Satya Prakash Pathak, J.
1. This is a defendant's appeal against the Judgment & decree dated 13.09.2005 passed by Addl. District & Sessions Judge (Fast Track), Rajsamand in Civil Original Suit No. 100/2004 (Miraj Products Pvt. Ltd. v. Ashish Tea Company and Ors.) allowing the suit filed by respondent-plaintiff for declaration and permanent injunction.
2. The facts leading to this case are that respondent-plaintiff filed a suit for permanent injunction, infringement of copyright, passing off trademark & goodwill and rendition of accounts in the trial Court with the averments that it is a limited company registered under the previsions of the Companies Act, 1956 having its registered office at Uper Ki Oden, Nathdwara, District Rajsamand (Rajasthan) and is entitled to the exclusive use ox trademark 'Miraj' for the goods manufactured by it and, therefore, the defendants be restrained from using the said trademark.
3. The case set up by the plaintiff in the plaint was to the effect that plaintiff is engaged in the business of manufacturing and marketing tobacco and tea and proposed to enter in consumer eatable goods which are already specifically stated in the Memorandum of Association of the Company in the main objects and enumerated in Clause 2 & 3. It has further been stated that the plaintiff is the largest producer of lime mixed chewing tobacco in India and the plaintiff has its own production facilities. It is stated that the plaintiff started its business in the year 1987 and its trade name 'Miraj' has become quite famous for the reason that it was been given wide publicity at the national level and plaintiff is selling its goods all over the country in each and every state and each and every district. It has also been stated that plaintiff is well known for its innovative techniques and is also committed to quality conscious upgradation of its products and has research development facilities also. The business is stated to be in crores of rupees. It has also been stated that at the initial stage the business was started by Smt. Sushila Paliwal, a lady entrepreneur, who used to trade under the name & style of 'Miraj Zarda Udhyog' with the help of her husband and in view of the long using monogram of Miraj (artwork of Fighter plan), which was applied for registration on 10.08.1999 and was registered on 28.05.2001 under the Copyright Act, its goodwill is attached to the trademark and trade name Miraj. It has also been stated in the plaint that since 1987 crores of rupees have been spent on advertising and for promoting sales activities in India and the Excise Department has also approved the lable of the plaintiff under the trademark/trade name 'Miraj' from time to time. It has been stated in Para 13 of the plaint that in order to obtain statutory protection to the mark/trade name/goodwill under the title 'Miraj, the plaintiff has obtained registration for its artistic work under the title Miraj' and same has been accepted by the Registrar of Trade Marks as well as by the Registrar of Copyrights. The registration Number of the copyrights have been stated to be as A-59494/2001 and A/56654/99. In Para 14 of the plaint it has been stated that as the plaintiffs trademark/ trade name/ goodwill/ copyright under the title 'Miraj' has huge market reputation and goodwill in the competitive market, therefore, the plaintiff preferred to take defensive registration to avoid the duplication/infringement/ passing off its goodwill/ trademark/ trade name etc. It is also stated that the plaintiff applied in respect of the goods in other classes also on 30.10.1998 as contained in Schedule IV of the Trade and Merchandise Marks Act, 1958 (hereinafter to be referred as 'the Act') and in the month of July 2002 when it came to the notice of the plaintiff that defendant No. 1 Ashish Tea Company was doing business of manufacturing and marketing tea under the identical and/or deceptively similar to the registered trademark/trade name of plaintiff i.e., 'Miraj', a notice was sent on 10th July 2002 to the defendant not to use the copyright trademark name of the plaintiff. It is further stated that the defendant while replying to the notice on 25.07.2002 did not deny specifically about the goodwill earned by the plaintiff in the business but stated that the plaintiff deals in chewing tobacco business whereas the defendant deals in tea business, therefore, there is no chance of any confusion in the minds of customers. It is said that when plaintiff made enquiries, it came to its notice that the defendant applied for the copyright on 19.08.2002 obtained copyright certificate on 30.06.2003 in relation to the trademark of plaintiff and its wrapper and on coming to know about this, objections were filed before the Registrar of Copyrights. It is also stated that the mala fides of the defendant is evident from the fact that defendant has adopted the trademark/trade name of the plaintiff 'Miraj' by scanning exactly the plaintiff's lable and similarly by using the trademark/trade name 'Miraj', which is identical to the mark of plaintiff, in a fraudulent manner taking advantage of the goodwill earned by the plaintiff. It is also stated that the defendant had knowledge before starting selling their tea under the title 'Miraj' in wrappers of the same colour combination, which is being used by the plaintiff for its products since long. It was also stated in the plaint that defendant No. 2 is the selling agent of goods manufactured by defendant No. 1, therefore, he was also liable to be restrained by a perpetual injunction not to sell the goods manufactured by defendant No. 1 which are in the trade name of 'Miraj'. It was also stated that on account of defendant's using the trademark of the plaintiff, the reputation of the plaintiff is being tarnished and the business is being put to loss. It was prayed that by issuing permanent injunction the defendants, their servants, agents stockist and all other persons acting on their behalf be restrained from using trademark/trade name/copyright under the title 'Miraj' in respect of tea or any other allied and cognate goods or any other trademark/marks/copyright which are identical with and/or deceptively similar to the plaintiff's trademark/trade name/copyright under the title 'Miraj' and also restrain them from doing anything amounting to passing off their goods as the goods of the plaintiff. A prayer was also made regarding rendition of accounts.
4. Defendant No. 1 contested the suit inter alia denying the entity of the plaintiff-respondent as a limited company. It was stated chat before the start of business every enquiry was made and at the time of Registration of trademark in relation to manufacturing of 'tea' under the trade name Miraj, it was informed by the Trademark Registry that there existed no such registration in the trade name of Miraj for manufacturing tea. An objection was taken that the suit filed by the Marketing Manager of the plaintiff company under the provisions of Section 105 was not maintainable. It was emphatically contended that the plaintiff never did the business of tea but the business of the plaintiff is of tobacco and the defendant is doing business in manufacturing and marketing tea with the brand name 'Miraj'. It was further stated that under the provisions of Section 8 of the Act to decide the question, whether the registration of the trademark for one class is applicable for all the other things, lies with the Registrar concerned and it has been decided by the Registrar finally that under Class 30 neither any application by the plaintiff has been filed earlier, nor pending or registered and the Registrar after an enquiry under Section 45(1) has issued a certificate to the defendant on 08.04.2002 that no application for registration of the trademark 'Miraj' or the sign of 'Miraj' was filed and no such trademark was registered. It was contended in the written statement that there is prohibition in registration of identical goods but in the present matter the goods are different and under Section 12 the plaintiff has got no monopoly on the trademark as such neither the suit is maintainable nor injunction can be issued against the defendant. It was also contended that reply to the notice of plaintiff was given immediately and after passing of six months from that, the suit was not maintainable. The defendant also stated that as there was no application pending of the plaintiff for registration under Class 30, no cause of action arose to the plaintiff and no such averment with regard to the registration under Class 30 was made by the plaintiff and plaintiff has also not taken the plea of first user of the trademark whereas the defendant in a suit filed under the Trademark Act before the Court at Pali has taken such a plea and the decision in that suit would be a basis for deciding the present suit while any decision rendered in the suit at Rajsamand would make the suit filed by defendant at Pali null and void so till disposal of that suit the proceedings in the suit be stayed.
5. The defendant No. 2 in his written statement stated that he deals in consumer goods and is only a trader, who earns by selling various goods. It was the stand of the defendant that as he is not manufacturing tea, he has done nothing to tarnish the goodwill of the plaintiff but he had simply purchased the tea for selling from M/s. Ashok Brand Tea Company, which is having branch at Sadar Bazar, Sumerpur and Head Office at Sheoganj and prayed for dismissal of the suit.
6. Thereafter, the plaintiff also filed rejoinder and the learned trial Court on the basis of the pleadings, framed issues to the following effect:
1. Whether the defendants have no right to sell and distribute their tea with the plaintiff's trade and corporate name 'Miraj' and registered artwork Rocket-plane picture like packing by 'Miraj' name?
2. Whether the defendants want to take undue benefit of the goodwill of the plaintiff?
3. Whether the suit filed by the plaintiff is in contravention of the provisions of Order 29 and Section 105 of Trademark?
4. Whether the Court has no jurisdiction to hear the suit filed against defendants?
5. Whether the suit filed by the plaintiff is not maintainable on account of the trademark of plaintiff being not registered and there being no contravention of Class 30.
6. Whether the manufacturing of the plaintiff is of tobacco and that of the defendant is different one i.e. manufacturing of tea, hence the suit is not maintainable?
7. Whether the defendant has filed a suit in the District Court at Pali and what is its effect of the present suit?
8. Whether the suit before District Court, Pali was filed by the defendant after filing of the present suit and what is the effect on the registration obtained from Registrar, Trademarks on the present suit?
7. In support of its case, the plaintiff-respondent examined PW1 Sushil Paliwal and PW 2 Prakash Purohit. The defendant-appellants on their behalf produced DW1 Suresh Kumar and DW2 Bagaram. Several documents were filed during the course of trial by the parties. A preliminary issue was framed by the trial Court on 13.02.2003 to the effect that whether in view of Paras No. 24, 18 and paras 2 & 3 of the additional pleas of the written statement filed by defendant No. 1 the Court had no jurisdiction to hear the suit and after hearing the parties the learned trial Court vide its order dated 04.04.2003 found that the suit was maintainable and the Court had jurisdiction to try it. The evidence of the parties was recorded on the basis of affidavits filed by them and their cross-examination was done on the affidavits filed in the Court. The learned trial Court decided issue Nos. 1, 2, 5 & 6 together and found that the plaintiff company started its business in the year 1987 and it was got registered in the year 1996. It was also found that the plaintiff was doing business with the trade name 'Miraj' using the picture of a fighter plane whereas the defendant started its business in the year 2001 under the trade name 'Miraj' which was being used by the plaintiff prior to that and earlier the defendant was doing his business of manufacturing and marketing tea in the brand name 'Chetak'. A note of surprise was made by the learned trial Court as to what compelled the defendant to suddenly adopt the trade name 'Miraj' for its products and it found that the evidence of the plaintiff led in the case clearly shows that the entire business run by the plaintiff is in the trade name 'Miraj' and it opined that if this trade name is used by someone other in the market then it is bound to give an impression in the minds of the customers that the product which they are purchasing is that of the plaintiff and, therefore, it is a fraud on the customers. It was also held that the copyright registration of the defendant under the Copyright Act was received only on 08.04.2002, therefore, after the registration at best it could be presumed that defendant was entitled to use the trademark whereas the plaintiff was using the trade name and trademark 'Miraj' since 1987 and had applied for its registration in the year 1998 which was notified also and as that was prior in time so the plaintiff was entitled to be considered the prior user of trade name 'Miraj' with the trademark of fighter-plane device. On the basis of evidence, it was found proved that under the Copyright Act plaintiff received the certificate of the artistic work like plane on 25.08.2001, which was prior in time than the defendant and the plaintiff has the right to use the trade name Miraj and its monogram exclusively and no other person. While deciding issue No. 4 the trial Court also compared the artistic work of the device used in the trademarks i.e., the fighter planes of the plaintiff and defendant and found that the artistic design of the fight plane 'Miraj' being used by the defendant and the plaintiff are similar in nature and deceptive. The other issues infact having not been pressed, the trial Court rejected the prayer regarding rendition of accounts. The trial Court, thus, decreed the suit of the plaintiff by issuing a perpetual injunction in favour of the plaintiff and against the defendant that the defendants shall not use the trademark/ trade name / goodwill/copyright of the plaintiff nor will permit anybody else on their behalf. Hence, this appeal has been filed.
8. Heard learned Counsel for the parties and perused the material on record.
9. The points which require consideration in the present matter are:
(1) Whether the learned trial Court has correctly disposed of Issue Nos. 1, 2, 5&6?
(2) Whether the plaintiff was able to prove his case and was entitled for issuance of perpetual injunction?
(3) Whether the Judgment & decree passed by the trial Court requires any interference by this Court?
Point No. 1:
10. It has been contended by the learned Counsel for the appellant-defendants that basically the present case is not of infringement of trade name but is a case of passing off since the plaintiffs & defendants both were not having registered trademark in respect of tea product, therefore, it would appear that the trial Court proceeded on wrong assumption in the matter and further as the business of the plaintiff was only of chewing tobacco and he cannot claim exclusive right on the trade name 'Miraj' or the artistic work of a fighter plane device. It has also been submitted that the trial Court has wrongly drawn the conclusions without there being any proof that the product coming from the plaintiff had attained so much popularity and it became distinctive. According to the learned Counsel, the main business of the plaintiff is of chewing tobacco whereas the business of the defendant-appellant is that of tea and since the plaintiff was not dealing in tea business from 1987, therefore, it is wrong to presume that the customers will be confused or deceived by using 'Miraj' name or the artistic work of fighter plane on the wrappers of tea. The learned Counsel submits that as the plaintiff was not dealing in the tea prior in time then to issue perpetual injunction in favour of the plaintiff is not in accordance with law. He also submits that plaintiffs registration was in relation to Item No. 34 i.e., Tobacco, Smokers' articles, matches etc. whereas the defendant is engaged in manufacture and marketing of tea which comes under Item No. 30 of Schedule IV.
According to the learned Counsel, these two are different type of businesses and, therefore, to conclude that by using name 'Miraj' or the artistic work of a fighter plane by the defendant will in any way put the plaintiff to harm is not liable to be accepted. The learned Counsel also submitted that the word "Miraj" is not an invented or coined word of the plaintiff but is a name given to the fighter plane of France. The learned Counsel further submits that it is a pure and simple dictionary word which can be used by anybody and the plaintiff cannot claim monopoly on the same unless the plaintiff shows that the trademark has become distinctive in use, which has not been done. Learned Counsel in support of his submissions has placed reliance on Vinayak Tea Co. v. Kothari Products Ltd. 2002 (25) PTC 721 (DB) (All), Kedar Nath Gupta v. J.K. Organization 1998 PTC 189 (Delhi), S.M. Dychem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114, Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited , Thomas
Bear & Sons (India) v. Prayag Narain AIR 1935 Allahabad 7, Sony Kaushiki Kaisa v. Shamrao Maskar : PTC (Suppl)(1)
622(Bom), Vishnu Das Trading v. Vazir Sultan Tobacco , Hoffmann-la Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. and R.G. Anand v. Delux Films .
11. On the other hand, the learned Counsels respondent-plaintiff submitted that it is a case where the trial Court after full trial has granted injunction and decreed the suit in favour of the plaintiff on the basis of appreciation of evidence led by the parties, therefore, no interference is required by this Court in this matter for the reason that findings of the trial Court are to the effect that the plaintiff was prior user of the trade name 'Miraj' with the trademark of fighter plane and further on account of earning goodwill in the market and having spent crores of rupees on advertisement and on other things in promoting sales of which a detailed description has been made in the written statement. The learned Counsel submits that there was no reason for the defendant to have adopted the trade name which was being used by the plaintiff as the brand used by the defendant was 'Chetak' but suddenly in the year 2002 the defendant started selling tea under the 'Miraj' name with the artistic device of fighter plane and started gaining benefit out of that by enormous increase in sales on account of the goodwill earned by the plaintiff. The learned Counsel submits that the plaintiff's witnesses have clearly proved this aspect of the matter by their evidence. Learned Counsel further submits that the Assistant Registrar of Trademark at Ahmedabad has passed an order on 30.08.2005 to the effect that defendants objection in relation to the registration of the trademark 'Miraj' applied by the plaintiff having been withdrawn on 24.08.2005, therefore, the objections put against the registration of trademark 'Miraj' in the name of plaintiff in relation to item No. 30 of Schedule IV stands abated. Learned Counsel submits that no such review etc. was filed against the above order. Learned Counsel submits that the application moved by the plaintiff under clause 30 for production and sale of tea has been accepted for registration. The contention of the learned Counsel is that in view of presently no objection pending of the defendant in relation to registration under Class 30 of Schedule IV i.e., tea, coffee etc. the defendant has no case whatsoever in his favour as the defendant itself has withdrawn the objection. Learned Counsel for respondent in support of his submission has placed reliance on Ruston v. Engineering Co. ,
Banga Watch Co. v. N.V. Phillips , Bata India limited v. Pyare Lal & Co. and Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Limited .
I have considered the submissions made before me.
12. Before proceeding further, it shall be appropriate to go through the principles laid down by the Hon'ble Apex Court and other High Courts in relation to the matters relating to passing off trademark and infringement of use of earned trade name, use of earned goodwill and infringement of copyright etc. AUTHORITIES REFERRED TO BY THE APPELLANTS:
13. In Vinayak Tea Co. v. Kothari Products Ltd. 2002 (25 PTC 721 (DB) (All), the Division Bench of Allahabad High Court, while considering the matter of injunction, observed that the tea sold by the appellant and betel and tobacco preparations sold by the respondent were different commodities and some of the customers who purchased these goods may be common but the sale of tea in comparison to the goods prepared by the respondent was wider as the respondent is advertising in newspapers, TV etc. in respect of its own goods specifically and it has to be proved by it that inspite of such advertisement there is confusion in the mind of the customers that the goods sold by the appellant are that of the respondent. In this case, the defendant preferred appal against the order passed by the Court below restraining the appellant from infringing the plaintiff's registered trademark and also using such trademark. Ex parte injunction was granted in this case, objections were filed and when the matter reached before the High Court, it was found that in relation to disputed aspect of the matter, evidence was required to be producted in the case, therefore, injunction granted by the trail Court was vacated and the matter was remitted back to the trail Court to proceed in the matter according to law. It was also observed that at the initial stage it would be too harsh to restrain the defendant by an injunction order as this would cause great inconvenience to the defendant.
14. In Kedar Nath Gupa v. J.K. Organization 1998 PTC 189 (Delhi), the facts were that the appellant therein applied for registration of trademark 'JAY KAY' in respect of locks, bolts, nuts, screws etc. in class 6 of the IV Schedule of the Trade and Merchandise Marks Rules, 1959. J.K. Organization opposed the application on the ground that letters 'J.K.' were registered in their name. The Registrar of Trademarks refused the registration and on an appeal to the High Court it was held that confusion and deception must relate to the goods and not alone to the trademark.
15. In S.M. Dyechem Ltd. v. Cadbury (India) Ltd. AIR 2000 SC 2114, the Hon'ble Apex Court explained the difference between the words 'to deceive' and 'to cause confusion' while relying on the observations made by Lord Denning in Parkar Knoll v. Knoll International 1962 RPC 265 (HL) which read as under:
Looking to the natural meaning of the words, I would make two observations: First, the offending mark must 'so nearly resemble' the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion, You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people, which you have to consider. No doubt, if you find that he did not intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no such intention and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement.
Secondly, 'to deceive' is one thing. To cause 'confusion' is another. The difference is this: when you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth the whole truth and nothing but the truth but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from other pieces of truth known to him or because he may not even take the trouble to do so.
16. In Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited , the Hon'ble Apex Court stated that broadly in an
action for passing off on the basis of unregistered trademark for deciding the question of deceptive similarity, following factors are to be considered generally:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or compositive marks i.e. both words and labour works;
(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea;
(c) The nature of goods in respect of which they are used as trade marks;
(d) The similarity in the nature, character and performance of the goods of the rival traders;
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods;
(f) The mode of purchasing the goods or placing orders for the goods; and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
17. The Court further said that weightage to be given to the aforesaid factors depending upon the facts of each case and the same weightage cannot be given to each factor in every case.
18. In Thomas Bear & Sons (India) v. Prayag Narain AIR 1935 Allahabad 7, it was held that the marks used by the defendant on the packets and tins of chewing tobacco is not a colourable imitation of the plaintiff's trade mark, the resemblance between the two marks that both bear the symbol of elephant was itself not sufficient as there was no other similarity between the two marks. The Court observed that it was further to be proved by the plaintiff that the defendant is likely to deceive purchasers in respect of goods bearing the plaintiff's mark.
19. In Sony Kabushiki Kaishar v. Shamrao Maskar AIR 1985 Bombay 327 : PTC (Suppl)(1) 622(Bom), the petitioner had applied for registration of 'Sony' mark for its nail polish. The objection of respondent was that they were using the word 'Sony' prior in time and the trademark in relation to electronic goods achieved worldwide publicity. In the facts and circumstances, the Court observed:
It is claimed that two band transistors under the mark "SONY" are easily available in Bombay and even assuming it to be so, it cannot be overlooked that the trade channel for sale of the two items are entirely different. The electronic goods and nail polish are not sold under one roof and there will not be any confusion in the mind of customer that both the items come from the petitioners house in Japan. There is also no common field of activity in course of trade of the two items, and the classes of customers who would purchase the two items are distinct and different.
In Vishnu Das Trading v. Vazir Sultan Tobacco , the respondent manufacturer of 'Charminar' cigarettes, who was manufacturing the cigarettes under the registered trademark, opposed the registration of appellant's application for getting it registered under the same trademark viz., Charminar for Zarda and bottles of Kiwam. The Hon'ble Apex Court observed:
It is also not disputed that the expression "Charminar" is not an inventive word which is the condition precedent for defensive registration under Section 47 of the Trade Marks Act (Sec. 38 of the Trade Marks Act of 1940). No evidence has been led by the respondent company that the respondent-company had really intended or even now intends to manufacture any other product of tobacco other than cigarettes.
20. In Hoffmann-la Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. AIR 1970 SC 2262, the Hon'ble Apex Court in the facts and circumstances of the case that before the High Court the counsel for the respondent made a statement that the respondent was willing for a direction of the Court in exercise of its power under Section 56(2) that the Registrar should limit the respondent's trademark 'Dropovit' to medicinal and pharmaceutical preparations and substances containing principally vitamins and requested that the appeal be decided on that basis, the Court held that the question of deceptive similarity must be decided on the basis of the class of goods to which the two trademarks apply subject to the limitation agreed to by the respondent.
21. In R.G. Anand v. Delux Films , the Hon'ble Apex Court after considering various authorities and case law on the subject, found the following propositions emerging:
1. There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the authority of the copyrighted work.
2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the Courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
3. One of the sure and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.
5. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental, no infringement of the copyright comes into existence.
6. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various test laid down by the case-law discussed above.
7. Where however the question is of the violation of the copyright of the stage play by a film producer or a director, the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader prospective, wider filed and a bigger background where the defendants can by introducing a variety of incidents give a colour and complexion different from the manner in which the copyrighted work has expressed the idea. Even so, if the viewer after seeing the film gets a totality of impression that the film is by and large a copy of the original play, violation of the copyright may be said to be proved.
AUTHORITIES REFERRED TO BY THE RESPONDENTS:
22. In Ruston v. Engineering Co. , the Hon'ble Apex Court in the facts and circumstances of the case that an injunction suit was filed for restraining the defendant from using the trade name "Ruston" in respect of engine and the defendant took the defence that he used the name "Ruston India" and not "Ruston", observed that mere adding of word 'India' will not make any difference and as such the suit was liable to be decreed.
23. In Banga Watch Co. v. N.V. Phillips , the
plaintiff had filed the suit for injunction for restraining the defendant from using trademark 'Philips' and the defence of the defendant was that it was carrying on business in the sale of watches, clocks, timepieces and was not dealing in the electrical and non-electrical goods in which the plaintiff was doing business. In this case, the main contention raised on behalf of the defendant that the plaintiff's trademark was registered in respect of goods mentioned in Clause 14 of Schedule IV which did not include watches and clocks and also because the trademark was registered with a disclaimer clause as envisaged by Section 17(b) of the Act and as it was of a non-distinctive character, it disentitled the plaintiff from claiming its exclusive use, was negatived by the Court on the ground that in an action of passing off these considerations themselves are not relevant if the deception is proved. In Para 12 of the judgment, the Court gave reasoning and stated that firstly, the defendant was not manufacturing the clocks but as they were manufacturing and marketing clocks fitted with radios and transistors, it may cause confusion to the buyers; secondly, the defendants were selling watches and clocks in the same premises; and thirdly, there was no explanation on record as to why the defendants chose the mark 'Philips' for marketing the watches and clocks.
24. In Bata India Limited v. Pyare Lal & Co. , suit for injunction was filed by Bata India Limited for restraining the respondent from using the trademark 'Bata Foam" or otherwise using the name of 'Bata'. The plea of defendant was that they were dealing in rubber and manufacturing goods which were made from natural raw rubber such as mattress, cushions etc. whereas the plaintiff was manufacturing and selling shoes, therefore, there was no question of any deception or confusion in the minds of customers in regard to manufacturing and sale of different goods. The Court rejected the application for grant of temporary injunction. On appeal before the High Court, injunction was granted and the Court observed:
The name 'Bata' is neither fancy name or paternal name nor in any way connected with the defendants. It is not the name of a flower or fauna. It is a fancy name of a foreigner who has established his business in making shoes and the like products in this country. The name is well known in the market and the user of such name is likely to cause not only deception in the mind of an ordinary customer but may also cause injury to the plaintiff company.
25. In Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindera Limited , the plaintiff had filed the suit for
restraining the defendants from using the mark "Mahindra" stating that it was carrying on business with 'Mahindra' trademark and has group of companies in which 15 companies are included. It was alleged that defendant was using the trade name "Mahendra" which is deceptively similar to the plaintiffs trademark. The trial Court granted temporary injunction. The injunction order was affirmed by the Hon'ble Apex Court.
26. At this juncture, it shall be proper to make a mention of Section 27 of the Trade and Merchandise Marks Act. Section 27 of the Act provides that nothing in this Act shall be deemed to affect the rights of action against any person for passing off goods as goods of another person or the remedies in respect thereof.
27. Now I propose to consider the present matter in the light of principles laid down by the Hon'ble Apex Court and the various High Courts.
28. It is to be seen that pleadings of the parties reveal that the present case is one of passing off. The case of the plaintiff is that he is doing business in the trade name 'Miraj' since 1987 and registration of this trade name has also been got done. The further case of the plaintiff is that previously they were doing business in chewing tobacco but subsequently started dealing in other products also. For the present, tea is also manufactured by them under the trade name 'Miraj' and also with different name with artistic device i.e. fighter plane 'Miraj'. In the plaint, details have been given from the year 1987 to the date of filing of the suit in relation to the products of the plaintiff. It has been stated that plaintiff has earned goodwill and in advertisement and various promotional schemes several thousand of rupees have been spent. The defendants were previously doing business under different brand name 'Chetak' for their tea and in the year 2002 started selling tea under the plaintiffs brand name 'Miraj' and its artistic work of fighter plane and this action of the defendants of manufacturing and marketing tea under the brand name 'Miraj' is to tarnish the reputation and goodwill of the plaintiff as their tea is not so good as is sold by the plaintiffs and this has put the plaintiffs to loss. In the affidavit of PW1, who was subsequently cross-examined, each and every detail about the business and the sale of tea in the year 2002, 2003 and 2004 has been given which is to the tun of lakhs and crores of rupees. In the cross examination he has stated that their business is throughout India and they are doing business from 1986. It has been stated that they started the business of manufacturing and marketing tea since last three years of his recording of statement. The statement was recorded in January 2005. He has also stated that the proprietor of Ashish Tea Company is selling tea under 'Miraj' name. The witness has denied the suggestion that they have not filed any application for registration under the Copyright Act in relation to Class 30 i.e. tea, coffee etc. He has also stated that the certificate issued in defendant's favour on 08.04.2002 under Section 45 (1) of the Copyright Act was not correctly issued and in that relation objections have been filed. He has stated in the affidavit every detail in relation to the sale of tea as well as of tobacco etc. He admitted the suggestion in his cross examination that certificate under the Copyright Act was issued in their favour. He has also stated that they are manufacturing other items also i.e. tea, soap, match, etc.
29. PW2 Prakash Purohit has supported the version of PW1 and stated that they are doing business from 1987 and has stated that registration certificate under Class 30 is in the process of issuance. He has also stated that in relation to the certificate issued to the defendant, objections have been filed by them which are pending.
30. As against the above evidence, DW1 Suresh Kumar stated that Praveen Kumar is the sole proprietor of the Ashish Tea Company and he is an employee. He has also stated that marketing in relation to tea under the name 'Miraj' was started in Feb., 2001. It is also stated that application under Copyright Act was moved on 19.08.2002 and the Certificate was received on 30.06.2003. He has not denied that the defendant's artistic work device plane resembles with the plaintiff's artistic work 'Miraj' i.e. Miraj fighting plane. In his cross examination in Para 1 he states as under:
^^eSa fejkt izksMDV dks 7&8 lky ls tkurk gwaA izoh.k dqekj us VsM ekdZ gsrq loZizFke vkosnu 15-2-2001 dks fd;k FkkA ;g lgh gS fd vkfVZdy nl esa n'kkZ;k x;k xksykdkj esa foeku dk dkihjkbV jftLVkj dkihjkbV us 28-5-2001 ls ns j[kk gS tks oknh dEiuh dks ns j[kk gS A dkihjkbV o VsM ekdZ esa eSa QdZ le>rk gwaA dkihjkbV dk vkVZ odZ fdlh Dykl fo'ks"k ds fy;s ugh gksrk tcfd VsMekdZ esa uke Dykl fo'ks"k ds fy;s fn;k tkrk gS A 15-2-2001 dks geus VsM ekdZ ds fy;s vkosnu i= is'k fd;k Fkk 19-8-2001 dks dkihjkbV ,DV esa vkosnu is'k fd;k FkkA oknh dks foeku dks xksykdkj vkVZ izn'kZ 2 ls 10-8-1999 ls fn;k gqvk gSaA**
31. At page 2 of the cross examination the witness has stated that the defendant a started tea business in the year 2001 and sold tea to the tune of Rs. 46 lakhs. At page 3 in Para 4 the witness states:
^^vkfVZdy 1 ds i`"B Hkkx esa fejkt pk; fgUnh o vaxzsth esa vafdr gS o vkfVZdy 4 eSa e`xjkt pk; vafdr gSA ;g lgh gS fd vkfVZdy 1 o 4 esa vafdr foeku ftl xksykdkj Hkkx esa vafdr gS mu nksuksa esa dksbZ varj ugha gSA ;g lgh gS fd vkfVZdy 1 o vkfVZdy 10 esa tks xksyk o foeku gS ;g lgh gS rFkk os leku izd`fr ds gS vkfVZdy 1 pk; dk iSfdax gS o vkfVZ 10 tnssZ dk iSafdx gSA ;g lgh gS fd fd pk; dk mi;ksx vke turk }kjk fd;k tkrk gS vui<+ O;fkh pk; ihrs gSA ;g lgh gS fd tks O;f DokfyVh dk lkeku [kjhnrk gS og czkaM use ls [kjhnrk gSA geus pk; dk dksbZ VSLVj fu;qgha dj j[kk gS D;ksafd ge 35 o"kksZ ls ;gh dkjksckj dj jgs gS A o"kZ 2000 esa geus fejkt foeku dh [kkst dj yh Fkh o"kZ 2001 esa bl gsrq geus vkosnu dj fn;k Fkk ;g esjh tkudkjh esa ughaa gS fd oknh QeZ dh Dykl 34 ds vykok 11] 13] 21 o 27 Dykl esa VsM ekdZ jftLVh }kjk fejkt ds uke ds jftLVs'ku djds izek.k i= tkjh ugha gqvk A eq>s bl ckr dh tkudjh gS fd oknh us izoh.kdqekj dks dkihjkbV ds rgr fn;s x;s izek.k i= ds fo:) dkihjkbV cksMZ esa vksCtsD'ku dj j[kk gSA ;g lgh gS fd tokc nkos ij izoh.k ds nLr[kr gS esjs ugha gS A ;g xyr gS fd oknh dh izfr"Bk o lk[k dks uqdlku igqapkus ds fy;s geus oknh dh QeZ }kjk mi;ksx esa fy;s tkus okyk fejkt foeku tks xksys esa vafdr gS esa ekeqyh Qsjcny dj rFkk fejkt uke dk geus mi;ksx fd;k gS A**
32. DW2 Bagga Ram in Para 3 of the affidavit has stated that he was selling the product of Ashish Tea Company and 'Chetak' is the brand of Ashish Tea Company. In Para 3, he has stated that on account of fame earned in tea business under 'Chetak' brand name they started manufacturing and selling tea under 'Miraj' brand. In Para 4 of the affidavit he has stated that goodwill earned by Ashish Tea Company is more than the plaintiff's company. In the cross-examination, he has stated that he was previously salesman of the Ashish Tea Company. He has also stated that in a month's time he is selling about 200-300 kgs tea and out of that 150 kgs tea is sold under 'Chetak' brand.
33. A perusal of the evidence led by both side indicates that on behalf of the plaintiffs, the Director of the firm has been produced and in the affidavit all details have been mentioned of marketing and manufacturing tea and other products since 1987 and it has been stated that previously they were dealing in tobacco business and subsequently in 2001 they started the tea business. In view of the evidence led by the plaintiffs and defendants, it appears that the plaintiff firm started selling tea under the name 'Miraj' and also under different name with the artistic device i.e. fighter plane 'Miraj' in the year 2001 whereas the defendant started the business in the year 2002 as appears from the cross-examination of DW1. The description of sale as has been stated by PW1 when seen, it becomes clear that the entire sale of the defendant whatever has been stated is less than the amount which is being spent by the plaintiff firm on advertisement and sales promotions. It has not clarified that when the tea manufactured by the defendant under 'Chetak' brand was being sold in the market and was doing a good business then what was the reason for it to shift and use the 'Miraj' trade name which was of the plaintiff. The reason appears to be obvious that the trade name of the plaintiff company is well known in India and particularly in Rajasthan almost in all its districts. Their manufacturing product particularly tobacco as per the statement of PW1 is being sold through out India since 1987 and in the Memorandum of Association names of products in which the company intended to do manufacture and marketing have been stated. In the averments of plaint as well as in the statement of PW1 it has come that the plaintiff has applied for registration under the Copyright Act for various items mentioned in Schedule IV in different classes and could receive copyright in relation to some of them. On the basis of statement of PW1, it becomes clear that as far as selling of tea is concerned, the plaintiff first started this business and it cannot be disputed that the plaintiff company was registered under the 'Miraj' name. The contention of the learned Counsel for the appellants is that 'Miraj' is not a coined word. The word 'Miraj', which the plaintiff firm is using, is not a dictionary word. The contention is not well founded because the dictionary word is mirage and not 'Miraj' as used by the plaintiff. Further, the artistic work of the plaintiff i.e. picture of fighter plane is registered under the Copyright Act and it has not been denied by the appellant-defendants during the course of arguments that whatever objections were taken against plaintiff against the artistic work and word 'Miraj' in relation to Item No. 30 of Schedule IV of the Act have been withdrawn and that is suggestive of the fact that the objections which were raised by the defendant before the Registrar were only for the sake of objections otherwise there was no reason to have withdrawn the same.
34. It is further to be seen here that the contention of the learned Counsel for the appellants was that no evidence is available on record to justify that plaintiffs could prove that their product tea and also the name "Miraj" had acquired distinctiveness in the field of trade so that it could be presumed that the ordinary purchaser would either be confused or deceived by the use of the name 'Miraj' while selling tea by the defendants. It is suffice to say that PW1 in his statement clearly and categorically stated that the plaintiffs' firm started business of tobacco in 1987 under the trade name 'Miraj' with the design of fighter plane and in the year 2001 they started business in tea also. Memorandum of Association also states about other products intended by the plaintiff for the purposes of production and marketing. It is further to be seen that the plaintiff's wrapper Article 1 and Ex.5 when compared with the defendant's wrapper Ex.A/1, it creates confusion and immediately gives a reflection that the wrappers i.e. used by the plaintiff as well as the defendant are the same and unless a person is vigilant enough, he cannot make a distinction between them, Otherwise, for an ordinary buyer, it is not possible to detect difference between the two. It is correct that the plaintiff company is selling tea product with other different names also but at the same time they are also selling tea under the trade name 'Miraj'. The learned trial Court has considered the matter in detail. Even in the cross-examination of DW1 it has come that he knew that fighter plane 'Miraj' was of plaintiff's artistic work as he knew that their product Miraj tobacco was already in market. If that is so, then to presume that the artistic work Miraj fighter plane was opted by the defendant without any knowledge of the fact that the device of fighter plane was being used by the plaintiffs since long is not correct. The matter may further be examined from this angle also that when the product under brand name 'Chetak' was doing so well then there was no need for the defendant to have changed the brand name as Miraj. No clarification has been put forward in this regard and that creates a situation of suspicion. The argument of the learned Counsel that the plaintiff company's trade name Miraj and the device used i.e. fighter plane, goodwill or the products have not established its reputation to that extent that it has become such distinctive if it is used even for any other product than chewing tobacco it will be understood by the public that it is a product coming from plaintiff till then it cannot be said that selling tea by others including the defendant with the use of trade name Miraj and the artistic work of fighter plane would be sufficient to draw a conclusion that consumers are being deceived. I do not find any substance in the contention of the learned Counsel in view of the evidence led by both sides and particularly in view of admission made in the cross-examination in relation to the trade name 'Miraj' and the artistic device thereof i.e. the fighter plane that it was of the plaintiff and it was also in the knowledge of the defendants. If the artistic device used by the plaintiff is compared with the device used by the defendants i.e. Ex. A/1, then there appears no difference between the two. There is also similarity in the wrappers used by the defendant with that of the plaintiff. As regards distinctiveness, it has come in the statement of PW1 that they sell their products throughout India including tea, the production of which was started in the year 2001. Thus, the brand name 'Miraj' of plaintiff is well known to the consumers and if anybody other than plaintiff uses the name Miraj as brand name on products like tea then this may create confusion in the mind of general consumers and particularly in the present facts and circumstances when the wrapper etc. being used by defendant under name 'Miraj' are similar to that of the plaintiff. The plaintiff, even if, uses other wrappers with other colour combination then too that will not make any change in the situation more so for the reason that defendant's wrapper Ex. A/1 is similar to the plaintiff's wrappers Article 1 and Ex. 5.
35. On a perusal of Ex.A/1 and Article 1 & Ex.5, it appears that the defendant has tried to literally copy out the artistic work i.e. a fighter plane used by the plaintiff on its products. The wrapper Ex. A/1 of the defendant and wrapper Article 1 & Ex. 5 are very similar and in such circumstances, to say that the defendant never intended to take advantage of plaintiff's goodwill cannot be countenanced for the simple reason that plaintiff is in the market since long with its trade name 'Miraj' and has become a distinct entity.
36. The authorities cited before me can be divided in three sets; (i) authorities which are in relation to granting of injunctions, (ii) authorities in which there were certain similarities in relation to trade name, and (iii) authorities in relation to infringement of copyright etc.
37. The pith and substance of the principles laid down in the authorities cited before me is that in cases of infringement of trademark and also in the cases of passing off, what is essential is to see is as to whether the consumers are being misled in relation to a copyright or a trademark? Certain guidelines provided for taking into consideration are in relation to long user of the mark, registration of the copyright, goodwill etc. Thus, it appears that every case is required to be examined on the facts and circumstances of that case. In the case in hand, as both the sides have produced their evidence, the case has been considered in view of the evidence led and keeping in mind the principles laid down in the authorities, on careful examination of the matter, I am of the opinion that the trial Court has considered the matter rightly while disposing of issue Nos. 1, 2, 5 & 6 and, therefore, the answer to Point No. 1 is accordingly.
Point No. 2:
38. In view of discussions made in relation to Point No. 1, the answer to Point No. 2 is that plaintiff was able to prove its case and was entitled for perpetual injunction in its favour.
Point No. 3:
39. In view of the findings recorded in relation to Point No. 1 & 2, the answer to Point No. 3 is that the learned trial Court has correctly passed the judgment and decree dated 13.09.2005 and same requires no interference by this Court.
40. In the result, the appeal being devoid of merit is dismissed. Cost is made easy.