9911796707
TMI Blog1997 (10) TMI 411X X X X Extracts X X X X X X X X Extracts X X X X ..... d style of any part thereof so as to pass off or enable others to pass off the defendants goods and/or business as and for the goods and/or business of the plaintiffs. The name of the defendant Company is ARROW APPARLES. 2. Plaintiff No. 1 is a Corporation organised under the laws of the State of Delaware, USA carrying on a international well known business of goods and marketing ready-made garments, wearing apparels. Plaintiff No. 2 is a company incorporated under the Company Act and having its registered office at Ahmedabad, Gujarat. Plaintiff No. 2 manufactures and markets readymade garments and other articles of clothing. Plaintiff No. 2 is the Licensed user of the trade mark of the plaintiff No. 1 which are used by the second plaintiff in connection with goods manufactured by the plaintiff No. 2 under supervision and control and specifications prescribed by plaintiff No. 1. 3. Defendant No. 1 is a Firm, carrying on business of manufacturing and dealing in readymade garments, more particularly shirts of which Firm, defendant Nos. 2 and 3 are the Partners. 4. It is a case of the plaintiff No. 1 Corporation that the Corporation has been manufacturing and marketing readym ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for the products under the Trade Mark ARROW of plaintiff No. 1). The amount expended towards advertisements in various media in print, radio and TV exceeded US $ 50,00,000 p.a. According to the plaintiffs, the first plaintiff has appeared in various Magazines such as TIME SPORTS, ILLUSTRATED, ESQUIRE, GQ, VANITY FAIR L.A. STYLE. The plaintiff claims that most of these Magazines have a circulation in India. It is the case of the plaintiff No. 1 that the advertisement was published on 21st November, 1931 in a Magazine in Colliers. On April, 30, 1947 the advertisement appeared in a magazine called SATURDAY EVENING POST, on 20th April 1980 it appeared in TIME Magazine, on 18th April, 1991 it appeared in ESQUIRE in April 1991 it appeared in GENTLEMAN quarterly, in April 1991 it appeared in a Magazines called VANITY FAIR. It is not in dispute that all these are foreign Magazines. What is in dispute in the present case is whether the above Magazines had circulation in India during the period of post registration of the trade mark ARROW during the period 1955-1960 upto 1985. The disputed question is whether TIME Magazine in which the advertisement purportedly appeared had a circulation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ROW and the devise of arrow have been reason of excellent quality of the goods and by reason of extensive use and promotion, became a well known trade mark and the same is identified with the first plaintiffs exclusively by members of the trade and by the members of the public in India. 7. On 8th November 1993, the defendants, through their Attorneys addressed a letter to the second plaintiff calling upon the second plaintiff to cease and desist using the trade mark ARROW on the ground that the defendants are one of the leading manufacturers of readymade garments, particularly shirts and the defendants have been using the trade mark ARROW since 1985 and the said trade mark is awaiting registration vide Application No. 543375 under the Trade Marks Act, 1958, (hereinafter, for the sake of brevity, referred to as the said Act, 1958 ). By the said letter/notice dated 8th November, 1993, the defendants herein claimed that by way of long extensive use, efforts and amounts spent in promoting the sales of goods bearing the trade mark ARROW, the said trade mark has come to be known to the purchasers that the goods sold thereunder are the defendants goods and the goods bearing the mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... November, 1993. It is a case of the plaintiffs that they conducted an investigation and they ascertained that defendants were using the trade mark ARROW and/or the devise of Arrow and in the above circumstances, they instituted the present Suit on 25th April, 1994. 8. Therefore, plaintiffs took out the present Notice of Motion for interim reliefs referred to hereinabove. 9. In support of the said Notice of Motion, plaintiffs have filed Affidavit of one Moin Kadri dated 22nd August, 1994 stating that he was employed by a Company known as Ques Apparel Manufacturing Company as a Product Manager and as an employee, he was required to travel to various countries around the globe including USA and during the course of his tripe abroad, he came across shirts sold under the trade mark ARROW and the devise of Arrow. He has further stated that he used to purchase garments under the trade mark ARROW and the said garments had excellent quality. The plaintiffs have also relied upon Affidavit dated 6th May, 1994 of one Subramaniam residing in USA and who had come to Bombay in May 1994. According to the said Affidavit Shri Subramaniam was aware of ARROW shirts manufactured by plaintiff No. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ade garments and in particular, shirts sold by defendant No. 1. According to the said defendants, they have sold goods under the said trade mark on extensive basis during the period 1st April, 1984 upto 31st March, 1993 in the aggregate value of ₹ 3.22 crores (See Exhibit 1 being the Statement of Sales affected by defendant No. 1 during the period 1st April, 1985 upto 31st March, 1993). By the said Affidavit dated 7th June, 1994, defendant No. 1 alleged that by reason of exclusive sale of their goods from 1985, their mark has come to be associated by the traders and members of the public exclusively with defendant No. 1 and their sales were increasing every year and defendant No. 1 have also spent huge amounts by way of publicity expense. 12. According to defendant No. 1, their trade mark has come to be associated by the traders and members of the public exclusively with defendant No. 1 who claim to be the first adopters and users of the said mark of which the word ARROW is an essential feature in India. At this stage, it may be mentioned that even according to defendant No. 1 who claim to be the first adopters and users of the mark, the word ARROW is an essential feature ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and to the knowledge of the world at large and they are the proprietors of the mark at Exhibit 1 to the said Affidavit where as plaintiffs started using the said mark only in 1993. Defendants has further stated that since June 1988, they are the Members of Cloth Manufacturers Association of India. They have contended that it is defendants who invited the attention of the plaintiff No. 2 vide notice dated 8th November, 1993 to cease and desist from using the said impugned mark of the plaintiffs and in the circumstances, defendants have denied that the word ARROW amounted to infringement of the plaintiffs alleged trade mark. They have denied that their own mark is similar, whether deceptively or otherwise of the plaintiffs alleged trade mark and they have denied that they were passing off their own goods and/or business as those of the plaintiffs. They have further contended that even according to the plaintiffs own showing, though the plaintiffs trade marks were registered during 1955-1960, they started using the goods in India in October 1993 i.e., after 33 years and, therefore, by reason of non user, plaintiffs, have abandoned their right in respect of their own registered mark a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... id trade mark through plaintiffs No. 2. The said Affidavit encloses advertisements of shirts manufactured and sold by the defendants under their trade mark ARROW in the Indian newspaper viz., MIDDAY of January 1992, in STAR OF MYSORE dated 15th February, 1992, in MIDDAY dated 22nd July, 1991 whereas the advertisement of the plaintiffs referred to above were published in foreign Magazines particularly during the period 1980-81. At this stage, it may be mentioned that before me a controversy arose as to whether plaintiffs gave full inspection of all the advertisements on which reliance was placed by the plaintiffs. Without going into that controversy, I gave an opportunity to both sides to file their respective Affidavits and accordingly plaintiffs have filed an Affidavit of Shyamsunder Iyer dated 19th August, 1997 in which they have stated that references to Magazines in which plaintiff No. 1's mark ARROW was advertised was all in foreign Magazines, six in number, on 21st November, 1931, 30th April, 1947, 20th April, 1980, 18th April, 1981, April 1991 and again April 1991. It has been clarified by the plaintiffs that the advertisements of 1931 and 1947 are prior to the date of r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hts to the plaintiffs. Mr. Tulzapurkar contended that even stylized manner of writing the mark is no defence and the mark remains similar and not deceptively similar. Mr. Tulzapurkar contended that the people going to a Retail Shop to buy shirts will ask for ARROW shirts and they would be put into wonderment as to whether the shirts sold to them across the counter are that of the plaintiffs or the defendants. Mr. Tulzapurkar contended that even the defendants have admitted in their Affidavit that the essential feature of the trade mark for the word ARROW and in such cases, one has to see the essential features of the two marks and if there is phonetic, visual and structural similarity which, according to the learned counsel exists in the present case, then the test of imperfect recollection of a common person is required to be applied and, therefore, in the present case, the plaintiffs have, prima facie, made out a case of infringement and passing off. He further contended that if the injunction is refused, then the reputation of the plaintiffs is likely to suffer by reason of the customer being supplied with substandard quality of shirts. 19. Mr. Tulzapurkar next contends that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rk being registered mark being imputed on to the defendants. 21. Mr. Tulzapurkar next contended that a trade mark with transborder reputation and goodwill needs protection from passing off even without evidence of actual user. He contended that reputation in respect of trade mark may be international and yet it will give right to the plaintiffs in India even if there is non user of the mark on the goods in India. He contended that plaintiffs' reputation in the World has crossed over to India and when an Indian buyer visits the Retail Shop, he is likely to associate the mark ARROW with the trading style and name of the plaintiffs. Mr. Tulzapurkar accordingly submitted that dishonest intention is not material, but as a consequence, if injury is caused to plaintiffs proprietary rights because it is on plaintiffs reputation that the defendants are trading, then the Court would grant injunction and protect the reputation and goodwill of the said mark in the passing off action. Mr. Tulzapurkar invited my attention to various advertisements referred to hereinabove in various Magazines viz., TIME ESQUIRE etc. and contended that when Indian tourists went abroad and found that the mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat advertisements were issued in various Magazines available in India. He contended that it is only no account of import restrictions that there was on actual user in India. He further contended that during the period 1989-1990, the plaintiff had entered into agreements for manufacture of the said shirts in India with Corromandel Garments Limited and Haria Exports Limited and in the circumstances, he contended that it is only when a notice was given in 1993 by the defendants to the plaintiffs that they came to know for the first time that the defendants were using the mark APROW and accordingly, it is contended that there was no delay on the part of the plaintiffs in moving the Court in 1993. Alternatively, he submitted that in any event, delay is no defence to cases of infringement. He contended that in any event, the plaintiffs are likely to succeed in the passing off action which is required to be balanced with the chance of the plaintiffs likely to succeed finally in the suit and if a strong case is made out by the plaintiffs then delay cannot defeat the plaintiffs rights. Mr. Tulzapurkar submitted in the alternative, that even if there is delay on the part of the plaintiff in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... actual user is negated by Section 18 of the said Act which gives a person a right to claim proprietorship even without his actually using the mark and only on the ground that he proposes to use the mark as a trade mark in future that he acquires the right of proprietorship by getting the mark registered (See AIR1986SC137 ). Mr. Tulzapurkar submitted that as the plaintiffs are registered proprietors, of the mark. He contended that proprietorship is not reputation and user of the mark can confer upon the defendants only reputation which cannot be equated to proprietorship and it is for this reason that under Section 18 of the said Act even a proposed user confers proprietorship by registration and user is not the test for proprietorship though it is sin qua non for reputation. 28. He contended that in case of registration of a trade mark, the effect of registration is that the principle of prior or senior user will not be a defence because the right of property is acquired in the trade mark by registration and not by user. Mr. Tulzapurkar contended that while granting registration, the Registrar is required to consider adoption of the mark, was there any other proprietor etc. He ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Arguments of Mr. Dwarkadas, learned counsel for the defendants 29. Mr. Dwarkadas, learned counsel appearing on behalf of the defendants firmly contended that prior to the Trade Marks Act, 1958, there was a Trade Mark Act, of 1940. Both the Acts did not change the common Law. On the contrary, both the Acts recognized the common law and both the Acts were enacted in order to facilitate implementation of the common law. For example, prior to the enactment of the two Acts, the applicant for registration was required to prove the essentials which included priority in use whereas by the enactment of the two Acts herein referred to above, the Registrar is required to consider all the requisite essential of registration before granting registration of the mark as a trade mark. Mr. Dwarkadas contended that under the above circumstances both, under the common law and under the statute, priority in use and not priority in registration of the mark is the test which is required to be applied to the facts of the present case. Mr. Dwarkadas relied upon the judgment of this Court reported in AIR1965Bom35 . It deals with registration of the mark MONARCH on bottled and food products. It is co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent case, even if the plaintiffs' mark was registered during the period 1955-1960 and even if the said registration stood renewed every seven years, still if the defendants user is first in point of time, then whether the plaintiffs obtain registration or fails to obtain registration becomes irrelevant. Mr. Dwarkadas accordingly contended on facts that even in the present case, defendants have move the Registrar for cancellation of the mark of the plaintiffs before the plaintiffs came to this Court claiming injunction in the above infringement action and in the circumstances, it is for the defendants who has to make out a prima facie defence and if on the basis of prior user the defendants are the first proprietor, then in that even prima facie case is made out by the defendants and injunction should not be granted even if it has an effect in the pending matter on rectification/removal of the mark from the Registrar maintained by the Registrar of Trade Marks. 32. Dwarkadas next contended that the said Act, 1958 awards registration, of a trade mark without bona fide intention to use the trade mark (See AIR1986SC137 ). He further contended that even under Section 46, if the de ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dia and accordingly, the mark was adopted in 1985 by the defendants. If the user of the mark is after 1985 by the plaintiffs then it is irrelevant because it cannot displace the rights of the defendants as proprietors of the trade mark. Mr. Dwarkadas relied upon the judgment of the U.S. Court (reported in 900 Central Reports, Vol. 2, Page 1565) in the case of Parson Company Limited v. Chrismond. He contended that in the said judgment it has been laid down that the defendants, who have priority in user cannot be dishonest and the onus is on the plaintiffs to show that the mark had earned the reputation in India prior to 1985. Mr. Dwarkadas accordingly submitted that the factum of communication of information from U.S. to India is a sin qua non. 34. Mr. Dwarkadas next contended that in the present matter, it is a case of the plaintiffs that on account of import restrictions, they were not able to use the mark ARROW in India upto 1993. Mr. Dwarkadas contended that no particulars of the import restrictions have been furnished by the plaintiffs either in the pleadings or to the defendants. Mr. Dwarkadas accordingly contended that user abroad or advertisement abroad is not relevant. T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he trade mark to remain on the Register. 36. In the present Notice of Motion, both the Advocates have argued the matter competently, but to my mind, they have argued more conceptually rather than on application of law to the facts of the present case. In this Notice of Motion, this Court does not wish to go into all the authorities cited because I find that legal preposition governing common law followed by Trade Marks Act, 1940 and the Trade Marks Act, 1958 stand crystallized. There is one more reason why at this stage, this Court should not go into the question of acquisition of the marks by the plaintiff or validity of registration in favour of the plaintiffs because the matter of rectification and removal of the trade mark from the Register is pending by way of application by the defendants. In the circumstances, this Court would mainly decide this Motion by going into principles governing injunction and the observations made herein below will only be in the context of application of those principles of injunction to the facts of this case. These observations will not bind the Registrar in any way while dealing with rectification matters. 37. Now before going into facts, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (g) Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used. Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act. This is the main defence put up on behalf of the defendants in this Notice of Motion. Therefore, prior user of the marks should be protected against monopoly rights conferred by the Act. (Pages 5 6 of Narayanan). A trade mark has no meaning even if it is registered unless it is used in relation to goods. Otherwise, its non-use may lead to its death. A trade mark which drops out of the use dies. Where there are no goods offered for sale, there is no use of trade mark. (h) Use of the trade mark does not mean user by affixing the word on the goods. It could be in the form of advertisements in Magazines, T.V. etc. It would be with regard to goods exported out of India. With advancement of technology and globalization after 1991, use of trade mark can take place in different ways. But, this case essentially concerns the period 19 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f South-West Pacific, priced in terms of US $. (iii) December 1985 : Defendants launched their trade mark ARROW . (iv) 11th January, 1991 : Defendant apply for registration of the trade mark ARROW . (v) 6th December, 1993 : Defendants apply for removal/rectification of the mark on the Register of the plaintiffs. Defendants claims to have used their mark openly, uninterruptedly and to knowledge of the entire World; right from December 1985. (vi) 16th March, 1994 : Plaintiff No. 2 in whose favour assignment was effected by plaintiff No. 2 on November 20, 1990, is brought on record of the Registrar of Trade Marks under the Trade Mark Act, 1958. (vii) 1st November, 1991 : Plaintiff No. 1 entered into User Agreements with plaintiff No. 2. (viii) 1st September, 1990 : Plaintiff No. 1 enter into user agreements with M/s. Corromandel Garments and M/s. Haria Exports. Under the said agreement, subsidiary of Plaintiff No. 1 - Company in Canada agreed to purchase garments manufactured by Corromandel Garments and Haria Exports in India and exported to Canada. (ix) 8th November, 1993 : Defendants, through their Attorneys, give cease and desist notice alleging that defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... facie show that the goods were manufactured in India and exported to Canada, but there is no strong reason given why this user of the goods could not have taken place prior to 1st September, 1990. This is important because according to the plaintiffs there were import restrictions, but there were no export restrictions throughout the period commencing from 1955 upto 1st September, 1990. Even with regard to import restrictions there is no clear cut prima facie evidence to show that there were import restrictions all throughout the period in India. There is nothing to show that the goods were banned. 41. There is nothing to show that there was a ban on manufacture of goods in India. Even after filing of the suit, the plaintiffs did not succeed in getting an ad interim injunction and the result is that right from 1985 till today, the defendants have been using the trade mark ARROW in India without any interruption. Even there is no prima facie case to show that the worldwide reputation enjoyed by the plaintiffs in several foreign countries came into India before 1985. This case is required to be seen in the context of pre-globalization, which took place in India only in 1991. We ar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... present case, the plaintiffs were required to prove a prima facie case including balance of convenience and the question of irreparable harm or damage which the plaintiffs are likely to suffer if injunction is refused. 43. As stated hereinabove, this Court is, prima facie, of the view that in the facts and circumstances of this case, the defendants have proved a strong prima facie case in their favour and they are also in a position to pay damages in the event of their loosing the above matter. This is particularly important in the context of the sales turnover which the defendants have submitted to this Court. As stated hereinabove, I do not wish to express my views on the merits of the Rectification Application made by the defendants. All the above observations are in the context of the question as to whether this court should grant injunction or refuse injunction as sought by the plaintiffs, particularly in facts and circumstances of this case and, therefore, none of the above observations are binding on the Competent Authority under the Act before whom the defendants have applied for rectification. Even the statutory illustration given under Section 38 of the Specific Relie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... isements of 1980 in TIME Magazine. There is nothing to indicate that TIME Magazine, in 1980, was available on the counter in India. In fact, it is contended by the defendants that TIME Magazine was not available to the public in India during the relevant period. There is no evidence of the reputation of the plaintiff coming to India before 1985. Therefore, taking into account the above facts there is a strong effect of delay on the nature of the relief and I am not inclined to grant injunction in favour of the plaintiffs. At page 462 of Narayanan, it has been stated that delay, apart from acquiescence, may cause change in the subject matter of action or it may bring about state of things where justice cannot give the remedy. Interim injunction is useful provided it is kept flexible and discretionary. It cannot be a subject matter of strict rules. In the present case, we are required to see the facts in the context of the year 1985 and in the context of post globalization which has come to India in 1991. Therefore, the Court is required to give relative weightage to all the facts in a give case. The balance of convenience is also in favour of the defendants. The defendants are also ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
