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TMI Blog2002 (9) TMI 776X X X X Extracts X X X X X X X X Extracts X X X X ..... the suit, this application under order 39 rules 1 and 2 read with section 151 of the Code of Civil Procedure, 1908 ( the Code ) has been filed, seeking ad interim injunction, restraining the defendants from using the trade mark House of ATLAS or any other mark which is deceptively or confusingly similar to the trade mark ATLAS , during the pendency of the suit. 2. The plaintiffs case, in brief, is that it is engaged in the business of manufacture of bicycles and bicycle parts under the trade mark ATLAS ; they are the registered proprietor of the said trade mark since 1952; they enjoy 26 per cent market share in the business of bicycles and bicycle parts and on account of long user and the excellent quality of the goods manufactured and marketed by them for the last 50 years, their trade mark ATLAS has acquired a substantial reputation throughout the length and breadth of India and abroad and that the said trade mark signifies and connotes only the goods manufactured by them. 3. The plaintiff claims that recently they have learn that defendant No. 1 has introduced in the market bicycles under the trade mark House of ATLAS and under the said trade mark they are sur ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tice of the Supreme Court of India, named therein. It is alleged that although the said memorandum was under implementation but shortly after the demise of Shri Bishambar Das Kapur on 16th August, 2000, the other two groups sought to take a total control of the plaintiff-company and all other related companies, whereupon on the 2nd defendant moving an application under section 17 of the Arbitration and Conciliation Act, 1996, the arbitration proceedings commenced on 28th August, 2000. It is claimed that the plaintiff-company has also accepted the said MoU as well as the terms of settlement, which is evident from the minutes of the Board of directors meeting held on 12th September, 2000. The allegation of surreptitious use of the trade mark ATLAS is denied on the plea that under the said MoU all the three groups are entitled to use ATLAS brand as well as the logo on their products with an additional name for identification, as may be permissible in law. It is also claimed that defendant No. 2 being a member of the Kapur family, is a signatory to the said memorandum. 5. The second defendant, Arun Kapur son of Bishambar Das Kapur, in his written statement has stated that defen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d counsel for the plaintiff submits that since it is not in dispute that the plaintiff-company is a registered owner of the trade mark ATLAS , the defendants cannot be allowed to use the same name for marketing their goods or as their corporate name, as, once the plaintiff has established a statutory right in the trade name and has shown that the defendants trade name House of ATLAS infringes its mark, the plea of acquiescence on the part of the plaintiff-company in the user of the trade mark by the defendants is neither relevant nor available to the defendants. He would submit that there has been no suppression of any material fact, as alleged by the defendants because plaintiff-company is not a party either to the MoU dated 8th January, 1999 or to the arbitration proceedings, which are only between the members of the Kapur family. It is asserted that the said MoU does not bind the plaintiff-company in any manner and in any case it has not yet been implemented. In support of the proposition that there can be only one proprietor for the trade mark and if there is an infringement, injunction must follow, strong reliance is placed on the decision of the Supreme Court in Power Co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts to achieve indirectly, what it cannot achieve directly. Relying on New Horizons Ltd. v. Union of India [1995] 1 SCC 478 and LIC of India v. Escorts Ltd. AIR 1986 SC 1370, learned counsel has vehemently urged that this Court must pierce the corporate veil to appreciate that the entire action of a corporate entity lacks bona fide and is merely retaliatory against one group of the family by other groups, who are in control of the company. 12. From the aforenoted rival stands, two main issues arise for consideration, namely, (1) whether the name ATLAS which is a registered trade mark of the plaintiff-company and the name House of Atlas , the trade mark adopted by the first defendant are so similar that a confusion is likely to be caused in the mind of the consumer and (2) whether the user of the name ATLAS , which also forms part of the corporate name of the plaintiff-company by the first defendant in its corporate name is likely to create confusion amongst those who are dealing with the plaintiff-company and the public at large and the consumers; and the plaintiff-company has a legal right to restrain the defendants from selling their products with the offending m ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nfringement where the defendant s trade mark is identical with the plaintiff s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the register, but something similar to it, the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions." 17. Dealing with the question of burden of proof in an action of infringement of trade mark, in Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories AIR 1965 SC 980, the Supreme Court observed as follows : "....In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant s mark is likely to deceive, but where the similarity between the plaintiffs and the defendant s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff s rights are violated. Expressed in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ying the aforenoted broad principles, governing the action for infringement of trade mark, to the facts in hand, I am of the view that comparing the two trade names as a whole, there is a deceptive resemblance between the plaintiff s mark Atlas and the defendants mark House of Atlas . In my opinion the bare use of the word Atlas by the first defendant qua the articles, manufactured, marketed and sold by the plaintiff, namely, bicycles and bicycle parts, etc., even in conjunction with the words House of is likely to cause confusion or deception in the mind of the purchaser, thus, constituting infringement of plaintiff s trade mark Atlas . As noticed, pre-fixation of the words House of the plaintiff s trade mark Atlas , in my view is of no consequence and, therefore, it is a fit case where defendants should be restrained from using the offending trade mark House of Atlas . 22. I am also of the view that in the present case, insofar as the user of the offending mark by the first defendant for marketing its products is concerned, the plea of acquiescence is not available to the defendants. Plaintiffs stand in para 25 of the plaint that it became aware of the defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it the plaintiff-company or other members of the Kapur family. I find it difficult to believe that other members of the Kapur family, managing the affairs of the plaintiff-company, were not aware to the incorporation of the first defendant. In any case, no such plea has been taken in the plaint or the replication. In my opinion, therefore, the plaintiff or its functionaries having kept quiet on the issue for over seven years, the doctrine of acquiescence as also an honest and concurrent user, as envisaged in sub-section (3) of section 12 of the Act, is attracted in the present case, insofar as the corporate name of the first defendant is concerned. 25. Further, the delay or the part of the plaintiff in initiating action for restraining the first defendant from using the corporate name is fatal to the claim of the plaintiff from another angle as well. Section 22 of the Companies Act, as amended by the Amendment Act 47 of 1999, has increased the power of the Central Government to order rectification of name of a company, where it constitutes an infringement of a registered trade mark. The amended provision provides that an action by a registered proprietor of a trade mark for req ..... X X X X Extracts X X X X X X X X Extracts X X X X
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