gone through the various decisions re tied on by both the parties. The case on hand is entirely different from the above said decisions and the present case should be decided in its own entirety keeping in mind the principles laid down in the said decisions.
13. It is clear from the facts that respondent is a manufacturer of GOOD DAY biscuits and the appellant is manufacturer of UNIBIC COOKIES i.e., biscuits. Admittedly, the appellant issued advertisement in various newspapers and in the TV. The advertisement of the appellant in newspapers contains the words which are as follows:
No more good days only great day
'why have a good day, when you can have a great day'
Further, in one of the frames in TV ads the word 'Forget the GOOD' is used wherein a picture pushing the 'GOOD' biscuit pack is shown.
14. The present case is a case of disparagement of goods of plaintiff-respondent by using the registered trade mark of the plaintiff-respondent Before going further, it is necessary to look into the recent decision of the co-ordinate Bench of this Court on the point involved in this appeal reported in 2007(4) KAR.LJ. 122 in case of Eureka Forbes Ltd. v. Pentrai wherein referring to the earner judgment made in case of Reckit Coleman of India v. M. Ramachandran and Anr. reported in 1999 PTC (19) 741, it is observed that:
(i) A tradesman is entitled to declare his goods to be best in the world, even though the declaration is untrue.
(ii) He can also say that his goods are better than his competitors, even though such statement is untrue.
(iii) For the purpose of saying that his goods are better than his competitors' he can even compare the advantages of his goods over the goods of others.
(iv) He however, cannot while saying that his goods arc better than his competitors, say that his competitors goods are bad. If he says so, he realty slanders the goods of his competitors. In other words, he defames his competitors and their goods, which is not permissible.
(v) If there is no defamation to the goods or to the manufacturer of such goods no action ties, but if there is such defamation an action ties and if an action lies fox recovery of damages for defamation, then the Court is also competent to grant an older of injunction restraining repetition of such defamation.
From the above it is clear that the comparative advertisement is permissible, so long as such comparison does not disparage or denigrate a trade mark or the products of a competitor. The comparison of different features of two products showing the advantages, which one produce enjoy over the other its also permissible provided such comparison stops short of discrediting or denigrating the other product.
15. Thus though the defendant bee every right to market its product by claiming that Ins product is superior in quality, yet, at the same time the freedom of expressions i.e., the right to advertise does not permit to go to that extent so as to cause damage or irreparable injury to the prod net of the others. In the instant case, from the words used in the advertisement, it is clear that the same are intended to cause damage and loss to the product of the respondent Prima facie, it appears that in all the advertisements the aim of the appellant is to inform the customers not to buy 'GOOD DAY' products of the respondent In its advertisements, the defendant-appellant besides saying/advertising that its products arc superior but are also indirectly suggesting the consumers not to buy the good day product of the respondent There Is resemblance of Good Day product of the respondent with the product depicted in the advertisement In the TV Ads issued by the appellant, in one of its frame, it is mentioned 'FORGET THE GOOD' by pushing the pack, which is similar to the product of the respondent The advertisements issued by the appellant does not stop by saying that its product are superior, but it further continues to say that the product of the plaintiff-respondent are not good. Primafacie, it appears that the advertisements issued by the appellants' creates an impression on the minds of the consumers to buy the product of the appellant instead of the respondent not because it is superior than the product of the respondent, but because the product of the respondent is bad. The words used in the paper advertisements are more clear and attacking on the products of the respondent Thus, it in prima facie, clear that the advertisements issued by the defendant-appellant are intended to degrade and defame the product of the respondent-plaintiff which amounts to disparaging the product of the respondent-plaintiff which is not permissible under law.
16. The word 'GOOD' used in the paper advertisements and TV. ads cannot be termed as a generic word, as the said word is used in the advertisements of the appellant's not to describe its product but it is used to indirectly describe the name of other product, which has a resemblance with the product of the plaintiff-respondent. As such, the contention of the appellant that the word 'GOOD' is used as a common English word cannot be accepted. The context in which the said word 'GOOD' is used in those advertisements clearly indicates the product of the plain tiff-respondent and it defames the same.
17. The receipt dated 24/3/2007 for having paid the prescribed fee for renewal of trade mark of the respondent and the letter sent by the Registrar of Trade Mark discloses that the registration of trade mark of the plaintiff-respondent has been renewed for a period of ten years' tram 3-4-3007. Thus, prams facie, as on 3-4-2007 the registered trade mark of the plaintiff-respondent is in force. As such, the contention of the appellant dial the registered trade mark of the plaintiff-respondent expired on 3-4-2007 and there is valid and subsisting registered trade mark as on 3-4-2007 cannot at this stage be believed. Further, the documents placed before this Court does not make it clear whether the plaintiff-respondent had knowledge of advertisements issued by the defendant-appellant disparaging their produce using the trade mark since May 2006, according to the plaintiff/respondent, they came to know about the said advertisements only during September 2007. In the absence of any clear evidence the plaintiff/respondent cannot be denied of interim order in then favour, on the ground of delay and acquiescence in approaching the Court of law seeking appropriate relief. More over, the name is a mixed question of fact and law to he established before the Court below after a lull fledged trial. As such, the contention of the defendant-appellant that there is a delay of 1 years in approaching the Court of law by the plaintiff/respondent cannot be accepted at this stage.
18. Further more, if the plaintiff-respondent is giving similar advertisements defaming the product of its competitors, it does not give cause of action to the appellant to question the same unless the plaintiff-respondent gives advertisement defaming the product of the defendant appellant. If the plaintiff-respondent did a wrong and he was not punished for it due to some reasons, the same will not gives a right to the appellant to do the same wrong knowing fully well that what it is doing is 'wrong' in the eye of law. The appellant cannot take shelter under an act committed by the plaintiff-respondent with regard to a different subject-matter. As regards the subject matter involved in the present suit, prima facie it appears that the plaintiff-respondent has approached the Court with clean hands. Hence, the trial Court was right in holding that every improper conduct of the plaintiff-respondent does not disentitle it from getting equitable relief.
19. The balance of convenience lies more in favour of plaintiff/respondent in granting interim injunction in its favour. It is the plaintiff/respondent who will be put to great hardship, irreparable loss and injury, if the temporary injunction is not granted. Hence, I do not find any illegality or correctness in the findings recorded by the Court below.
20. However the Court below has committed an error while passing the operative portion of the impugned order which is of mandatory in nature. At this preliminary stage of the suit, the Court cannot grant a relief which is of mandatory in nature. Thus, operative portion of the impugned order is to tie modified.
21. Hence, the appeal is allowed in part The order passed by the Court below directing the defendant/appellant herein to remove the word 'Good Day' from the impugned news paper advertisements and the word 'Forget the good' and 'Pack' from the T.V. Ads frame, is hereby set aside. The appellant is hereby restrained from issuing for print or telecasting tike impugned advertisements in the name form or in any other form disparaging the product of the plaintiff/respondent till the disposal of the suit.
22. Considering the facts and circumstances of the case, the court below is directed to dispose of the suit on or before 30/08/2008. Both the parties are directed to appear before the Court below on 26/05/2008 and co-operate with the Court below to dispose of the suit expeditiously.
Any observations made in this appeal shall not affect the rights of the parties. Office is directed to send back the records forthwith.