Surya Roshni Limited Vs. Electronic Sound Components Co. - Court Judgment

Excerpt:
civil procedure code - order 39 rules 1 & 2--trade marks having same or similar meaning-plaintiff using trade mark ' surya'-defendants adopting trade mark 'bhas-kar' with device of a sun-since both words convey the same meaning likely to deceive or cause confusion in the mind of purchaser-use of trade mark restrained. - - it has further been stated in the plaint that since the year 1984, the plaintiff-company is engaged in the well established business of manufacturing and sale of flouroscent tubes, lamps, bulbs, chokes and fittings thereof. 472227 dated 14th may, 1987 submitted to the trade marks registry branch, the plaintiffs have mentioned, inter alia, chokes as one of their products and it was also mentioned in this application that the plaintiffs have been using the trade mark 'surya' since 30th october, 1984. he further submitted that the opposition filed on behalf of the defendants to the said application has been dismissed by the examiner of trade marks vide letter dated 6th october, 1993, a copy of which was filed by the plaintiff on 11th october, 1993. in this connection, learned counsel referred to invoices of the plaintiff dated 12.2.88, 9.2.88, 27.1.87, 19.9.87, 17.9.86, 8th september, 1986 and 30th august, 1986 regarding sale of chokes under trade mark 'surya',copies of which were filed by the plaintiff along with the list of documents on 12.11.91 and submitted that these invoices clearly showed that the plaintiff had been selling these chokes under trade mark of 'surya' from the year 1986 onwards. he further submitted that the search report dated 1st april, 1992, copy of which had been filed by the defendants on 9.4.92 clearly showed that no other person was having the trade mark of 'bhaskar' in respect of electronic chokes and starters. lastly, learned counsel contended that the plaintiffs had failed to make out a strong case and had not shown any material on record to establish that they enjoyed such a reputation as would impel the grant of interim injunction and as such they were not entitled to interim stay. in the case of goramal hari ram which has also been relied upon by the learned counsel for the defendant, it was held that interim injunction can he granted if the plaintiff shows such material on records which would establish that the plaintiffs enjoyed such a reputation in relation to their goods as would impel the grant of an interim injunction.sat pal, j. (1) this is an application filed on behalf of the plaintiff underorder 39 rules 1 &2 read with section 151 of the code of civil procedure and in' this application it has been prayed that the defendants, their servants, agents, dealers and representatives be restrained from manufacturing, selling, offering for sale or otherwise dealing and passing off their products of electronics chokes under the trade mark 'ebhaskar' with the device of a sun or under any other identical and/or deceptively similar trade mark for the goods of manufacture of the plaintiffs. (2) brief facts as stated in the plaint are that the plaintiff-company was originally incorporated on 17th october, 1973 as parkash tubes pvt.ltd. and changed its name to surya roshni ltd. vide certificate dated 14th december, 1990 issued to this effect by the registrar of companies, delhi and haryana, new delhi. it has further been stated in the plaint that since the year 1984, the plaintiff-company is engaged in the well established business of manufacturing and sale of flouroscent tubes, lamps, bulbs, chokes and fittings thereof. it has then been stated that since 30th october, 1984, the plaintiff-company has been using the trade mark 'surya' in english, hindi and other language in relation to their aforesaid products for sale purposes. it has further been .stated that the plaintiff- company has already applied to the registrar of trade marks under the provisions of trade and merchandise marks act, 1958 for registration of their trade mark 'surya' undervarious applications and one of such applications dated 23.7.85 was acepted for registration and advertised in trade mark 'journal no.950 dated 1.1.89 in class 11 at page no. 1130 and the said trade mark is proceeding to registration. it has also been stated that the plaintiff-company is the owner and proprietor or artistic work in the device of bulb and lamp which is duly registered under the copyright act, 1957 and the plaintiffs are proprietors of the said trade mark 'surya' in respect of the goods mentioned hereinabove since 30th october, 1984. it has also been stated that the plaintiffs during the past many years have established large and extensive sale of their said products under the aforesaid trade mark 'surya' and the annual sales of the aforesaid products run in several crores of rupees. (3) it has been alleged in the plaint that from an advertisement inserted in sandhya time, new delhi dated 31st august, 1991, the plaintiffs came to know that the defendants have adopted/started using the trade mark 'bhaskar' with the device of sun in respect of their products of electronics chokes which is of the same nature, description and classification as the goods manufactured and marketed by the plaintiffs without the permission, consent or authorisation of the plaintiffs. it is further alleged that the use of trade mark 'bhaskar' with the device of sun by the defendants for their said product of electronic choke is a misrepresentation made by the defendants in the course of trade to the customers and is aimed and calculated to injure the business, goodwill and reputation of the plaintiff and to cause potential damages to such business or goodwill. (4) mr. aggarwal, leamed counsel appearing on behaiff of the plaintiff submitted that the plaintiff is the registered proprietor under the registration no. 4407952 in respect of electronic bulbs and tubes since 22nd july, 1985. he further submitted that in their application bearing no.472227 dated 14th may, 1987 submitted to the trade marks registry branch, the plaintiffs have mentioned, inter alia, chokes as one of their products and it was also mentioned in this application that the plaintiffs have been using the trade mark 'surya' since 30th october, 1984. he further submitted that the opposition filed on behalf of the defendants to the said application has been dismissed by the examiner of trade marks vide letter dated 6th october, 1993, a copy of which was filed by the plaintiff on 11th october, 1993. in this connection, learned counsel referred to invoices of the plaintiff dated 12.2.88, 9.2.88, 27.1.87, 19.9.87, 17.9.86, 8th september, 1986 and 30th august, 1986 regarding sale of chokes under trade mark 'surya', copies of which were filed by the plaintiff along with the list of documents on 12.11.91 and submitted that these invoices clearly showed that the plaintiff had been selling these chokes under trade mark of 'surya' from the year 1986 onwards. learned counsel further submitted that on the other hand, the defendant for the first time submitted application bearing no. 516561 for registration of their trade mark 'bhaskar' on 11.9.89. the application, photo copy of which was filed by the defendant on 12.12.91 shows that against the user column it is stated 'proposed to be used'. learned counsel, thereforee submitted that from this application it was clear that the defendants were not using their trade mark 'bhaskar' till 11th september, 1989 whereas the documents referred to hereinabove showed that the plaintiffs had been using their trade mark 'surya' much prior to 11th september, 1989. he, thereforee, contended that the plaintiff must succeed as the user of aforesaid mark by the plaintiff was prior in point of time than the user of 'bhaskar' with the device of sun by the defendant. in support of his contention, learned counsel placed reliance on three judgments in the cases of amrit soap company vs. new punjab soap factory, 1989 (2) alr 242; m/s. thapsons pvt. ltd. vs. ashoka food inds. air 1992 del 11 and m/s. century traders vs . roshan lal duggar & co., : air1978delhi250 . (5) learned counsel further submitted that the trade mark 'bhaskar' with a device of sun was bound to cause deception and confusion qua the trade mark 'surya' of the plaintiff. in this connection, learned counsel drew my attention to the translation of the word bhaskar as given in the dictionary known as 'nalanda vishal shabad sagar', in this dictionary one of the meanings of word 'bhaskar' is 'surya'. learned counsel submitted that the said translation of the word bhaskar and the device of surya adopted by the defendants as their trade mark closely resembled with the trade mark 'surya' of the plaintiff and was likely to deceive or cause confusion in the mind of the purchaser. he submitted that the words conveying the same meaning or suggesting the same idea were in general likely to decieve or cause confusion. in support of his contention, the learned counsel placed reliance on a judgment of supreme court reported in the case of n.s. thread co. ltd.chidambaram vs . james chadwick and bros. ltd., : [1953]4scr1028 , a judgment of madras high court reported in the case of t.g. balaji chattiar, vs . hindustan lever ltd. bombay, : air1967mad148 , a judgment of bombay high court reported in the case of narrottamdas harjivandas & co. vs . bulsar town municipality, : air1941bom11 and a judgment of hyderabad high court reported in the case of balakrishnayya vs. registrar, (1954) hyd. 694. learned counsel, thereforee, contended that the defendants be restrained from using the trade mark 'bhaskar' with the device of 'surya' as prayed in the application. (6) mr. bansal, learned counsel appearing on behalf of the defendants submitted that though the opposition filed by the defendants to the application of the plaintiff for registration of trade mark 'surya' with regard to the chokes has been dismissed, but the dismissal of the opposition being not on merits cannot operate as resjudicata in the present proceedings. in support of this submission, learned counsel placed reliance on a judgment of this court reported in the case of dev dharshan dhoop indus. vs. jetha nand. 1986 ptc 61. (7) learned counsel further submitted that there were many other meanings besides 'surya' of the word 'bhaskar'. he also referred to the dictionary 'bal hindi shabad kosh' and submitted that the meaning ofthe word 'surya' not 'bhaskar'. he further submitted that the meaning of the word was not the test to decide the cases of trade marks. he submitted that the cases of trade marks had to be considered only with reference to visual resemblance and phonetic resemblance. he further submitted that the search report dated 1st april, 1992, copy of which had been filed by the defendants on 9.4.92 clearly showed that no other person was having the trade mark of 'bhaskar' in respect of electronic chokes and starters. in support of his submissions, learned counsel placed reliance on two judgments of the supreme court reported in the cases of amritdhara pharmacy vs . satya deo gupta, : [1963]2scr484 ; k.r. chinna krishna chettiar vs, sri ambal & co., : [1970]1scr290 and a judgment of this court in the case of tohu enterprises pvt. ltd. vs. to ho cycle industries, 1983 ptc 392. delaing with the judgment of the supreme court in the case of m/s.n.s. thread company ltd. (supra), learned counsel submitted that the ratio of that judgment was not applicable to the facts of the present case as the said case pertained to an application made under the trade marks act and was not a case of passing offaction. lastly, learned counsel contended that the plaintiffs had failed to make out a strong case and had not shown any material on record to establish that they enjoyed such a reputation as would impel the grant of interim injunction and as such they were not entitled to interim stay. in support of this contention, learned counsel placed reliance on a judgment of division bench of this court reported in the case of goramal hari ram vs. bharat soap and oil industries, 1985 arb. l.r. 49. (8) i have given my thoughtful consideration to the submissions made by the learned counsel for the parties and have perused the records. admittedly the user of the trade mark 'surya' by the plaintiff is prior in point of time than the user of 'bhaskar' with the device of sun by the defendants with regard to electronic chokes. now the question to be examined is that if a person is the prior user of a trade mark in a particular language, can another person use the trade mark using another word equivalent in translation of the word of the first person? in the present case, the plaintiffs claim the user of trade mark surya since 1984. in any case from the copies of the invoices filed by the plaintiff it is clear that they have been using their trade mark surya in respect of sale of chokes since 1986. the trade mark of the defendant in respect of electronic chokes is bhaskar with the device of sun. since one of the meanings of the word bhaskar is sun and this coupled with device of sun, .it becomes clear that the trade mark of the defendant was likely to cause deception and confusion in the minds of the average man of ordinary intelligence qua the trade mark of the plaintiff. (9) in the case of n. s. thread company ltd. (supra) it was held by the supreme court that 'appellants camouflaging an eagle into a vulture by calling it such is likely to. cause confusion'. similarly in the case of balaji chettiar (supra) it was held by alearned single judge of the madras high court that the trade mark 'surian' was similar to the trade mark 'sun', the former being equivalent of the latter. in the case of bala krishnayya (supra), it was held that the word 'prabhat' (meaning 'sun 'in hindi) was similar to sun. in the present case the trade mark of the defendants is not only the word 'bhaskar' which means sun but there is also device of sun along with the word bhaskar. i am, thereforee, of the view that the defendants' trade mark 'bhaskar' with device of a sun is deceptively similar to the mark 'surya' of the plaintiffs. (10) the judgment of the supreme court in the case of amritdhara pharmacy (supra) relied upon by the learned counsel for the defendant is of no assistance to the defendants as in that case , inter alia, it was held that overall similarity of the composite words having regard to the circumstances of that case was to be considered. the judgment in the case of k. r. chinna krishna chettiar (supra) again is of no assistance to the defendants as in that case it has been held that even if there be no visual resemblance between two marks, that does not matter when there is a close affinity of sound between the words which are distinctive features of the two marks. in the case of goramal hari ram which has also been relied upon by the learned counsel for the defendant, it was held that interim injunction can he granted if the plaintiff shows such material on records which would establish that the plaintiffs enjoyed such a reputation in relation to their goods as would impel the grant of an interim injunction. in the present case, the plaintiffs have filed a statement of annual sale figures of their products and the said statement shows that their sales runs into crores of rupees. (11) in view of the above discussion, the application filed by the plaintiff is allowed and the defendants, their servants, agents, dealers and representatives are restrained from manufacturing, selling, offering for sale or otherwise dealing and passing off their products of electronic chokes under the trade mark 'bhaskar' with the device of a sun till the disposal of the suit.