2003 (9) TMI 558 - HC - Companies Law

Summary

Issues Involved:
1. Application for ad-interim injunction by plaintiffs.
2. Application for restraining threats/communications by defendants.
3. Determination of whether ribs on ophthalmic lenses constitute a "trade mark" or "design".
4. Prima facie case establishment.
5. Proprietorship and prior use of the trade mark.
6. Effect of the registration of the design in favor of defendants.
7. Passing off and unfair trade practices.
8. Irreparable loss/injury and balance of convenience.

Detailed Analysis:

1. Application for Ad-Interim Injunction by Plaintiffs:
The plaintiffs filed an application under Order 39 Rules 1 and 2 read with Section 151 CPC, seeking an ad-interim injunction to restrain the defendants from importing, sourcing, manufacturing, distributing, supplying, offering for sale, or dealing in ophthalmic glass blanks/lenses bearing the "two ribs" design not sourced from the plaintiffs. They also sought to prevent the passing off of counterfeit "two ribs" products and the infringement of their copyright in industrial drawings used in the manufacture of these lenses.

2. Application for Restraining Threats/Communications by Defendants:
Defendant No. 1 filed an application to restrain the plaintiffs from issuing threats or communications to their dealers/business associates until the court decided on the stay application.

3. Determination of Whether Ribs on Ophthalmic Lenses Constitute a "Trade Mark" or "Design":
The court examined whether the ribs on the periphery of ophthalmic blanks/lenses fall under the definition of "trade mark" as per the Trade and Merchandise Marks Act, 1958 (TMM Act) or "design" as per the Designs Act, 2000. It was concluded that the ribs are a "trade mark" because they serve to distinguish the plaintiffs' products from those of other manufacturers and connect them with the producers. The ribs do not appeal to the eye or attract purchasers in any manner, thus not qualifying as a "design".

4. Prima Facie Case Establishment:
The court found that the plaintiffs had established a prima facie case, showing that the "two ribs" on the ophthalmic blanks/lenses are a "trade mark" and not a "design". The plaintiffs demonstrated that they had been using the ribs to distinguish their products since 1957 and had developed goodwill and trade reputation. The defendants' use of the "two ribs" mark was seen as an attempt to pass off their products as those of the plaintiffs.

5. Proprietorship and Prior Use of the Trade Mark:
The plaintiffs proved that they had acquired exclusive proprietary rights in the "two ribs" mark through an assignment deed from Pilkington, who had been using the mark since 1988. The court held that the plaintiffs had a prima facie right to the trade mark due to prior use and trade reputation.

6. Effect of the Registration of the Design in Favor of Defendants:
The defendants' registration of the "two ribs" design was found to be prima facie untenable as the ribs were not a "design" but a "trade mark". The court noted that the registration of a trade mark as a design is not conclusive proof of it being a design, and the defendants could not use the registration to infringe on the plaintiffs' trade mark rights.

7. Passing Off and Unfair Trade Practices:
The court emphasized that passing off is a form of unfair trade competition where one party attempts to benefit from the reputation of another. The plaintiffs had shown that the defendants were passing off their goods as those of the plaintiffs by using the "two ribs" trade mark, leading to deception and potential harm to consumers.

8. Irreparable Loss/Injury and Balance of Convenience:
The court found that the balance of convenience and irreparable injury favored the plaintiffs. The plaintiffs' ophthalmic blanks are used in vision corrective lenses, comparable to drugs and medicines, where substandard products could cause serious harm to consumers. The defendants were free to sell their products under their own trade name but could not mislead consumers by using the plaintiffs' trade mark.

Conclusion:
The plaintiffs' application for an ad-interim injunction was allowed, restraining the defendants from using the "two ribs" mark on their ophthalmic blanks/lenses. The defendants' application to restrain the plaintiffs from issuing threats/communications was dismissed. The court held that the "two ribs" are a trade mark and not a design, and the plaintiffs had established a prima facie case of passing off and unfair trade practices. The balance of convenience and potential irreparable injury further supported the plaintiffs' case.