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TMI Blog1987 (12) TMI 328X X X X Extracts X X X X X X X X Extracts X X X X ..... dia exclusively with the plaintiffs. Along with the'plaint a statement showing sales figures of the goods sold under the mark STAYFREE' in India from 1978 till Dec. 1985 has been filed. Another statement showing amounts spent on advertisements and publicity has also been filed. They claim that the mark 'STAYFREE' has acquired a vast and enviable reputation and goodwill and has become distinctive of their goods. Plaintiff No. 1 applied for registration of the trade mark 'STAYFREE' under application No. 369841 dt. 18th Dec., 1980 in respect of sanitary napkins and personal hygiene products used in menstruation claiming user since 1978. The application was advertised in the Trade Marks Journal on 16th Aug. 1984. On 26th Nov., 1984 defendant No. 1 filed a notice of opposition to the said application. The said proceedings are pending. It has been further averred in the plaint that since June, 1978 the plaintiffs have adopted polythene packs having distinctive colour scheme of blue, pink and white getup which is easily recognisable by the customers. On the packing, the mark 'STAYFREE' has been prominently displayed and the catchy legend 'NO BELTS; ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Judge is that the word 'STAYFREE' has reference to the user, that is, it gives a message to the user. The learned single Judge is of the view that it cannot be said that the defendants are marketing their goods in the packing with the mark 'STAYFREE'. On the basis of the material placed on the record by the parties the learned single Judge had held:- the plaintiffs have not been able to show that the use of the words 'STAYFREE' by the defendants on their packing is calculated to deceive the customers as such. The learned counsel for the plaintiffs has not objected to the colour scheme of the packing of the defendants nor has he objected to the use of the legend 'No Belts, No Pins, No Strings' for the purpose of decision of this appeal. The same was the position before the learned single Judge although in the application the plaintiffs did claim an order of restraint for the use of the colour scheme and the aforesaid legend by the defendants. Now the only objection is to the use of the word 'STAYFREE' on the packing of the defendants. Shri Anoop Singh has made two contentions. One, that the use of the mark 'STAYFREE' by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... word 'STAYFREE'. The main thrust of the argument of the learned counsel for the plaintiffs is that the defendants have used the word 'STAYFREE' seven times on their packing with a view to deceive and confuse the customers and they are selling their goods under the pretence that they are the goods of the plaintiffs and that defendants cannot be permitted to practice such a deception. In this case the question is not as to what would be the effect if 'STAYFREE' is used as a trade mark. The question is can the plaintiffs stop the defendants from using the word 'STAYFREE' in the manner being used by the defendants and whether it has the effect as is being suggested by the plaintiffs. The contention of the learned counsel for the plaintiffs is that the intention of the defendants in using the word 'STAYFREE' is dishonest and, therefore, it is a fit case for grant of an order of restraint against them. Reference is made to Lakhbir Singh v. Bakhat Singh, AIR 1973 Delhi 225. In this case the learned single Judge of this Court on comparison of the two marks came to the conclusion that there was similarity between the two devices and the adoption ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eby without making a direct false representation himself to the purchaser who purchases from him, he enables such person to tell a lie or to make a false representation to somebody else who is the ultimate customer. There can be no dispute to the above statement as generally put. This position has been accepted for more than a century that Nobody has any right to represent his goods as the goods of somebody else. (See Reddaway v. Banham (18%) AC 199). But all these questions are connected with the ultimate question whether there is likelihood of confusion and deception to an average unwary customer. If there is likelihood of confusion or deception the injunction has to follow. If there is no likelihood of confusion or deception then there is no question of enabling another person to make a false representation to an ultimate customer or even enabling a trader to tell a lie or to make false representation to the ultimate customer. Similarly in Lever v. Goodwin reported in (1887) 4 RPC 492, the Chancery Division proceeded on the similar getup of the two wrappers and came to the conclusion that the getup of the defendants' soap was a fraudulent imitation of the getup of the plai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inated. Under these circumstances the learned single Judge came to the conclusion that the word Super Flame had been deliberately incorporated in the trading style/trading name of defendant No. 1 and defendant No. 2 was the father of the owner of defendant No. 1. It was this defendant No. 2 who was the contractor of the plaintiff for nearly 12 years. The conclusion drawn was that the word Super Flame was used in trading style by the defendant only with-a view to filch the business of the plaintiff. Accordingly, the plaintiffs were held entitled to permanent injunction restraining the defendants from using the words Super Flame in their trading style. In Charan Dass v. M/s. Bombay Crockery House, 1984 PTC 102, a learned single Judge of this Court restrained defendants from using the word 'perfect' in defendants' mark Trishil Perfect' and 'Vijay Perfect' because defendants, up to 1981, were stocking and selling the stores manufactured by the plaintiffs under plaintiffs' registered trade mark 'Perfect' and 'Swastik Perfect'. The learned Judge came to the prima facie conclusion that defendants can easily pass off their goods as those of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dants. The packing of the plaintiffs shows the trade origin as that of Johnsons and Johnsons whereas that of defendants shows of Christine Hoden . The colour scheme adopted by the plaintiff is that of green and blue whereas the packing of the defendants shows that the base is white with a blue border. The colour scheme of the two wrappers is altogether different. The letter style of the word STAYFREE in the two marks is also quite different. The word 'STAYFREE' has been used, according to the defendants, to convey a message to the customers that by using the 'COMFIT ALWAYS' Napkins, they will stay free of any external support. The counsel has drawn our attention to advertisement in Free Press Journal of 12th Dec. 1985 issue, in which, the prominent trade mark is 'COMFIT ALWAYS' and there is message for the customer reading You would'nt even feel you have worn a sanitary napkin . The defendants also referred to their bill dt. 25th April, 1986, which was filed by plaintiffs in which, while selling the napkins in packets containing the word 'STAYFREE' the defendants make the bill of 'COMFIT ALWAYS' and not 'STAYFREE'. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... stered trade marks was 'CAREFREE'. In 1972 the trade mark of the defendants was 'COMFIT. In Nov 1971 defendants started selling their sanitary Napkins with the mark COMFREE' and adoption of mark 'COMFREE' by the defendants was dishonest with a view to encash upon the goodwill of the plaintiffs. The plaintiffs say that CAREFREE- and 'COMFIT' being deceptively similar an action for passing off was brought by the plaintiffs against defendants in Bombay High Court. The defendants gave an undertaking not to use the trade mark 'COMFREE'. The argument is that the defendants are in the habit of encashing upon the goodwill and reputation of the plaintiffs. They say it is a case of rank dishonesty and, therefore, injunction should Why the defendants have started using 'STAYFREE' is answered by them by explaining that prior to 1985 defendants were not manufacturing beltless Napkins and, therefore, there was no question of their using the word 'STAYFREE' at that time. Defendants say that if their intentions were dishonest then they would not have waited from 1978 to 1985 to use the words 'STAYFREE'. Accoring to defendants when ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... consideration of all facts and circumstances, tilt in favour of the defendants. It cannot be said that defendants are marketing their goods in the packing with the trade mark 'STAYFREE'. There is no resemblance between the two packings. It cannot be said that the use of the words 'STAYFREE' by the defendants is with a view to deceive the ultimate customer. The temporary injunction was rightly refused by the learned single Judge. The learned counsel for the defendants raised various preliminary objections such as about maintainability of the suit; the plaintiffs being not the owners of the trade mark 'STAYFREE'; there being no valid licence in favour of plaintiff No. 2 and that the trade mark of the plaintiffs is 'Johnsons and Johnsons' and not 'STAYFREE'. Another argument on which great stress was laid and various judgments and dictionaries were referred was that the word 'STAYFREE' is descriptive and not distinctive, Defendants say that the word 'STAYFREE' cannot be exclusively appropriated by the plaintiffs. They cannot have a monopoly for use of the word 'STAYFREE'. It is a common English word, defendants urg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y, 'STAY' and 'FREE'. Whether it is a coined word or only a dictionary word would be considered during the trial of the suit. I may, however, add here that according to the learned counsel for the defendants the word 'STAYFREE' is an ordinary English word like 'CAREFREE', 'SALTFREE' TROUBLEFREE' and TAX- FREE etc. The argument of the learned counsel for the defendant is that English is an expanding language. Reference is made to various dictionaries to show as to how these words came into use with the passage of time and how it has become an ordinary English word (See Longman's Dictionary of the English Language, Longman's Dictionary of Contemporary English, Longman-Lax icon- Contemporary English). Defendants say that 'STAYFREE' is a colloquial word. I am making reference to these arguments as considerable time was spent by learned counsel for the parties in arguing this question and for the present I will leave the matter here itself without expressing any opinion. In , view of the conclusions reached above that there is no likelihood of confusion and deception, in my opinion, it is not necessary to decide these questions ..... X X X X Extracts X X X X X X X X Extracts X X X X
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