1995 (10) TMI 235 - HC - Companies Law

Summary

Issues Involved:
1. Jurisdiction of the District Court.
2. Delay, laches, waiver, and acquiescence.
3. Balance of convenience.
4. Common field of activity.
5. Bona fide use of the name "Kirloskar."
6. Likelihood of deception or confusion.
7. Grant of interim injunction.

Detailed Analysis:

1. Jurisdiction of the District Court:
The court held that under Section 105(c) of the Trade and Merchandise Marks Act, 1958, the District Court has jurisdiction to entertain and try suits for passing off arising from the use of a trade mark that is identical or deceptively similar to the plaintiff's trade mark, whether registered or unregistered. The definition of "trade mark" includes "name," and thus the term "trade mark" in Section 105(c) must be considered comprehensive, covering trade names and business names.

2. Delay, Laches, Waiver, and Acquiescence:
The court found that the respondents served notice upon the appellants objecting to the use of "Kirloskar" soon after acquiring knowledge of the appellants' intentions. The period of about 1.5 years between the notice and the filing of suits does not amount to consent, waiver, or acquiescence. The respondents made a strong prima facie case for interlocutory relief, and any delay does not disentitle them to such relief. The court referenced the case of Astra-IDL Ltd. v. TTK Pharma Ltd. and Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., emphasizing that delay does not amount to laches and does not disentitle the respondents to an injunction.

3. Balance of Convenience:
The court concluded that the balance of convenience lies in favor of the respondents. The respondents have a long-standing reputation and goodwill associated with the "Kirloskar" name, while the appellants' use of the name is recent. The respondents' reputation would likely be adversely affected if the appellants were allowed to continue using the name "Kirloskar."

4. Common Field of Activity:
The court noted that the requirement for a common field of activity in passing off actions has evolved. It is no longer necessary to show a common field of activity to succeed in a passing off action. The focus is on whether there is a likelihood of confusion or deception. The court referenced cases such as Mirage Studies v. Counter Feat Clothing Co. Ltd. and Albion Motor Car Company Ltd. v. Albion Carriage and Motor Body Works Ltd., highlighting that the absence of a common field of activity does not bar relief if there is a likelihood of confusion.

5. Bona Fide Use of the Name "Kirloskar":
The court found that the appellants' use of "Kirloskar" was not bona fide. The second appellant had prior knowledge of the respondents' reputation and participated in their image-building programs. The use of "Kirloskar" by the appellants was seen as an attempt to trade on the respondents' reputation and goodwill. The court cited the case of Parker-Knoll Ltd. v. Knoll International Ltd., stating that an artificial person like a company cannot claim the defense of bona fide use of a name under Section 34 of the Act.

6. Likelihood of Deception or Confusion:
The court held that the respondents established a likelihood of deception or confusion due to the appellants' use of "Kirloskar." It was not necessary for the respondents to prove actual confusion; the likelihood was sufficient. The court referenced cases such as Parker-Knoll Ltd. v. Knoll International Ltd. and The North Cheshire & Manchester Brewery Co. Ltd. v. The Manchester Brewery Co. Ltd., supporting the view that the likelihood of confusion is enough to grant relief.

7. Grant of Interim Injunction:
The court upheld the order granting interim injunction, preventing the appellants from using "Kirloskar" as part of their corporate names. The court emphasized the importance of protecting the respondents' reputation and preventing public confusion. The court referenced cases such as British Bata Shoe Co. Ltd. v. Czechoslovak Bata Co. Ltd. and Sheraton Corporation of America v. Sheraton Motels Ltd., supporting the grant of interim injunctions in similar circumstances.

Conclusion:
The court dismissed the appeals with costs, upheld the interim injunction, and refused the application for stay of the order. The issuance of a certified copy was expedited.