Omega S.A. Vs Avanti Kopp Electricals Ltd. and Another

A.C. Arumugaperumal Adityan, J.@mdashThe suit has been filed under the Trade and Merchandise Marks Act, 1958.

2. The short facts of the plaint sans irrelevant particulars are as follows:

2(a). The Plaintiff is a manufacturer and dealer in timepieces, time recording and registering apparatus and instruments, photo-eletric apparatus and instruments and devices for transmitting electrical oscillations and electric control apparatus and. instruments for several decades. The Plaintiffs goods have become synonymous with quality and they are world famous. They have won the acclaim in scores of countries.

2(b). The Plaintiff has been and is using the trade mark ''OMEGA'' with the Greek letter ''W'' as a trade-mark for its goods for well over half a century. The said word trade-mark and Greek letter ''W'' have been registered by the Plaintiff in several countries. In India, the trade-mark ''OMEGA'' and the device ''W'' were registered as Trade Mark No. 149294 in Part A in Class 9 with effect from 6th June 1951. The said trade mark has been continuously renewed, and it subsists and is valid up to 6th June 2000 A.D. The said Registered trade-mark is registered for various goods, namely photo-electric cells, electric contact starting at broke thread devices; time recording, registering and signalling apparatus and instruments and devices for transmitting electrical oscillations and impulses, photo-finish and time recording photo-electric apparatus, all the above goods falling in Class-9.

2(c). The Plaintiff has been engaged in the manufacture and sale of timepieces, photo-electric apparatus and other goods. All the said goods manufactured by this Plaintiff carry the said trade-mark of the Plaintiff. Hence, the Plaintiff is the registered proprietor of the above mentioned trade-mark for all goods specified in class-9 and no other person has any right or proprietorship over the said trade-mark ''OMEGA'' with the device.

2(d). The Plaintiff has acquired immense goodwill and reputation in the said trade-mark and in the business connected therewith and the goods in respect of which the mark is used by virtue of such long and extensive use of the trade-mark ''OMEGA'' by the Plaintiff. If the mark is used by another, even on unrelated goods, the public is bound to conclude that the goods are manufactured by the Plaintiff or that there is some direct connection between such goods and the Plaintiff or it emanates from the same source.

2(e). The Plaintiff has scales throughout the world and in India. Plaintiff s goods with its trade-mark are extensively advertised throughout the world in print, namely, journals and electronic media including India. There cannot be any one in India who has not heard of Plaintiffs goods and its trade-mark. Figures of annual turnover in India and the world for the last five years are as given below:

In the figures for advertisement expenses incurred by the Plaintiffs in India are as given below:

Apart from the above registration, in view of the liberalization of trade and commerce in India, Plaintiff in Switzerland intending to diversify their business in India, has applied in India before the Registrar of Trade marks for the registration of trade-mark ''OMEGA'' in other classes as well. The particulars are furnished hereunder:

The Plaintiff came across an advertisement in the Madras edition of ''The Hindu'' dated 23rd November 1994 inserted by the 1st Defendant, offering for sale electrical switches bearing trade-mark ''OMEGA'' thus infringing the Plaintiffs registered Trade-Mark No. 149294. The Defendants herein have even adopted the singular and unique stylised form of trade mark ''OMEGA'' of the Plaintiffs. A copy of the advertisement appearing in ''The Hindu'' on 23rd November 1994 is submitted in the list of Plaintiffs documents. The aforesaid Defendant No. 2 is mentioned in the said advertisement as distributor of the infringing goods in Madras.

2(f). The Defendants have evidently come to know of the intention of Plaintiffs to diversify their trade and commerce in India. This must have prompted the Defendants to adopt ''OMEGA'' as a part of trade-mark in addition to their earlier trade-mark Avanti Kopp. This is evident from the following passage in the reply notice issued on behalf of the Defendants on 3.7.1995:

Our clients state that they manufacture switches for use in domestic ''Avanti Kopp''. One among the several ranges of switches manufactured by our clients under the brand ''Avanti Kopp'' is named ''OMEGA''. Other ranges manufactured by our clients under the brand ''Avanti Kopp'' are Vision, Europa, Denver....

In the actual advertisement of the Defendants, Omega is given a greater prominence than ''Avanti Kopp''. This shows the Defendants'' calculated attempt to exploit and appropriate the goods of the Plaintiffs trade-mark. This amounts to fraud.

2(g). The Plaintiff submits that these Defendants have no reputation worthwhile of their own with respect to ''Omega''. They have fraudulently endeavored to capitalize on the longstanding reputation and goodwill which the Plaintiff has established. The conduct of the Defendants amounts to infringement of registered trade mark of the Plaintiff bearing No. 149294 as Defendants advertised goods electricals switches coming under ''electric control apparatus and instruments'' in class-9 for which Plaintiff has got registration, and passing off by the Defendants their goods as the goods of those of the Plaintiff. The Defendants'' adoption of the said trade-mark will confuse and deceive the trade and purchasing public who will buy the goods of the Defendants in the mistaken belief that they are the goods of the Plaintiff.

2(h). The Plaintiff submits that it caused its trade-mark attorneys to issue to the Defendant-1 a ''Cease and Desist'' Notice by registered post acknowledgement due on 10th April 1995, calling upon the Defendant-1 to desist from using the trade-mark ''OMEGA'' of the Plaintiff and to render to the Plaintiff for destruction, all the switches and like goods, dies and tools bearing the said trade-mark, and to give a written undertaking to the Plaintiff not to use the said trade-mark in future. After having received the notice, the Defendant-1 sent a reply dated 3rd July 1995 through its attorney claiming inter alia proprietary rights to the Plaintiffs registered trade-mark ''OMEGA''. All averments and every singular averment in the said reply dated 3rd July 1995 are emphatically denied by the Plaintiff and the 1st Defendant is put to strict proof thereof. The 1st Defendant also filed a caveat application in this Court on 26th June 1995. Another caveat was filed 29th December 1995.

2(i). The Plaintiff sent a letter through its attorney dated 7th September, 1995 to the 1st Defendant''s attorney, suggesting some terms for settlement of the dispute without prejudice to the Plaintiffs contentions. Defendant-1 was obstinate and adamant in the reply dated 24th February 1996 through its attorney and refused the terms of settlement. The Defendants cannot claim any proprietary right to the b trade-mark ''OMEGA'', of which the Plaintiff alone is the exclusive registered proprietary for nearly half-a-century. On account of this high handedness and intransigent attitude of the Defendants, the Plaintiff is left with no other alternative except to approach this Court by way of this suit, for permanent injunction and rendition of account. Hence the suit.

3. The Defendant has filed a written statement contending as follows:

3(a). From the year 1994 up to now the Defendant has sol about Rs. 10 crores worth of ''AVANTI KOPP'' switches and wiring accessories in the OMEGA range. On 10th April 1995 the Plaintiff herein caused a notice to be issued to the Defendant stating that the Plaintiff had a registration for the mark OMEGA and calling upon the Defendant to desist from using the mark OMEGA on its switches. To the said notice the Defendant sent a considered reply dated the 3rd July 1995 declining to comply with the untenable requirements of the Plaintiff. The Defendant, in particular, emphasized that the Plaintiffs registration did not cover switches. The Defendant also pointed out that the word OMEGA is always used in conjunction with the mark AVANTI KOPP of the Defendant. The Defendant further pointed out that the word OMEGA is not something exclusively used by, or associated with, the Plaintiff, that the word OMEGA which is the name given to the last letter of the Greek alphabet, is not anyone''s invention.

3(b). In response to the above mentioned reply from the Defendant, the Plaintiff made an offer for a ''mutually acceptable amicable settlement'' by letter dated the 7th September 1995. The Plaintiff said that it was prepared to reach a compromise if the Defendant would agree as follows:

(i) to acknowledge the prior right of the Plaintiff to the mark OMEGA in respect of goods in Class-9

(ii) to give a written undertaking not to use the word OMEGA other than on the goods ''switches''

(iii) to give a written undertaking not to use the word OMEGA together with the Greek letter

(iv) to give a written undertaking always to use the word OMEGA in juxtaposition with the word AVANTI KOPP.

In the rejoinder dated 24th February 1996, the Defendant was not agreeable to proposal No. (i) above. The Defendant, however, was agreeable to proposal No. (ii) above with a modification that the goods include wiring accessories and allied electrical items such as insulation tapes etc.

3(c). The Defendant was agreeable or proposal No. (iii) above because it is not, in any cases, using the Greek letter in the form of a inverted U, as earlier indicated by the Defendant itself, in letter dated the 3rd July 1995. The Defendant in effect, was also agreeable to proposal No. (iv), namely, that its brand AVANTI KOPP will appear wherever OMEGA is mentioned either in its advertisements or on its products. The Defendant concluded its rejoinder dated the 24th February 1996 aforesaid by stating that is trusts that the dispute would now be amicably closed on the above basis. The Defendant states that as nothing further was heard from the Plaintiff after the aforementioned rejoinder dated 24th February 1996, the Defendant had thus reasonable cause to believe that the matter was finally closed. It was therefore with considerable surprise that the Defendant came to know that the Plaintiff had filed this suit in this Court nearly one year after the aforementioned rejoinder, slurring over and distorting the facts pertaining to the compromise proposals made by the Plaintiff itself. The Defendant respectfully submits that this suit is vexatious and the result of an after thought. The Defendant denies the averments that the claims of trade-mark user and reputation put forth by the Plaintiff. Without prejudice to the said denial the Defendant submits that the alleged registration in India of the Plaintiff does not cover the goods which the Defendant is manufacturing an marketing, namely, switches and wiring accessories. Accordingly, the Defendant respectfully submits that the acts of the Defendant do not constitute infringement of the said registration. The Defendant submits that the rights claimed by the Plaintiff cannot be universal on for any or for all goods. The claims of manufacture, sale and trade mark user put forth by the Plaintiff are vague and, in any event, are hereby denied as baseless. Mere filing of applications for registration in various Classes does not clothe the Plaintiff with ay rights. The Defendant has not made any infringement of the Plaintiffs registration. There is nothing unique or singular about the form in which the word OMEGA appears in the Plaintiffs mark. The allegation that in advertisements OMEGA is given greater prominence loses sight of the fact that the Defendant was introducing a new range of switches. The inference drawn by the Plaintiff from his circumstance and the charge of fraud is baseless, motivated and tendentious. The allegation that the trade and the purchasing public will buy the goods of the Defendant in the mistaken belief that they are the goods of the Plaintiff is unfounded and imaginary.

3(d). The Defendant in its letter dated 3rd July 1995 did not claim a proprietary right to the Plaintiffs trade mark, as alleged, but only to its own (the Defendant''s own) trade mark. So far as the proposals for settlement of the dispute are concerned, the Defendant was neither ''obstinate'' nor ''adamant'' in its reply dated the 24th February 1996. On the other hand, it is submitted that, in all the circumstances of the case, the Defendant''s adopted a reasonable stand as will be seen from what has already been set out herein above and in the said letter dated 24th February 1996. The Defendant submits that it is worth repeating that the concluding sentence of the said letter is to the effect that the Defendant trusts that the dispute would now be finally and amicably settled; a sentiment to which the Plaintiff did not then respond, evidently, because the Plaintiff could not say that the Defendant''s stand was unacceptable. It is in this context that the fact that this suit which has been brought in 1997, about one year after the date of the above mentioned letter of the 24th February 1996, is significant. The averment that the Defendant cannot claim any proprietary right to the trade mark OMEGA and that the Plaintiff alone is the exclusive. Registered Proprietor ignores the facts of the case already adverted to above including the scope of the Plaintiffs registration. The Plaintiff does not disclose a cause of action and is therefore liable to be rejected on this ground alone. Hence, the suit is liable to be dismissed.

4. On the above pleadings the following issues were framed for trial:

(1) Whether the use of the Trade Mark Omega in relation to Electrical Switches amounts to infringement of the Plaintiffs Trade Mark No. 149294 in Class 9 dated 06.06.1951?

(2) Whether the use of the Trade Mark Omega with the expression Avanti kopp in relation to electrical goods amounts to infringement of the Plaintiffs Trade Mark No. 149294 in Class 9 dated 06.06.1951?

(3) Whether the use of the Trade Mark Omega in relation to electrical switches will cause confusion and deception in the market in respect of its identity and source?

(4) Whether the use of the Trade Mark Omega with the addition of the expression Avanti Kopp written in small letters as prefix a calculated attempt to exploit the commercial good will attached to Plaintiffs trade mark Omega?

(5) Is the Plaintiff entitled for accounts of profit from the Defendant and surrender of dies, books etc., consequent on infringement of Plaintiffs registration Trade Mark u/s 106 of the Trade an Merchandise Marks Act?

(6) To what other relief the parties are entitled?

5. Issue Nos. 1 and 5: It is the case of the Plaintiff that the had registered his trade mark ''OMEGA'' and the device ''W'' as Trade Mark No. 149294 in Part A in Class 9 as early as on 06.06.1951. But he came to know that the Defendant, who is a manufacturer of electrical goods and other items, is using the registered trade mark of the Plaintiff''OMEGA'' in their switches, which are deceptively similar to their trade mark causing confusion in the minds of the public resulting their sale of their goods which are marketed under the trade mark ''OMEGA''. Ex. P.5 is the suit notice dated 10.04.1995 issued by the Plaintiff to the Defendant, wherein they have stated that they have registered their trade mark as trade mark No. 149294 ''OMEGA'' in respect of the goods in Class 9 and their registration is valid one and through an advertisement in the newspaper ''The Hindu'' dated 23.11.1994, the Defendant had advertised their switches with the trade mark ''OMEGA'' deceptively similar to the trade mark ''OMEGA'' of the Plaintiff registered under Ex.P2. Ex. P.4 is the advertisement in the ''The Hindu'' newspaper in respect of the switches produced by the Defendant under the trade mark ''OMEGA''. Further the Plaintiff had requested the Defendant to cease and desist forthwith from using trade mark ''OMEGA'', which is the registered trade mark of the Plaintiff so as to avoid confusion or deception in the market to the customers who intends to purchase the products of the Plaintiff under the trade mark ''OMEGA''.

5(a). Ex.P.5 was replied by the Defendant under Ex.P.6 - notice dated 03.07.1995 wherein the Defendant would admit that they are manufacturing switches for the use of the domestic and commercial use. But they would say that their products are under the brand ''Avanthi Kopp'' and that one of the several ranges of the switches manufactured by the Defendant are under their brand ''Avanthi Kopp'' and name ''OMEGA''. They would further state that other ranges manufactured by the Defendants under the brand ''Avanthi Kopp'' are VISION, EUROPA, DENVER etc., They would further state that the name ''OMEGA'' was always used in conjunction with the brand ''Avanthi Kopp''. They would emphatically state that the alleged registration under Ex. P.2 of the Plaintiff does not cover switches. According to the Defendants, the trade mark used by the Defendant ''OMEGA'' along with the brand name ''Avanthi Kopp'' is not deceptively similar to that of the registered trade mark of the Plaintiff ''OMEGA''.

5(b). Admittedly the trade mark ''OMEGA'' has been registered by the Plaintiff under Ex.P.2 on 06.06.1951. On the other hand, there is not material placed by the Defendant to show that their trade mark ''OMEGA'' with the conjunction ''Avanthi Kopp'' was registered under Trade and Marks Act. Section 16 of the Trade Marks Act 1940 runs as follows:

Registration:--(1) When an application for registration of a trade mark has been accepted and either has not been opposed and the time for notice of opposition has expired, or having been opposed, has been decided in favour of the applicant, the Registrar shall, unless the application has been accepted in error, or unless the Central Government otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the making of the said application, and that date shall, subject to any direction made u/s 83 applicable to such trade mark, be deemed for the purposes of this Act to be the date of registration.

(2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application, as abandoned unless it is completed within the time specified in that behalf in the notice.

Section 16 of the Trade Mark Act, 1940 was repealed under the Trade and Merchandise Marks Act, 1958. Section 23 of the Trade and Merchandise Marks Act, 1958 is parimateria to Section 16 of the Trade Marks Act, 1940. The only addition to Section 23 of the Trade an Merchandise Marks Act, 1958 to the Section 16 of the Trade Marks Act, 1940 is Section 23(4), which runs as follows:

The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake

As per Section 136 of the Trade and Merchandise Marks Act, 1958, the registration of the trade mark contained as per the Trade Mark Act 1940 shall continue to be in force even after the enactment of the Trade and Merchandise Marks Act, 1958. u/s 21 of the Trade Marks Act, 1940 exclusive right to the use of the trade mark in relation to those goods was given to the person who had registered his trade mark. The use of the registered trade mark is being prohibited by others under the above said Section 21 of the Trade Marks Act, 1940. What is the effect of infringement of trade marks has been enumerated u/s 21 of the Trade and Merchandise Marks Act, 1958, as follows:

Infringement of trade marks:--(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the Plaintiff if the Defendant establishes to the satisfaction of the Court that the use of the mark of which the Plaintiff complaints is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark.

5(c). P.W. 1 is the authorised representative of the Plaintiff - company under Ex. P.1. He would depose that as per Ex. P.2 - trade mark registration certificate, the Plaintiff has specific and exclusive right over its trade mark ''OMEGA'' for its products viz., electric control apparatus an instruments and that Ex. P.3 (series) are the catalogs of the Plaintiff bearing the trade mark ''OMEGA'' and its device, which is circulated through out the world. According to the Plaintiff, the first Defendant has adopted the trade mark ''OMEGA'' along with its device for its products viz. electric switches. According to P.W. 1, in Ex.P. 4 an advertisement published in ''The Hindu'' newspaper dated 23.11.1994 for the Defendants products electric switches bearing the trade mark of the Plaintiff ''OMEGA'' by prefixing the word ''Avanthi Kopp'' to the trade mark ''OMEGA'', but the prominence was not given to the word ''Avanthi Kopp''. But only to the trade mark ''OMEGA''. Ex. P.5 is the copy of the notice issued by the Plaintiff. Ex. P.6 is the reply notice and Ex. P.7 is the rejoinder notice dated 07.09.1995. (Under Ex. P7 the Plaintiff has offered some terms for compromise. But the proposal under Ex. P.7 was turned down by the Defendant, under Ex. P.9 reply to the rejoinder notice. M.O 1 is the case containing the Plaintiffs trade mark alongwith its device W.M.O. 2 (series) are the switches produced by the Defendant, with the wrapper in plastic cover containing the Plaintiffs trade mark ''OMEGA'' with conjunction ''Avanthi Kopp''. So according to P.W. 1, under M.O. 2 the Defendants have infringed the Plaintiffs trade mark ''OMEGA. The word OMEGA in M.0.2 (series) deceptively appears to be that of the registered trade mark ''OMEGA'' of the Plaintiff.

5(d). There is no oral evidence let in on the side of the Defendants. On the side of the Defendants, Ex. D.1 to Ex.D.3 alone were produced. Ex. D.1 is the pages from Chennai Telephone Directory. Relying on that, the learned Counsel appearing for the first Defendant would contend that the word OMEGA represents the last letter of Greek alphabets and the word OMEGA is being used by Shipping companies, Travels and Tourist Agencies and also by Artist (Ex. D.2) and by Designers (Ex.D.3) and that the Plaintiff without raising his little finger against the use of the trade mark ''OMEGA'' by the other agencies cannot be heard to contend that the Defendants have infringed the registered trade mark of the Plaintiff. This argument was resisted by the learned Senior Counsel Mr. Raman basing his reliance on 1992 IPLR (17) 251 : PTC (Suppl) (2) 177 (Del) (Prakash Roadline Ltd. v. Prakash Parcel Services (P) Ltd.), wherein the relevant observation at para 33 runs as follows:

The Defendant has referred to certain pages from the telephone directory to show that under the category of transporter there are other concerns mentioned therein who use the word ''Prakash'' with their names. On this basis, it is submitted that the Plaintiff cannot be allowed to pick on the Defendant alone and restrain the Defendant from doing its business. This argument to my mind has no force. Merely because no action is taken against certain other parties, it does not mean that the Plaintiff is not entitled to take action against the Defendant. The other parties may not be affecting the business of the Plaintiff. They may be small-time operators who really do not matter to the Plaintiff. Therefore, the Plaintiff may not choose to take any action against them. On the contrary the Plaintiff feels danger from Defendant in view of the fact that the Defendant''s promoters are the ex-Directors/employees of the Plaintiff who are fully in the know of the business secrets of the Plaintiff. Therefore, the mere fact that the Plaintiff has not chosen to take any action against such other parties cannot disentitle the Plaintiff from taking the present action. The contention is, therefore, prima facie without any merit and is rejected.

5(e). The learned Counsel appearing for the Defendant would focus the attention of this Court to the registration certificate Ex. P.2 and would contend that the Electric Control Apparatus and Instruments would not cover switches because electric switches have been separately classified under class-9 to Schedule IV to Trade and Merchandise Marks Act, 1958. The learned Counsel for the Defendant has also produced IV Schedule to the Trade Marks Act, 1940 and would contend that in the alphabetic index to the classification of goods under the Trade Mark Act, 1940 classified Control apparatus (Electric) as class 9 and also switches (electric) under a class 9. So it is not open for the Plaintiff to rely on the word Electric Control Apparatus and Instruments in Ex. P.2 to contend that it will also include electric switches and that the trade mark ''OMEGA'' used by the Defendants in the electric switches will not amount to infringement of the registered trade mark ''OMEGA'' of the Plaintiff under Ex. P.2. This contention of the learned Counsel for the Defendant will hold no water because under Ex. P. 2 the Plaintiff has registered the trade mark ''OMEGA'' for the following goods:

Photo-Electric Cells; Electric Contact Starting Gate Broken Thread Device, Time Recording, Registering and Signalling Apparatus and Instruments, Electric Control Apparatus and Instruments, Apparatus, Instruments and Devices for Transmitting Electrical Oscillations and Impulses; Electric Starting Pistols; Photo-finish and Time Recording Photo-Electric apparatus; All the above goods falling in class 9.

Under the IV Schedule to Trade Mark Act, 1940 class 9 reads as follows:

Scientific, nautical, survoying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counter-freed apparatus, talking machines, cash registers; calculation machines, fire-extinguishing apparatus.

Under the above class 9 to the IV Schedule to the Trade Mark Act, 1940, electric apparatus and instruments including wireless alone is included whereas under Ex. P.2 the Plaintiff has registered his trade mark for electric control apparatus and instruments. The learned senior counsel Mr. Raman appearing for the Plaintiff would argue that the electric control apparatus and instruments includes the switches also, which has been classified under the Alphabetical index of the classification of the goods under class 9 alongwith the Control Apparatus (electric). For this proposition of law the learned Senior counsel Mr. Raman would base his reliance on the dictionary meaning in ''The World Book Encyclopedia'' for the word ''electric switch'' which defines the electric switch as follows:

a device that controls the flow of electric current in a circuit. The most common type is the snap-action toggle switch used to turn lights on and off. In such a switch, an insulated handle activates a hidden mechanism that completes or breaks the circuit. Turning the switch on connects two metal contacts so that current flows through the circuit. Turning it off separates the contacts and breaks the flow of current.

Electric switches may be classified according to the arrangement of their contacts. The simplest kind, a single pole, single throw switch, controls the flow of current along a single path. A double pole, single throw switch has two sets of contacts controlled by the same handle. In this way, two circuits can be controlled at the same time. A pair of single plea, double throw switches allows a light to be turned on and off from either of two locations. Each switch moves a contact back and forth between two wires. Electric current flows when the contacts in both switches are connected to the same wire. Touching either of the two switches... breaks the circuit by moving one contact to the other wire.

Under such circumstance, the contention of the learned Counsel for the Defendants that the failure of the Plaintiff to register electric switches separately under Ex.P.1 will not give any cause of action for the Plaintiff to file the suit is not sustainable since I am of the view that the registration of the trade mark ''OMEGA'' in respect of electric control apparatus and instruments under Ex. P.2 will over electric switches also.

5(f). The learned senior counsel appearing for the Plaintiff relying on Rameshwar Das Gupta Vs. State of U.P. and Another, , would contend that because of the trade mark ''OMEGA'' used in M.O. 2 (series) - switches produced by the Defendant would cause confusion in the minds of the buyers and they are likely to deceive as to the origin and source of the goods. The relevant observation in the above said ratio of the Honourable Apex Court for the purpose of deciding this case runs as follows:

In our judgment, it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacture is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in news papers, periodicals, magazines and in other medias. The ''result is that though the goods are not available in the country, the goods and the mark under which they are sold acquired wide reputation, take for example, the televisions, and Video Cassettes Recorders manufactured by National, Sony or other well-known Japanese Concerns. These televisions or video cassettes are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word ''National'' or ''Sony'' has not acquired reputation in this country? In our judgment, the goodwill or reputation of goods or marks does not depend upon its availability in a particular country. It is possible that the manufacture may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturers. An identical view was taken by Division Bench of Mr. Justice S.K. Desai and Mr. Justice Bharucha in a judgment dated July 24, 1968 in Appeal No. 368 of 1966. The question for consideration before the Division Bench was whether the goodwill in the trade mark ''7 0 CLOCK'' stood extinguished because of non-availability of blades with the mark in India after year 1958. The Division Bench turned down the claim by pointing out various reasons and we are in entire agreement with the observations made in the judgment on this aspect.

For the same proposition of law the learned Counsel for the Plaintiff would rely on 1996(16) PTC 293(Cal) (Calvin Klein Inc v. International Apparel Syndicate). The relevant observation in para 26 of the above ratio runs as follows:

In this state of law the evidence before me is considered. The international reputation of the Petitioner in the name and mark Calvin Klein Jeans, shirts and t-shirts is borne out by the advertisements of the Respondents where Calvin Klein had been advertised as the "Great American Classic". There is nothing American about the Respondent No. 1. One of the Magazines relied upon by the Respondents refers to ''Another Denim Giant Enters India". The only Denim Giant with the mark of Calvin Klein outside India is the Petitioner. There is no evidence to the contrary. The article in the Magazine reads;

Calvin Klein of the international fame needs no introduction in the ever expanding jeans Market. Turning their attention to India the denim giants are planning a massive launch of their range in mid-August. Entering the Indian market will be Calvin Klein''s line of jeans, jackets, waist coats, shirts and sweat shirts. Indian shoppers will not longer have to look elsewhere for international brands.

5(g). In 1999 PTC (19) 294 (Alfred Dunhill Limited v. Kartar Singh Makkar and Ors.), the relevant observation runs for the purpose of deciding this case runs as follows:

In the instant case, there is no serious dispute with regard to the fact that Plaintiff company had for many years carried on business in the United Kingdom and, through various subsidiary and associated companies through out the world in the sale of pipes tobacco products, smokers'' requisite and a wide range of luxury goods. It is also undisputed that all of the goods sold by Plaintiff company are sold under the trade name and trade mark ''DUNHILL''. In this view of the matter, it can safely be inferred that the trade mark/trade name DUNHILL meant and means Plaintiff and its products to the purchasing public. The averments made in the plaint and the application filed under Order 29 Rule 1 and 2 Code of Civil Procedure, clearly show that as a result of extensive advertising and promotional efforts, Plaintiffs products including textile articles, have acquired global reputation and goodwill and the trade mark and trade name DUNHILL is being associated with the goods of Plaintiff. Plaintiffs advertising has appeared in news and magazines having both national and international circulation. It is also alleged that the trade name and trademark DUNHILL has become distinctive of Plaintiffs goods as a result of substantially exclusive and continuous use in commerce since 1893. Plaintiffs constituted attorney Mr. Melanie Blakeman has filed his affidavit in support of the said application. I have no reason to disbelief the said affidavit. In this view of the matter, it can safely be held that Plaintiff successfully promoted a conscious connection in public mind between ''DUNHILL'', mark and its products.

In the case on hand, it is seen from Ex. P.3 - pamphlet that after registering his trade mark under Ex. P.2 the Plaintiff has used the same for his products, which has been circulated through out the world. So from Ex. P.3 the Plaintiff has prima facie established the valuable rights in the trade mark and trade name ''OMEGA'' and established exclusive and extensive right thereof over many years. In a connected matter between the same parties in OSA. No. 265 and 266 of 1997 the Division Bench of this Court had an occasion to deal with the registered trade mark ''OMEGA'' of the Plaintiff with the Greek letter W being used by the same Defendants in electric switches, which has been reported in 2003 (27) PTC (Mad) (DB) (Omeag S.A. Blenne, Switzerland v. Avanti Kopp Electricals Ltd. and Anr.). The relevant observation of the Division Bench of this Court in the above said case runs follows:

Applying principles laid down by the Supreme Court, Allahabad and Bombay High Courts, it is clear that the Plaintiff company has enjoyed reputation for its products manufactured and marketed with the trade name Omega. Though it may be a foreign word, the fact remains that the Plaintiff has been using the trade name, Omega for more than 50 years with the Greek letter ''W''. There is no dispute that the Plaintiff has been manufacturing electrical goods besides watches with the trade name, Omega and it is using the trade mark not only in India, but also outside the country also. There is no explanation from the Defendant to prefer the expression. Omega for the electric switches manufactured by it. Though the Defendant is using the word, Omega in conjunction with the word ''Avanti Kopp'', the advertisements clearly show that the Defendant has used the expression, Omega. It is also interesting to note that the Defendant has used the expression, ''control switch'' as description of the switch manufactured and sold by it in the name Omega in one of the advertisements. We are of the view that if the goods are manufactured and marketed by the Defendant under the trade name, ''Omega'' alongwith its own name ''Avanthi Kopp'', it would cause confusion in the mind of unwary customer that switches manufactured by the Defendant came from Plaintiff company.

5(h). Hence, I hold on Issue No. 1 that the use of the trade mark ''OMEGA'' in relation to electrical switches amounts to infringement of the Plaintiff s trade mark No. 149294 in Class 9 dated 06.06.1951 and I hold on Issue No. 5 that the Plaintiff is entitled for a direction against the Defendant to surrender of dies, books etc;.. consequent on infringement of Plaintiffs registered trade mark u/s 106 of the Trade and Merchandise Marks Act.

6. Issue Nos. 2, 3 and 4: The electric switches manufactured and marketed by the Defendants are M.O.2 (series), the plastic wrapper under which the electric switch produced by the Defendant bearing the name ''OMEGA'' in hold letters and the name AVANTHI KOPP in small letters. The word ''OMEGA'' printed in M.O. 2 plastic covers are deceptively similar to the trade mark ''OMEGA'' registered under Ex. P.2 by the Plaintiff. 6(a). In view of my discussion in the earlier paras, I hold on Issue No. 2 that the use of the trade mark ''OMEGA'' with the expression ''AVANTHI KOPP'' in relation to electrical goods amounts to infringement of the Plaintiffs trade mark No. 149294 in Class 9 dated 06.06.1951, and I hold on Issue No. 3 that the use of. the trade mark ''OMEGA'' in relation to electrical switches will cause confusion and deception in the market in respect of its identity and source, and I hold on Issue No. 4 that the use of the trade mark ''OMEGA'' with the addition of the expression ''Avanthi Kopp'' written in small letters as prefix is a calculated attempt to exploit the commercial good will attached to Plaintiffs trade mark ''OMEGA''.

6(b). At this juncture the learned Counsel appearing for the Defendant would state that as admitted by P.W. 1 that the Plaintiff-company have not manufactured any electric switches (Cross-examination of P.W. 1 at page 3), it cannot be said there was an infringement of the trade mark ''OMEGA''. In switches. But I am of the view that the Plaintiff has got every right to protect his interest over the goods manufactured and also to be manufactured on the basis of Ex. P.2 registration of his trade mark ''OMEGA''. Since the Plaintiff has registered his trade mark ''OMEGA'' under Ex. P.2 it is not open to the Defendants to use the same trade mark ''OMEGA'' in any of its products. The contention of the learned Counsel for the Defendants that since the Plaintiff - company have not manufactured any switches, the use of the trade mark ''OMEGA'' on the wrapper of M.O. 2 will not amount to infringement of the registered trade mark cannot hold any water. I am of the view that the Defendant cannot use the word ''OMEGA'' even on the wrapper of M.O. 2 (series) switches.

7. Issue No. 6: In fine, the suit is decreed and the Defendants are restrained by an order of permanent injunction from manufacturing, selling and/or offering/advertising for sale the trade mark ''OMEGA'' or any other word and/or device mark which is deceptively or similar either visually or phonetically to the mark of the Plaintiffs ''OMEGA'' registered under No. 149294 in Class-9 in respect of all ranges of switches, electrical control apparatus etc, as prayed for. The suit is also decreed and an order of permanent injunction is granted restraining the Defendants, their agents etc., from manufacturing, selling, offering and advertising for sale or deal in all ranges of switches and other allied/cognate goods of any kind whatsoever so as to pass off their goods as those of the Plaintiffs goods by using the expression ''OMEGA'' or any other trade mark/name deceptively/phonetically similar to those of the Plaintiffs trade mark ''OMEGA'' and an order of mandatory injunction is granted directing the Defendants to handover all the unused plastic wrappers (used to cover the switches manufactured by the Defendants as in M.O.2) bearing the Plaintiffs registered trade mark ''OMEGA'' to the Plaintiff within a period of 15 days from this date. As far as the relief of rendition of account is concerned since there is no evidence for the period in which M.O.-switches were sold in the mark by the Defendants, the relief regarding rendition of accounts is hereby dismissed. No costs.