1984 (1) TMI 346 - HC - Indian Laws

Summary

Issues Involved:
1. Temporary Injunction for Trademark Infringement
2. Consolidation of Application for Cancellation of Design Registration
3. Perpetual Injunction for Trademark and Design Infringement
4. Passing Off
5. Copyright Infringement of Cartons
6. Design Infringement of Stoves

Issue-wise Detailed Analysis:

1. Temporary Injunction for Trademark Infringement:
The plaintiff sought a temporary injunction to restrain the defendant from manufacturing, selling, or offering stoves under the identical or similar design, shape, or configuration as the plaintiff's stoves, which are trademarked as 'Perfect' and 'Swastik Perfect'. The court noted that the plaintiff had been using the trademark 'Perfect' since 1964, and the defendant, who had been an agent for the plaintiff until 1981, started manufacturing stoves under the trademarks 'Trishul Perfect' and 'Vijay Perfect'. The court found that the plaintiff's use of the trademark 'Perfect' was earlier than the defendant's, and there was a risk of the defendant passing off their goods as those of the plaintiff. Therefore, the court issued a temporary injunction restraining the defendant from using the word 'Perfect' as a trademark.

2. Consolidation of Application for Cancellation of Design Registration:
The defendant filed an application (C.O. 14/83) for the cancellation of the plaintiff's stove design registration. The plaintiff sought to consolidate this application with the present suit. The court found that consolidating the application would cause unnecessary confusion, as it only pertained to the validity of the design registration and not to the trademarks and copyrights of the cartons, which were more significant for the suit. Hence, the court dismissed the consolidation application but ordered that it be listed on the same day and before the same bench as the present suit.

3. Perpetual Injunction for Trademark and Design Infringement:
The plaintiff sought four types of perpetual injunctions: to restrain the defendant from using the trademarks 'Perfect' and 'Swastik Perfect', from using cartons with these trademarks, from using stoves with a similar design, and from passing off their stoves as those of the plaintiff. The court found that the plaintiff did not have an exclusive right to the word 'Perfect' due to a disclaimer during the trademark registration. However, the court acknowledged that the plaintiff could still claim rights against passing off, as these rights do not arise from trademark registration but from common law.

4. Passing Off:
The court analyzed whether the plaintiff could restrain the defendant from using the word 'Perfect' on the grounds of passing off. It concluded that despite the disclaimer, the plaintiff could still acquire the right to exclusive use of the word 'Perfect' through long usage. The court found that the defendant, having been the plaintiff's agent, could easily pass off their products as those of the plaintiff. Therefore, the court issued an injunction to stop the defendant from using the word 'Perfect' to prevent passing off and deceit.

5. Copyright Infringement of Cartons:
The plaintiff claimed that the defendant's cartons had a similar design to theirs, which had a distinctive and artistic color scheme, get-up, layout, and writing style. The court examined the cartons and found sufficient differences between the plaintiff's light yellow background cartons and the defendant's bluish or violet background cartons. The court concluded that there was no prima facie infringement of the copyright of the cartons' shape, color scheme, etc.

6. Design Infringement of Stoves:
The plaintiff claimed that the defendant's stoves had a similar design to theirs, which was registered. The court found that all stoves generally have the same design and did not find anything extraordinary in the plaintiff's stoves. The court opined that as long as the defendant did not use the word 'Perfect' on their products, the stoves would be distinguishable, and there was no need for an injunction regarding the design.

Conclusion:
The court issued a temporary injunction restraining the defendant from using the word 'Perfect' as a trademark or in any words denoting their trademark for stoves to prevent passing off. The application for consolidation was dismissed. The court found no prima facie infringement of the cartons' copyright or the stoves' design. The temporary injunction will continue until the disposal of the suit.