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TMI Blog2001 (11) TMI 978X X X X Extracts X X X X X X X X Extracts X X X X ..... r passed by the learned Single Judge of the Bombay High Court injuncting the defendant from using the name 'Mahendra Mahendra' in his business establishment, which order was confirmed by the Division Bench of the court, is under challenge in this appeal filed by the defendant. Mahindra Mahindra Ltd., the respondent herein, instituted a Suit No. 4007 of 1998 in the Bombay High Court seeking a decree of permanent injunction against Mahendra Mahendra Paper Mills Ltd., the appellant herein, restraining it from using in any manner as a part of its corporate name or trading style the words "Mahendra Mahendra" or any word which is deceptively similar to "Mahindra" and/or 'Mahindra Mahindra'. In the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar terms. The case of the plaintiff, sans unnecessary details, is that it is a 'company' incorporated and registered under the Indian Companies Act, 1913 and is an existing company under the Companies Act, 1956. It was incorporated in October 1945 with the name 'Mahendra and Mohammed Ltd.', which was subsequently changed to 'Mahindra and Mahindra Ltd.' on 13th January, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... xclusively with the plaintiff and its group of companies and have acquired tremendous reputation and goodwill among members of public throughout the world including India. The further case pleaded by the plaintiff is that in or about August 1996, it came across a prospectus of the defendant in respect of its public issue and for the first time the plaintiff then came to know about the existence of the defendant and its corporate name. The name of the defendant is almost the same as that of the plaintiff with the only difference in spelling by substituting 'e' for 'i' in 'Mahindra'. It is the contention of the plaintiff that the words are phonetically, visually and structurally almost identical and in any event deceptively similar. In the prospectus of the defendant the words "Mahendra and Mahendra" are more prominently written than the rest of the names. According to the plaintiff the defendant wishes and intends to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff. The plaintiff apprehends that by the use of name/wo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... with his brothers Trikambhai Parvani and Dayalbhai Parwani, incorporated a company by the name of 'Mahendra Mahendra Paper Mills Ltd.'. According to the defendant, the words 'Mahendra Mahendra' was a continuation of their business name which they have been using continuously for various businesses since the year 1974. That the public issue was opened on 25th July, 1996 and the same remained open till 6th August, 1996 and despite wide advertisement by the defendant and best efforts, the defendant could not even manage to get 100 per cent subscription and the allegation by the plaintiff that defendant has been using plaintiff's goodwill is wholly misconceived. The defendant also stated that the name 'Mahendra' is a household name in Gujarat and there are several businesses being carried on in the said name throughout Gujarat. The defendant further stated that its products are, in no way similar to the products and businesses of the plaintiff. The business carried on by the defendant does not overlap with the business of any of the companies enlisted by the plaintiff. The defendant pleads that it has a reputation of its own in the name of 'Mahendra Mahendra' and cannot derive an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... order of temporary injunction from in any manner infringing the plaintiff's registered trade mark "Mahindra" under Registration No. 338997 by using the impugned word/mark "Mahendra" and/or "Mahendra and Mahendra" or any word/s or mark deceptively similar to the plaintiff's registered trade mark.'The appeal filed by the defendant against the said order, Appeal No. 1058 of 1998, was summarily dismissed by the Division Bench of the High Court vide its order dated 2nd December, 1998. The relevant portion of the order reads : "In our view, the impugned order passed by the learned Single Judge does not call for any interference. It is found that the respondents are having registered trade mark of Mahindra Mahindra Company. The appellants want to use the said trade mark by name Mahendra Mahendra Paper Mills Ltd., for which the company was incorporated in the year 1994. However, before the learned Single Judge, the appellants have failed to produce any material on record to show to what extent the appellants were doing business. Further, considering the reasons recorded by the learned Single Judge, this appeal is dismissed. ..." . Hence, this appeal by the defendant. The main ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that the business activity of the defendant company has not yet commenced. The learned counsel contended that the plaintiff successfully established a strong prima facie case in its favour and in the circumstances denial of order of interim injunction will result in irreparable loss and injury in its trade and business. In the submission of Shri Nariman, the learned Single Judge rightly passed the order of interim injunction and the Division Bench was justified in declining to interfere with the said order. In section 105, clause (c), of the Act it is laid down, inter alia, that no suit for passing-off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.Section 106 in which is enumerated the reliefs available in an action for infringement or for passing-off provides in clause (c) of sub-section (2) that : "Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... facturer of the goods is. It is no answer to an opposition to an application for registration to say that there is a number of marks having one or more common features which occur in the proposed mark unless it is proved that these marks had by user acquired a reputation in the market. In the case of Wander Ltd. v. Antox India (P.) Ltd. 1990 Supp(SCC) 727, a bench of three learned Judges considered the question of grant of interlocutory injunction under order 39, rule 1, Code of Civil Procedure, 1908 in a case under section 29(2) of the Act and section 55 of the Copy Right Act, 1957 and held as follows : "Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated :... is to protect the plaintiff against injury by violation of his rights for which he cou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hed, but as has been observed by Viscount Simon in Charles Osentos Co. v. Jhanton [1942] A.C. 130, '.... the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case." In the case of S.M. Dyechem Ltd. v. Cadbury (India) Ltd. 2000 (5) SCC 573, this court formulated the point whether the plaintiff had made out a case for grant of temporary injunction treating the suit as a "passing-off" action, the relative strength of the case was in the plaintiff's favour ? Referring to a number of decisions of this court and courts in England, this court made the following observations : 'Here the point is in relation to relative strength of the parties on the question of "passing-off". As discussed under Point 5, the proof of resemblance or similarity in case of passing off and infringement are different. In a passing-off action, additions, get-up or trade-dress might be relevant to enable the defendant to escape. In National Sewing Thread Co. Ltd. v. James Chadwick Bros. Ltd. 1948 AIR(Mad) 481, the passi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 80, and Hoffman-La Roche Co. Ltd. case 1969 (2) SCC 716. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this court in Dyechem case sought to examine the difference in the two marks "PICNIK" and "PICNIC". It applied three tests, they being : (1) is there any special aspect of the common feature which has been copied ? (2) mode in which the parts are put together differently, i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p. 597, para 39) that " the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK. ...Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rket and the user of such a name is likely to cause not only deception in the mind of an ordinary customer but may also cause injury to the plaintiff-company. The fact that the plaintiff was not producing foam was not enough to hold that there could be no passing-off action in respect of the user of the name "Bata" to the products marketed by the defendants is indicative of their intent.' Bombay High Court in the case of Kirloskar Diesel Recon (P.) Ltd. v. Kirloskar Proprietary Ltd. 1966 AIR(Bom) 149, considered the scope of granting injunction in a suit for infringement of a trade mark under section 106 of the Act by the use of the mark 'Kirloskar', held : 'The principle of balance of convenience applies when the scales are evenly balanced. The existence of 1st appellant in each appeal is very recent whereas the existence of the respondents belonging to "Kirloskar group of companies" has been for over a period of 50 years. On their own showing, the appellants are not using the word "Kirloskar" as trade mark but as part of trading style whereas the respondents have not only acquired distinctiveness and goodwill in the word "Kirloskar" but it is even the registered trade mark of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiff's group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of 'Mahendra' or 'Mahendra Mahendra' for the purpose of its trade and business. Therefore, the Division Bench of ..... X X X X Extracts X X X X X X X X Extracts X X X X
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