1982 (4) TMI 292 - HC - Companies Law

Summary

Issues Involved:
1. Whether the mark 'OSSO' adopted by the respondents-judgment-debtors is deceptively similar to the registered trademark 'ESSCO' of the petitioners-decree-holders.
2. Whether the adoption and use of the mark 'OSSO' amounts to disobedience of the decree for permanent injunction passed by the Court on July 30, 1980.
3. Whether the words 'SCO' and 'OSSO' were unauthorizedly added to the compromise petition.
4. Whether the judgment-debtors' use of the mark 'OSSO' was dishonest.

Detailed Analysis:

1. Deceptive Similarity of 'OSSO' to 'ESSCO':
The main question for determination was whether the mark 'OSSO' adopted by the respondents-judgment-debtors is deceptively similar to the registered trademark 'ESSCO' of the petitioners-decree-holders. The Court noted that under Section 2(1)(d) of the Trade and Merchandise Marks Act, 1958, a mark is deemed deceptively similar if it so nearly resembles another mark as to be likely to deceive or cause confusion. Factors considered included the nature of the marks, the degree of resemblance (phonetic, visual, and similarity in idea), the nature and purpose of the goods, the class of purchasers, and the mode of purchase. The Court concluded that the marks 'OSSO' and 'ESSCO' were deceptively similar, noting that the offending mark 'OSSO' had taken a substantial part of the registered mark 'ESSCO' and that the two marks were too close phonetically, visually, and in similarity in idea.

2. Disobedience of the Decree:
The decree passed on July 30, 1980, restrained the judgment-debtors from infringing the registered trademark 'ESSCO' by adopting or using the mark 'ESSO' or any other deceptively or confusingly similar mark. The Court had to determine whether the use of 'OSSO' constituted disobedience of this decree. It was found that the judgment-debtors' use of 'OSSO' was indeed in willful disobedience of the decree, as 'OSSO' was deceptively similar to 'ESSCO'.

3. Unauthorized Addition of 'SCO' and 'OSSO':
The judgment-debtors contended that the words 'SCO' and 'OSSO' were unauthorizedly added to the compromise petition. The Court observed that these words were handwritten in the compromise petition and only bore the initials of the decree-holders' counsel. For the purposes of deciding the application, it was agreed that the words 'SCO' and 'OSSO' would not be treated as part of the compromise application. The Court excluded these words from clause (iv) of the compromise deed for the judgment.

4. Dishonest Use of 'OSSO':
The Court found that the adoption of the mark 'OSSO' by the judgment-debtors was dishonest. There was no evidence to suggest that 'OSSO' was descriptive of the goods or represented the names of the partners or proprietors of the defendant firm. The judgment-debtors had previously been restrained from using 'ESSO' and conveniently adopted 'OSSO', which was found to be in no way different from 'ESSO'. The Court concluded that the judgment-debtors' intentions were dishonest, and their use of 'OSSO' was a clear attempt to circumvent the decree.

Conclusion:
The Court held that the mark 'OSSO' was deceptively similar to 'ESSCO' and that the judgment-debtors had disobeyed the decree for permanent injunction. The judgment-debtors were warned and directed to stop using the mark 'OSSO' within one month, failing which they would be liable to be detained in civil prison. The decree-holders were entitled to costs and could move the Court for further directions if necessary.