1979 (11) TMI 270 - HC - Indian Laws

Summary

Issues Involved:
1. Proprietary right to the use of the trade mark.
2. Colorable imitation of plaintiff's marks.
3. Passing off goods as those of the plaintiff.
4. Commencement of defendant's use of marks.
5. Plaintiff's entitlement to damages.
6. Jurisdiction of the Court.
7. Plaintiff's acquisition of copyright to the trade mark.
8. Relief entitled to the plaintiff.
9. Impact of subsequent registration of the trade mark.

Issue-wise Detailed Analysis:

1. Proprietary Right to the Use of the Trade Mark:
The court acknowledged that the plaintiff had been using his trade mark since 1959 and had registered it under the Indian Copyright Act in 1965. The plaintiff had also applied for registration under the Trade and Merchandise Marks Act, which was pending. The court found that the plaintiff had acquired a proprietary right to the use of the mark.

2. Colorable Imitation of Plaintiff's Marks:
The learned District Judge compared the marks used by the plaintiff and the defendant and concluded that "it is not possible to come to the conclusion that they are similar or deceptively similar enabling the plaintiff to seek an injunction or damages." The court found that the marks used by the defendant were not colorable imitations or similar to the trademarks used by the plaintiff.

3. Passing Off Goods as Those of the Plaintiff:
The court found that the defendant had not been passing off his goods as those of the plaintiff. The trial court observed that there was no similarity between the symbols and writings on the wrappers and labels used by the plaintiff and the defendant that could cause confusion among consumers.

4. Commencement of Defendant's Use of Marks:
The court examined whether the defendant had started using the marks in question from September 1972, as alleged by the plaintiff, or from 1952, as claimed by the defendant. The court found that the defendant's claim of using the marks since 1952 was not substantiated.

5. Plaintiff's Entitlement to Damages:
The court found no evidence of actual damage suffered by the plaintiff due to the defendant's actions. Therefore, the claim for damages was disallowed.

6. Jurisdiction of the Court:
The court addressed the defendant's contention that the suit was not competent as the trade mark was not registered at the time of filing. The court clarified that under Section 23 of the Trade and Merchandise Marks Act, the date of registration is deemed to be the date of application, making the suit competent. The court held that it had jurisdiction to entertain the suit.

7. Plaintiff's Acquisition of Copyright to the Trade Mark:
The court acknowledged that the plaintiff had registered the trade mark under the Indian Copyright Act in 1965, establishing his right to the trade mark.

8. Relief Entitled to the Plaintiff:
The court found that the plaintiff was entitled to relief in the form of a declaration of his right to use the trade mark and an injunction to restrain the defendant from using the infringing trade mark. The claim for damages was disallowed due to lack of evidence.

9. Impact of Subsequent Registration of the Trade Mark:
The court noted that the plaintiff had amended the plaint to include a prayer for injunction after the trade mark was registered. The court held that the subsequent registration of the trade mark allowed the plaintiff to maintain an action for infringement.

Conclusion:
The appeal was allowed, and the judgment and decree of the trial court were set aside. The suit was decreed for the declaration and injunction prayed for by the plaintiff, with proportionate costs throughout. The claim for damages was disallowed.