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TMI Blog2006 (8) TMI 528X X X X Extracts X X X X X X X X Extracts X X X X ..... hip deed was executed in supersession of the earlier partnership deed wherein new partners were inducted. On 06.01.1989, the appellant company was incorporated whereby and whereunder the pattern of shareholding amongst the three brothers was : Arvindbhai Group (40%); Hasmukhbhai Group (30%); and Pravinbhai Group (30%). The registered trademark was assigned by 'Ramdev Masala Stores' in favour of the appellant by a deed dated 20.05.1990. However, by the said deed the goodwill was not assigned. The trademark together with the goodwill was assigned in favour of the appellant company by another deed of assignment dated 20.05.1992. A 'user' agreement was also entered into by the same parties permitting the firm 'M/s. Ramdev Masala Stores' to use the said trademark subject to the terms and conditions stipulated therein. Another partnership firm being 'Ramdev Masala' was started on 01.04.1991 for carrying on the trade of grinding and trading of masalas. A user agreement was also entered into by and between the appellant company and the said firm permitting the latter to use the registered trade mark for seven years i.e. from 01.04.1991 to 31.03.1998 in terms ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... terms whereof the business of the said firm was confined only to trading in spices manufactured by the appellant company. In other words, the respective businesses under the partnership deeds of the said firms are stated to be as under: a. Type of business of Ramdev Masala under the first partnership deed was grinding and selling of spices. b. Type of business of M/s. Ramdev Masala under the second partnership deed was trading in spices. c. The business of M/s. Ramdev Exports was exporting the goods manufactured by the appellant company. DISPUTES 5. Disputes and differences having arisen between the members of the family and in particular between the three brothers, the same was settled by their well-wishers, pursuant whereto and in furtherance whereof a Memorandum of Understanding (MOU) was executed by and between the parties, to which we would advert to a little later. LEGAL PROCEEDINGS 6. On the premise that the respondents had been infringing its rights, trade name and logo, the appellant company filed a suit in the City Civil Court, Ahmedabad, which was numbered as CS No.828 of 2000, inter alia, for the following reliefs: A) The defendants by themselves, their serv ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... statutory right to use 'Ramdev' apart from the label as a whole. (Sections 15 and 17 issue) (ii) The first respondent has a right to use the mark as concurrent user; (Section 29 issue) (iii) That the use complained of is protected, as bona fide user and furthermore the appellant is not entitled to the reliefs sought for as the same were barred under the principles of estoppel, acquiescence, etc. ORDER ON THE APPLICATION FOR INJUNCTION 9. By a judgment and order dated 17.03.2000, the learned Trial Judge opined that the plaintiff company was the owner of the trademark. It was further held that the defendants had started manufacturing and marketing the same business which is deceptively similar to the trademark of the plaintiff which created confusion in the mind of public. However, the defendants were given liberty to manufacture spices in their factory and sell the same in seven outlets under the trademark 'Ramdev Masala'. 10. On an interpretation of the said MOU dated 30.05.1998, it was, inter alia, held: ...Therefore, if there is agreement between the parties that the defendant No.1 should purchase spices from the plaintiff for the purpose of retail- sale ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ured by the appellant. The learned Judge, however, opined that as per the provisions of the Prevention of Food Adulteration Act, 1955, it was mandatory to disclose the name and address of the manufacturer they have been writing their name "Ramdev Masala" as manufacturer which does not create any deception or confusion. Noticing that the appellant got it entered in the records of the Registrar of Trade Mark by following due procedure and acknowledging that the appellant company is the registered proprietor of trade name bearing logo of "Ramdev", it was held that as the respondents had started manufacturing and marketing spices under the trade name "swad" and they had been selling spices in small packets and in view of the averments made by the appellant that the labels and packings adopted by the respondents were deceptively similar to the registered trademark 'Ramdev' and, therefore, passing off goods as it is manufactured by the plaintiff. The learned Judge further observed: ...Comparing the packing material and label of both the parties, it is clear that the label of the defendants is phonetically and visibly similar with the label of the plaintiff. It is deceptively si ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he word "Ramdev Masala" on their label and packing in any manner. However, the defendants are at liberty to manufacture and market spices in any trade name without using the word "Ramdev" or "Ramdev Masala". The respondents were, thus, restrained by temporary injunction from using registered trademark, logo 'Ramdev' or any other trademark, which is identical and deceptively similar to the trademark of the appellant in respect of label and packing material of their goods except in seven outlets mentioned in MOU till final disposal of the suit. They were held to be at liberty to run business of spices under the trade name 'Ramdev Masala' without using the registered trademark 'Ramdev Masala' except in seven outlets. HIGH COURT JUDGMENT 12. Both the parties preferred appeals thereagainst before the High Court. The High Court by reason of its judgment opined: (i) The chain of events goes to show that the business of grinding spices by using the words "Ramdev" and "Masala" in the formation of firm name continued all throughout and, thus, the respondents could be restrained from carrying on business of manufacturing and selling of spices. (ii) The responden ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppellant either in the seven outlets or the goods manufactured by them independently. (iii) The trade mark 'Ramdev Masala' used by the respondents being deceptively similar with that of the registered trade mark, the same would interfere with the quality control product of the appellant and, thus, an order of injunction as was prayed for should have been passed. (iv) The learned Trial Judge as also the High Court misconstrued and misinterpreted the provisions of the 1958 Act vis-`-vis Prevention of Food Adulteration Act and Standards of Weights and Measures Act, as in a case of such nature, a mandatory injunction could be issued directing change of the corporate name of the respondent No.1; as the appellant's right to protect its trade mark is absolute. (v) By reason of the MOU, the respondents were only allowed to carry on the existing trade and thereby the respondents were not permitted to start manufacturing spices under the name and style of 'Ramdev Masala' as would be evident from the fact that they were only entitled to carry on retail business from the seven outlets for the purpose of selling only the end products upon printing the words "not for re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the said business in those names which were not required to be changed by reason of the said MOU. (viii) Furthermore, the stipulations made in the MOU clearly do not oblige the respondent to buy any product from the appellant- Company, and in the event, if it be held that the respondent is bound to sell only the products of the appellant, running of business by the respondent would clearly depend upon the supply of the materials by the appellant alone. (ix) As by reason of the said MOU, the respondent No.1 became entitled to use of mark from seven outlets, the same envisages its right to sell goods having the said mark and not sell of the plaintiffs' goods alone. The MOU must be interpreted in the light of the deed of retirement dated 1.6.1998, which categorically contained a stipulation that the continuing partner "have also decided to continue the said business in the same firm names, viz., 'Ramdev Exports' and 'M/s. Ramdev Masala'" and, thus, the appellant cannot now turn round and contend that the respondent cannot carry on business of grinding and selling masala. (x) In the event the appellant's contention is accepted, the right of the responden ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sed to be used; or (b) statement of number, price, quality or names of places; or (c) other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or (d) colour; seeks to register those trade marks, they may be registered as a series in one registration. 17. Registration of trade marks subject to disclaimer.----If a trade mark - (a) contains any part- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, The tribunal in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... imilar to, the trade mark in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark. Section 33 provides for saving of vested rights. INTERPRETATION OF DEED -PRINCIPLES OF 19. MOU, for the purpose of these appeals, may be treated to be a family settlement. It is, however, well-known that intention of the parties to an instrument must be gathered from the terms thereof examined in the light of the surrounding circumstances. [See Sohan Lal Naraindas v. Laxmidas Raghunath Gadit, (1971) 1 SCC 276] 20. In Delta In ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ty to the MOU, it is not bound by the terms thereof but the same would not mean that in an action for infringement of trade mark, when the MOU was put as a shield to its claim, it could not have taken recourse to proper interpretation thereof for the purpose of determination of the rights of the parties to use the trade mark in question. It is not a case where the courts refused to lean in favour of family arrangement or base its decision on technical or trivial ground. We have been taken through the MOU again and again. It fell for judicial interpretation. Interpretation processes were undertaken by the Courts below. The same would also be reviewed by us hereafter. MOU -ANALYSIS OF 22. The appellant before us is a Company registered and incorporated under the Companies Act. Indisputably, the parties to the MOU being Arvindbhai, Hasmukhbhai and Pravinbhai were its Directors. They are all brothers. All the shares of the Company were held by them and their family members. The Company although is a juristic person was not made a party thereto. The effect of the Company being not a party may have to be considered by the Trial Court in the suit; but, as the parties for the purpose of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ujarati language just above the said logo and the word "masala" which is again in the Gujarati language appears just below the same. 24. Arvindbhai became the exclusive owner of the business Ramdev Exports (Partnership Firm) and Ramdev Masala (another Partnership Firm). MOU contained a clarification to the effect that the other two brothers, viz., Hasmukhbhai and Pravinbhai became the owners thereof and would carry on the management of the business of the Company. The two brothers, Hasmukhbhai and Pravinbhai were given the right to carry on export business under the brand name of 'Ramdev' but in a manner which would not cause any loss to Arvindbhai or vice-versa. Whereas the land situated at Sola went to Arvindbhai along with the building, the machineries belonging to the company remained with the Company. The new factory and machinery also went to the Company. A right of pre-emption in respect of the trade mark Ramdev was also created in terms whereof Hasmukhbhai and Pravinbhai was to offer sale of the said trade mark to Arvindbhai in the event they intend to do so. It was, thus, made clear that the manufacturing activities were to be restricted to the Company through Has ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rticular source to be indentified and thus distinguished from goods or services from other sources. In adopting a definition of 'trade mark' which simply describes the function in terms of capability of 'distinguishing the goods or services of one undertaking from those of other undertakings' the new law is really saying precisely the same thing. 28. In Gujarat Bottling Co. Ltd. and Others v. Coca Cola Co. and Others [(1995) 5 SCC 545], it was held that licensing of trade mark is governed by common law which is also statutorily permissible provided: (i) ...the licensing does not result in causing confusion or deception among the public; (ii) it does not destroy the distinctiveness of the trade mark, that is to say, the trade mark, before the public eye, continues to distinguish the goods connected with the proprietor of the mark from those connected with others; and (iii) a connection in the course of trade consistent with the definition of trade mark continues to exist between the goods and the proprietor of the mark" Making use of another's trade mark is not only a violation of business ethics but has also been linked to dishonestly making use of the goodw ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y similar to that of the registered trade mark. Registration of trade marks is envisaged to remove any confusion in the minds of the consumers. If, thus, goods are sold which are produced from two sources, the same may lead to confusion in the mind of the consumers. In a given situation, it may also amount to fraud on the public. A proprietor of a registered trade mark indisputably has a statutory right thereto. In the event of such use by any person other than the person in whose name the trade mark is registered, he will have a statutory remedy in terms of Section 21 of the 1958 Act. Ordinarily, therefore, two people are not entitled to the same trade mark, unless there exists an express licence in that behalf. DIFFERENT FUNCTIONS OF A TRADE MARK We may now note a few precedents on the function of a trade mark. 31. In Sumat Prasad Jain v. Sheojanam Prasad (Dead) and Others and State of Bihar [(1973) 1 SCC 56], this Court held: ...Thus, the distinction between a trade mark and a property mark is that whereas the former denotes the manufacture or quality of the goods to which it is attached, the latter denotes the ownership in them. In other words, a trade mark concerns the go ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company [American Drill Busing Co. v. Rockwell Mfg. Co., 342 F.2d 1922, 52 CCPA 1173 (1965)]. Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. "Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field" [Id]. Having regard to the above discussion prima facie I am of the opinion that the word Baker occurring in the corporate name of the second defendant suggests its connection or nexus with 'Baker', which depicts a wrong picture as from February, 1995 'Baker' has terminated its relation with the defendants. The continuance of the word Baker as part of the corporate name of the second defendant is likely to cause deception and confusion in the mind of the customers. There would be no justification for the second defendant to use the word Baker as part of its corpor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ake between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion" within the meaning of Article 4(1)(b)." TRADE MARK AND GOODWILL 35. Traditionally, a trade mark has always been considered a vital and inseparable part of the goodwill of the business. In fact, the sale of a trade mark without the sale of the goodwill to the same buyer is considered null and void. However, the trade mark can be assigned with or without the goodwill of business though subject to certain conditions. [See V.A. Mohta's Trade Marks, Passing Off and Franchising, pages 12, 313.] ENTITLEMENT TO USE 36. The contention of the appellant before the Courts below was that its right to the said trade mark has been entrenched by the respondents on account of use of the same as part of the trade name in view of the fact that although it has started the business in the trade name 'Swad', the first respondent, on the label and the packing material of the said product, had printed the name of the manufacturer 'Ramdev Masala' in such a prominent manner that the same would create an impression in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... said right, the remedies provided for in the 1958 Act would be available to it. The terms of the MOU, in our opinion, are clear and unambiguous. It was required to be construed, even if it was obscure to some extent by making attempt to uphold the one which would be in consonance with law and not offend the same. Quality control by a registered trade holder vis-`-vis the one produced by an unregistered one is one of the factors which is required to be taken into consideration for the purpose of passing an order of injunction. It is one thing to say that the respondents were permitted to carry on trade but it would be another thing say that they would be entitled to manufacture and market its products under a name which would be deceptively similar to that of the registered trade mark of the appellant. So long the parties to an arrangement can continue to carry out their respective businesses without infringing the right of another, indisputably the terms thereof must be given effect to. But the matter would be entirely different when a party who has not been expressly authorised to manufacture the goods in which the Company had been carrying on business under the same name, the res ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... also the Standards of Weights and Measures Act, 1976. NON-OBSTANTE PROVISIONS 39. The non-obstante nature of a provision although may be of wide amplitude, the interpretative process thereof must be kept confined to the legislative policy. A non-obstante clause must be given effect to, to the extent the Parliament intended and not beyond the same. [See ICICI Bank Ltd. v. Sidco Leathers Ltd. & Ors., 2006 (5) SCALE 27] The question which also escaped the attention of the High Court was that having regard to the non-obstante clause contained in the 1958 Act ordinarily for any purpose, the trade mark cannot be infringed. If an infringement of trade mark is established, the onus would be on the defendants to show that he is entitled thereto either by reason of acquiescence on the part of the owner of the registered trade mark or he himself has acquired a right thereto. The Provisions of the Standards of Weights and Measures Act or the Prevention of Food Adulteration Act do not confer such right. Yet again, significantly, a pre-emptive right had been conferred in favour of the first respondent which is itself suggestive of the fact that the first respondent admitted and acknowledged th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the word 'Ramdev'.What is registered is a logo wherein the words 'Ramdev' and 'Masala' are prominent. A person may be held to be permitted to carry on business in spices as contradistinguished from the permission to carry on manufacturing goods which are similar to that of the appellant, but in terms of the statutory provisions, the respondents were not legally permitted to sell its products in packages or labels which would be deceptively similar to that of the registered owner of a trade mark. The right to manufacture masala and to sell the same with the registered logo, it will bear repetition to state, was assigned as far back in 1991. If the contention of the Senior Counsel is accepted, the said purpose would be lost. In a case of this nature, therefore, ordinarily an injunction would issue. By reason of interpretation of MOU, trade mark cannot be infringed and further when the right of user has been relinquished, the same could not have been claimed by the respondents. WAIVER 43. The matter may be considered from another angle. If the first respondent has expressly waived his right on the trade mark registered in the name of the appellant-Company, co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de mark. Section 15 of the 1958 Act, in our considered opinion, is not attracted in the instant case. By reason of the said provision, registration of trade mark in regard to the exclusive use is permissible both in respect of the whole trade mark as also the part thereof separately. Where such separate trade mark in regard to a part of it is applied for, the applicant must satisfy the conditions applying to and have all the incidents of an independent trade mark. Sub-section (3) of Section 15 of the 1958 Act provides for a case where the proprietor of several trademarks claimed registration in respect of the same goods or description of the goods which while resembling each other in the material particulars thereof yet differ in respect of the matters provided for therein. We are not, in this case, concerned with such a legal question. 45. In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 1958 Act although is required to be read with Sections 15 and 17 thereof but it is difficult to accept that each part of the logo was required to be separately registered. Section 28 of the 1958 Act confers an exclusive right of using trade mark to a person who has got the trade mark registered in his name. Such right is, thus, absolute. Sub-section (3) of Section 28 raises a legal fiction for the purposes specified therein but we are not concerned therewith in the instant case. Sub-section (2) of Section 29 inter alia provides for the defences.We may not in this case go into the question as to whether it was essential having regard to the provisions contained in the MOU that the user agreement should have been registered in terms of Section 49 of the 1958 Act as was opined by the High Court. But, we have no doubt in our mind that the user agreement having come to an end on 31st March, 1998, i.e., on the expiry of seven years from the date of execution, the respondents could no more claim any right thereunder. The user agreement was valid from 01.04.1991 to 31.03.1998. The MOU came into force from 1.4.1998. The right to user has not been conveyed by reason of the said MOU. The cut ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... not inserted. For the self-same reason, this decision is also not applicable. ESSENCE OF PASSING OFF ACTION 50. In a case of this nature, the test for determination of the dispute would be the same where a cause of action for passing off arises. The deceptively similar test, thus, would be applicable herein. The doctrine of passing off is a common law remedy whereby a person is prevented from trying to wrongfully utilise the reputation and goodwill of another by trying to deceive the public through 'passing off' his goods. In Kerly's Law of Trade Marks and Trade Names' Supplement pages 42 and 43, paragraph 16-02, the concept of passing off is stated as under: The law of passing-off can be summarised in one short general proposition no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. Firstly, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simpl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at of the impugned mark, it was opined that "if one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'". It was further stated: After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it. 53. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980], this Court held: "These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a sta ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erious repercussion on the credit, reputation and goodwill of the plaintiffs themselves. For example, if the first defendants were to commit an act of insolvency or do any act which tarnishes their reputation in the market, there is imminent likelihood of people jumping into the confused conclusion that the plaintiffs had committed an act of insolvency or that they had done something objectionable. I am, therefore, unable to accept the contention of the first defendant that, by their purportedly selling exclusively "Bedrock" goods, they are entitled to adopt the word "Bedrock" as a part of their company name or trading style. That they have done so is not really disputed. In my view, therefore, there is both infringement and passing off action, prima facie. De Cordova and Others v. Vick Chemical Co. [1951 (68) RPC 103] is nearer the issue involved herein as in that case the registered trade mark consisting of the word 'Vaporub' and another registered trade mark consisting of a design of which the words 'Vicks Vaporub Salve' formed a part. The defendants in the suit advertised their ointment as 'Karsote Vapour Rub'. It was held that the defendants had infrin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cts. 57. A civil suit was filed by the first respondent in the Ahmedabad City Civil Court wherein a prayer was made that the deed of assignment be declared null and void and the appellant herein be permanently restrained from using the same as also for a declaration that they are the owners of the said trade mark/trade name. However, an interim order as prayed for therein was not granted. A First Information Report was also lodged against the respondents by the appellant-Company before the Madhupura Police Station for commission of an alleged offence under Section 63 of the Copyright Act and Sections 78 and 79 of the 1958 Act as well as Sections 417, 420, 419 and 486 of the Indian Penal Code. An application for quashing the said complaint was filed before the Gujarat High Court on 4.8.1999. It was dismissed by an order dated 26.10.1999. A Special Leave Petition preferred thereagainst being SLP (Crl.) No. 3900 of 1999 was also dismissed by this Court by an order dated 14.12.1999. In the meanwhile, a rectification application was filed by the respondents before the Registrar of Trade Mark, Mumbai allegedly stating that the registered trade mark bearing No. 447700 was not being used ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lf dishonest. (Emphasis supplied) The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lay by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief. 60. Kerr in his "Treatise on the Law and Practice of Injunction", Sixth Edition at pages 360-361 states as under: Mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues, is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action deceit. But delay may cause the Court to refuse an interlocutory injunction, especially if the defendant has built up a trade in which he has notoriously used the mark.... Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. [See Spry on Equitable Remedies, Fourth Edition, page 433] 61. Applying the aforementioned princ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the name of 'Ramdev'. It is also not correct that having regard to the fact that the property situated at Sola having been given in favour of the respondents, they have acquired a vested right in the trade mark as has been urged before us or otherwise. Respondents did not have any right over the trade mark. They in fact, it will bear repetition to state, assigned the same in favour of the appellant-Company. They have assigned the said trade mark and having relinquished their right, Respondents, thus, now cannot fall back on Section 33 of the 1958 Act. It may be true that there exists a distinction between a suit in a trade mark action against the whole world and a suit for implementation of division of assets amongst the members of the family. But, after the MOU was entered into the parties having separated ceased to be members of a joint family. What was, thus, essential for determining the right of the parties would be the terms of the MOU. 64. Registration of a trade mark and user thereof per se may lead to the conclusion that the plaintiff has a prima facie case, however, existence thereof would also depend upon the determination of the defences raised on behalf of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Commission in the same manner. Thus, it itself thought that the final relief would be granted only by the Arbitrator. We also do not appreciate the conduct of the respondents. They were aware of the rights under the MOU. They had all along been enforcing the same. Legal defence were available to them under the 1958 Act. Evidently, they filed a suit to scuttle the intended action on the part of the respondents pursuant to the public notice dated 15.12.1998. 67. In P.M. Diesels Ltd. v. Patel Field Marshal Agencies & Others [2001 PTC 20 (Del)], the High Court noticed the distinction between logo, trade mark and trade name and was of the view that the defendants cannot be permitted to use the trade name so as to defeat the other portion of the order of injunction already passed against him. An injunction can also be granted against the respondents to use the corporate name. Relief by way of interlocutory injunction would be material in a suit for infringement of trade mark. Balance of convenience, however, would have a vital role to play. We are not oblivious of the fact that respondents have been manufacturing and carrying on business in the sale of spices under the name 'Ramde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 the 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 the 1st respondent. There is sufficient evidence on record to show that the huge business is carried by 'Kirloskar Group of Companies. There is nothing on record to show the extent of the business of the appellants. The 2nd appellant has throughout been aware about the business reputation of the respondents and efforts of the respondents in protecting their rights in the trade marks as also of preventing others to use the word 'Kirloskar' as a part of the trading name or tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntox India P. Ltd (1990) Supp SCC 727, Lakshmikant V. Patel v. ChetanBhai Shah (2002) 3 SCC 65 and Seema Arshad Zaheer v. MC of Greater Mumbai (2006) 5 SCALE 263] The appellate court may not reassess the material and seek to reach a conclusion different from the one reached by the court blow if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. However, in this case the courts below proceeded on a prima facie misconstruction of documents. They adopted and applied wrong standards. We, therefore, are of the opinion that a case for interference has been made out. CONCLUSION 71. Our findings aforementioned, it goes without saying, are prima facie in nature. We place on record that Mr. Nariman contended that there is evidence to show the contrary intention of the parties in respect whereof a large number of documents are available. Evidently respondents may prove. No such document is, however, before us. If the respondents, at the tr ..... X X X X Extracts X X X X X X X X Extracts X X X X
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