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TMI Blog2008 (2) TMI 927X X X X Extracts X X X X X X X X Extracts X X X X ..... CO has been used by the plaintiff since 1960 in respect of the said petroleum products and that the same stands registered in the plaintiff's name as of 12.02.1985. The plaintiff has two registrations' one in respect of the trade mark MICO and the second in respect of the label mark which includes the word MICO. It was also contended by the learned Counsel for the plaintiff that the word MICO also forms a key and vital part of the plaintiff's cooperate name Micolube India Limited. It was further submitted that the plaintiff came to know in September, 2007 that the defendant No. 2 had started manufacturing lubricants from Bangalore using the trademark MICO and that the defendant No. 1 is the dealer of defendant No. 2 though the exact connection was unknown. On the basis of these submissions, this Court passed the following ex parte ad interim orders: The defendants are restrained from using, selling, soliciting, exporting, displaying, advertising by visual, audio, print mode or by any other mode or manner or deal in or use the impugned trademark/label 'MICO' or any other identical and/or deceptively similar word/mark/label in relation to lubricants, petroleum ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... graphs 29 and 30 of the said decision which read as under: 29. According to Section 28(1) of the Act, registration of a trade mark gives to the registered proprietor thereof exclusive right to use the same in relation to the goods in respect of which it has been registered. But from the opening words of Section 28(1) namely, subject to other provisions it is clear that the right conferred on a trader is not an indefeasible right as the same is expressly made subject to other provisions of the Act. This is further, made clear by Section 27(2) of the Act, which provides that nothing in this Act shall he deemed to affect the right of action against any person for passing off the goods as goods of another person or the remedies in respect thereof. Thus it is manifest that Section 28 of the Act and all other provisions come within the over riding sway of Section 27(2) of the Act. Similarly Section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right created by Section 28(1) of the Act in favor of a re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 30(1)(d). Notwithstanding anything contained in this Act, the following acts do not constitute an infringement of the right to the use of a registered trademark- ...the use of a registered trade mark, being, one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. A reading of Section 28(3) with Section 30(1)(d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... plaintiff is able to establish his case under the common law right of passing off then an injunction can be granted in favor of the plaintiff. 7. Insofar as the passing off action is concerned, the learned Counsel for the plaintiff submitted that the plaintiff had adopted the mark MICO in 1960 in respect of its lubricants and petroleum products. There is no dispute that in this field the plaintiff is the prior user. He submitted that the plaintiff has been using the said mark openly and exclusively as would be apparent from the series of advertisements that have been filed by the plaintiff along with the plaint. The advertisements, prima facie, do indicate that the plaintiff had been openly advertising the same since the 1980s even in Bangalore where the defendant No. 2's registered office is situated. He submitted that because of long user, the mark has become distinctive of the plaintiff's goods. He submitted that these averments have been made in the plaint. On the other hand, the defendant's user in respect of the mark MICO has been admitted by the defendant only from February, 2007. The learned Counsel for the plaintiff submitted that there is no dispute with re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iff. Therefore, the question of any consumer being misled into believing that tea manufactured by the Defendant is actually being passed off as tea manufactured by the plaintiff would not arise, particularly in the absence of any evidence in this regard. 9. He lay emphasis on the fact that, before any passing off action can be established, there must be evidence or material to show that any consumer was being misled into believing that the goods of one are being passed off as the goods of other. In the aforementioned observations in Sona Spices Pvt. Limited (supra), it was noted that the question of any consumer being misled into believing that the tea manufactured by the Defendant was actually being passed off as tea manufactured by the plaintiff would not arise and it is for this reason that the court restrained the plaintiff from using Trademark 'Sona' in respect of tea, although the plaintiff was the registered proprietor of the mark 'Sona' in respect of spices much earlier. It was also submitted that the sales of the defendant in that case in respect of the tea was much more than that of the plaintiff. 10. The learned Counsel for the plaintiff then referr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (4) which is calculated to injure the business of goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trade by whom the action is brought or (in a quia timet action) will probably do so. xxxx xxxx xxxx xxxx xxxx The first two characteristics require the court to identify a misrepresentation made by the defendant in its literature in exhibit ACJ20. The submission that such a misrepresentation exists is supported by the affidavits of brokers and the public filed on behalf the plaintiff, to which I have already referred. The defendant submitted that no such misrepresentation was made as the plaintiff had no reputation. To support that submission, the defendant commissioned a survey which was carried out by Gordon Simmons Research Group Limited. The results of that survey were set out in Mr. Gordon's affidavit. That survey was criticised by Mr. Vicken in his affidavit with, I believe, justification. However, I will disregard those criticisms. The results do not help the defendant's case. The 841 people surveyed were shown a copy of one of the plaintiff's lea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that category. Secondly, the plaintiff is dependent upon the goodwill of its brokers and Therefore has a policy of never dealing direct with the public. The defendant's literature could lead brokers to assume that the plaintiff and the defendant were connected and the plaintiff was not dealing direct. That would affect the plaintiff's relationship with brokers and would be likely to cause damage. Thirdly, there is evidence that the plaintiff might have to change its name. That, at the moment, is speculative, but the plaintiff would seriously have to reconsider its advertising policy. There would seem little point in arranging radio commercials if a substantial section of the public attracted by the advertising would go to the defendant for their insurance. Fourthly, the defendant is so large that I anticipate its reputation will tend to swamp that of the plaintiff. Any goodwill the plaintiff has at the moment will be subsumed into the defendant's goodwill. 11. Apart from this, the learned Counsel for the defendant No. 2 also submitted that the circumstances in which the said decision was rendered ought to be noted. The circumstances being that the material had been ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d the plaintiff to continue to use the mark without any hindrance and, in fact, had not taken any action against the plaintiff. It is the plaintiff who has come to court for an injunction against the defendant No. 2. 14. The learned Counsel for the defendant No. 2, with reference to the decision in Bal Pharma Ltd. (supra) submitted that the said case is entirely different as it involved an action by a registered proprietor of a trademark against a non registered user of the trademark. The case also involved the question of concurrent user and not of passing off as such. Therefore, he contended that the decision would be of no application in the facts of the present case. The learned Counsel for the plaintiff, however, submitted that he was only relying on the principle. 15. Mr. Sethi, the learned senior counsel, who appeared for the defendant No. 2 submitted, with reference to the order dated 09.10.2007, that the same, upon a plain reading, would clearly indicate that it was passed merely on the basis of the fact that the plaintiff had stated that it was the registered proprietor of the trademark MICO. He submitted that had the fact of the defendant's registration in resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ention to deceive. He submitted that the principal party in the present action is the defendant No. 2 i.e., Motor Industries Company Limited (an acronym of which is MICO). The said company has not been arrayed as defendant No. 1 but as defendant No. 2. The defendant No. 1 is one Maggon Auto Centre which is merely a dealer of the defendant No. 2. He submitted that when the counsel go through the cause list of the court, only the name of the defendant No. 1 appears and even the cause list of the day discloses the case as Micolube India Ltd. v. Maggon Auto Centre and the name of the defendant No. 2 does not figure in the daily cause list of the court. This being the case, it would be impossible for the representatives of the defendant No. 2 and/or its retained counsel to scan the list and to become aware of any litigation concerning them. He submitted that had the name of defendant No. 2 been shown as defendant No. 1 then somebody might have been present on the very first day to draw the notice of this Court to the fact that the mark also stands registered in the name of the defendant No. 2 in class 4. He submitted that all these factors cumulatively go to show that the plaintiff did ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that it cannot be possible that the plaintiff was unaware of these registrations and the use of the mark by the defendant No. 2. Referring to the case in Provident financial PLC (supra), the learned Counsel drew the attention of the court once again to the five principles which are necessary for a passing off action as indicated in page 95 thereof. He submitted that these principles have also been reiterated by the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [2001]2SCR743 wherein the Supreme Court observed as under: As per Lord Diplock in Erven Warnink by v. J. Townend and Sons the modern tort of passing off has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. 19. Similar observations have been made by the Supr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hey 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 could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the balance of convenience lies . The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in the course of the trade without the leave and license of the plaintiff. It is also averred that the defendants have no right to use the said mark in any manner in relation to the impugned goods and business and such user would be in violation of the plaintiff's rights therein. The impression one gets by reading the said paragraph as well as the other averments contained in the plaint is that while the plaintiff is the registered proprietor of the trademark 'MICO' under class 4 which includes lubricants, the defendants do no have any such registration. A reading of the order dated 09.10.2007 also suggests that the ex parte ad interim injunction granted in favor of the plaintiff and against the defendants was based entirely on the averments that the plaintiff is the registered proprietor of the trade mark insofar as the lubricants are concerned and that the defendant No. 2 has no right whatsoever to use the said mark in respect of the said goods. As noted earlier in this order, it has now become clear that the defendant No. 2 also has a trade mark registration in respect of the mark 'MICO' in class-4 itself which includes lubricants. The defendant No. 2 had ap ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on Auto Centre, who is alleged to be a dealer of the main defendant and whose exact relationship is unknown to the plaintiff is arrayed as defendant No. 1. It is not only in this case, but in several other cases that this Court has noticed this unhealthy trend on the part of the plaintiffs to array the main defendant as defendant No. 2 or defendant No. 3 while naming some innocuous dealer or retail outlet as defendant No. 1. The object is easily discernible. When the counsel for the main defendants scan the list of cases, they would not be able to know as to whether any case has been filed against them so as to enable them to appear on the very first date on which the case is listed before court. The very fact that the plaintiff has also indulged in this practice is also an indicator that it did not want the counsel for the defendant No. 2 to appear on the first date on which the matter was taken up for consideration of the grant or non-grant of ad interim injunction. This fact also disentitles the plaintiff to any equitable relief. I am of the view that the plaintiff has concealed and suppressed material facts from this Court. Question No. 2: 26. This by itself would be suff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he defendant No. 2 has misrepresented to prospective customers of the plaintiff with an object of injuring the plaintiff's business or goodwill. It is more likely that the defendant No. 2 has entered into the field of lubricants and has employed its registered mark 'MICO' being oblivious of the plaintiff's presence in the market. There is no material which has been placed by the plaintiff to indicate, as was done in the case of Halifax Building Society (supra), to show that the consumers were being misled into believing that the goods of the defendant No. 2 were actually those of the plaintiff. There is also no material to indicate as to whether the entry of the defendant No. 2 in the field of lubricants was calculated to injure the business or goodwill of the plaintiff. Consequently, the ingredients of passing off as per settled principles are not established, prima facie. 28. In view of the aforesaid discussion on the two issues, indicated above, it has to be held that the plaintiff is not entitled to the confirmation of the injunction order passed on 09.10.2007. On the contrary, the defendants and in particular the defendant No. 2 has made out a case for vacat ..... X X X X Extracts X X X X X X X X Extracts X X X X
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