@JUDGMENTTAG-ORDER
Shiv Narayan Dhingra, J.@mdashBy this order, I shall dispose of an application under Order 39 Rules 1 & 2 of preferred by the plaintiffs for grant of injunction against the defendants in respect of use of trademark EQUAL. It is submitted by the counsel for plaintiffs that the plaintiffs were engaged in manufacturing and marketing of granulated sweetener under the trademark EQUAL. The trademark of plaintiffs EQUAL was a well-known trademark in India and other countries of the world. It was adopted by plaintiffs'' predecessor in US in the year 1979 and major commercial sales started in 1981. The plaintiffs'' product was the first aspartame based low calories sugar substitute ever marketed and this product was being marketed in various parts of the world including India and the trademark EQUAL was exclusively associated with the business of plaintiffs. The reputation of the plaintiff''s trademark EQUAL even extended to the cognate and allied goods being sold at the same counter manufactured by the same manufacturer. This trademark EQUAL was registered vide No. 376816 of 9th June, 1981 in Class 1 in respect of Synthetic low calorie sweetening preparations and was advertised in Trade Mark Journal No. 850 dated 1st February 1986. The trademark EQUAL was registered under Class 30 on 4th May, 1987 in respect of food products (trademark was advertised in Trade Mark Journal No. 970 dated 1st November, 1989 at page No. 994). Another application for registration of trademark under Class 5 was pending registration since 4th May, 1987. It is submitted that on account of priority in adoption, long, continuous and extensive use of the trademark EQUAL in India and other parts of the world, the plaintiffs and predecessor have acquired and retained an exclusive right to use trademark EQUAL in respect of the sweeteners as well as other cognate and allied goods. It is further submitted that the plaintiffs spent huge amount on advertisements of trademark EQUAL and total sale figures of plaintiff Company all over the world bearing the said trademark EQUAL were considerably high. Defendant No. 1 was manufacturing and marketing mineral water and sparkling sold and selling the same under the trademark EQUAL. plaintiff also learnt that defendants had applied for registration of the trademark EQUAL under various classes under the name and address of defendant No. 2. Defendants No. 1 and 2 were both owned by Narang family. plaintiffs learnt about defendants'' application for registration of trademark EQUAL in the year 2002 and learnt that the defendants have applied for registration of trademark EQUAL in Classes 1, 3, 4, 11, 25, 27, 29, 31 & 32. It is submitted that the defendants trademark EQUAL was deceptively similar to the trademark of plaintiffs and was in similar style and thus defendants were guilty of infringement of trademark of plaintiffs. Defendants were also guilty of passing off or enabling others to pass off their goods and business as the goods and business of plaintiffs because of user of trademark EQUAL, therefore, defendants were causing loss and there was likelihood of other losses being suffered in the business of plaintiffs and reputation of plaintiffs. The defendants were also liable to render the account to ascertain the loss.
2. In reply to this application it is submitted by defendants that defendants trademark ''EQUAL with a geometrical sign of EQUAL(=) was in use since July, 1988 and it was registered in Class 12 since 9th December, 1988, well within the knowledge of plaintiffs. This trademark was registered in favour of defendants by Trademark Registry after a thorough search. The trademark was initially got registered by defendants in respect of the plastic auto parts. The defendants had started their business under the name of M/s Narang Technoplast and got this trademark registered when the plaintiffs were not even known anywhere and there was no other company using trademark ''EQUAL''. Thus, the question of adopting trademark pertaining to plaintiff did not arise. Defendants obtained further registration of trademark EQUAL in respect of cutlery, spoons in Class 8 & 12. These registrations were in the name of M/s Narang Technoplast owned by Shri Ashok Narang. In the year 1995, Mr. Ashok Narang formed another sole proprietary firm under the name and style of M/s EQUAL MINERALS in order to set up a business of packaged drinking water and sparkling soda and started its unit at Rewari, Haryana which commenced production in August, 2001. Defendant No. 1 continued to use the trademark EQUAL in respect of mineral water, sparkling soda since August, 2001 and also continued the family business. The EQUAL MINERAL and EQUAL PLASTICS PVT. LTD were family business of Mr. Ashok Narang and his family members in respect of Plastic bottles, mineral water and plastic Auto Parts and the trademark EQUAL was being used since July, 1988 exclusively by defendants for its products.
3. It is submitted that the plaintiff''s allegations of passing off/ infringement were baseless. The plaintiff had no reputation in India neither he had copyright over the design of word ''EQUAL''. The trademark EQUAL in respect of mineral and aerated water was granted to the plaintiff only on 20th March, 2003, much after the trademark EQUAL was registered in favour of defendant.
4. It is also submitted that there was no evidence of user of trademark EQUAL by the plaintiffs in India. All documents filed by the plaintiffs along with the application and along with the plaint only showed that the product of plaintiffs was being sold and marketed outside India viz. USA and Europe and the plaintiffs had no sale in India. The sales were disclosed in dollars and that itself shows that the sales were outside India. plaintiffs had also not placed on record advertisements of its products in any newspaper or magazine in India. All the advertisements placed on record are only of US and the illustrations filed by the plaintiff also are of US. It is stated that mere registration of trademark EQUAL by the plaintiff in India does not amount to the use of the trademark EQUAL in India and there was no evidence of transboarder reputation of plaintiff''s trademark in India. The copy of advertisements filed by the plaintiff does not show that the plaintiff had any reputation or even tried to create any reputation in India.
5. It is argued by the defendants that the description of the goods as well as business activities of the plaintiffs is absolutely different from the defendants products. The product ''Aspartame based low calories sweetener'' manufactured by the plaintiffs was a pharmaceutical preparation. The plaintiffs'' product ''Low Calories Sweeteners-Aspartame'' is used under medical advice only by a limited class of people i.e. diabetic patients or the consumers who want to be on low calories sweetener in order to avoid putting on more body weight. Whereas the defendants'' goods being Mineral Water, and Sparkling Soda for general use and purpose cannot be said to be identical with and or deceptively similar to plaintiffs product in any manner. Thus, no case of passing off of the goods of defendants as that of plaintiff was made out because the defendant trademark EQUAL had its own reputation in India and defendants had a goodwill of its products in India. The defendants trademark was also not identical or similar to that of the plaintiffs. Defendants were using Geometrical sings of EQUAL (=)under the word EQUAL. Even otherwise, defendants'' products or any product similar to that of defendants was not even manufactured by the plaintiffs. Neither a case of infringement was made out against the defendants because trademark EQUAL was registered in favour of defendants and defendants were using the trademark EQUAL in its own right in view of Section 28 of the Trademark Act and hence defendants have a right to use the trademark EQUAL. Defendants trademark was a registered trademark and hence no occasion for infringement would lie.
6. In order to grant an interim injunction under Order XXXIX Rules 1 and 2 CPC, party has to prove three elements. First is that it has a good prima facie case, second that in case injunction is not granted, it will suffer irreparable loss and injury and the third is that the balance of convenience lies in its favour. There is no doubt that the plaintiffs trademark EQUAL was registered in US and several other countries including India as is reflected from the documents but there is no evidence that the plaintiffs was having any public acknowledgment or a reputation in India. The copies of advertisements placed on record by the plaintiffs show that these advertisements were inserted in Journals and Magazines of US. plaintiffs have not placed on record even a single advertisement inserted in Indian newspapers, magazines, journals etc. plaintiffs have also not placed on record material to show that their trademark was being used for any other products except Low Calories Sweeteners in the world. All advertisements and other documents placed on record by plaintiffs show that Low Calories Sweetener was the only product of the plaintiffs which had been advertised or marketed. The plaintiffs had been propagating about its ''Low Calories Sweeteners-Aspartame based'' on account of its deictic value and claiming that it was a substitute of sugar with almost no calorie and may be used as a Sweetener for all kinds of food products consumed by people. The documents also show that the plaintiffs never published their advertisements in any Indian languages. All advertisements are in English and meant for those who are health conscious or have sugar problems or want to reduce their weight. The bills filed by the plaintiffs do not reflect sales or business in India. The plaintiffs only filed consolidated sale figures, without reflecting as to what were their sales in India. No documents have been filed to show that the plaintiffs had any sales in India reflecting business or reputation of plaintiffs in India in respect of its trademark EQUAL. Merely registration of a trademark, without marketing the products under it and without use of trademark, does not constitute a prima facie case in favour of plaintiffs.
7. The defendants were in the business of Mineral Water and Sparkling Soda. The defendants products is likely to be sold at those places where there would be no scope of plaintiffs products being sold. plaintiff''s products would be available either at grocery stores or with the chemists whereas defendants products would be available at petrol pumps, restaurants, local shops, even at traffic signals and movable-cart shops. The consumer of plaintiffs products are naturally an elite class persons who are calorie conscious and would like to use it in place of sugar. Such persons purchase the same with advice of doctors or some friend. ''Low Calories Sweeteners-Aspartame based'' are not bought by people as a common use item without recommendations. In view of the above, I consider that the plaintiffs do not have a prima facie case in their favour.
8. Admittedly, the plaintiffs are not in the business of selling mineral water and sparkling soda. Any kind of sale of products of defendants was not going to reduce the sale of the products of the plaintiffs resulting into any loss to the plaintiffs because plaintiffs are not in the business of mineral water and sparkling soda. Nor it is the claim of plaintiffs that it was selling mineral water. Thus, there is no question of any loss much less irreparable loss being suffered by plaintiffs because of sale of mineral water or other products like plastic bottles or auto parts by defendants for which defendants'' trademark is registered.
9. The balance of convenience also does not lie in favor of plaintiffs. As far as India is concerned, plaintiffs have not even prima facie been able to show that they have any reputation in India which was going to suffer because of use of trademark EQUAL by defendants. Moreover, defendants were using this trademark since 1988 i.e. for above 20 years which itself shows that the balance of convenience would lie in favour of defendants and not in favour of plaintiffs. The defendants companies are registered in India. Defendants applied for registration of trademark and this trademark was registered after thorough search by the trademark Registry. EQUAL is not a coined word and it is a common word and it can come to mind of anybody that why not EQUAL should be used as trademark. It can be a coincidence that plaintiffs started use of word EQUAL in USA and defendants used the same in India at different times. That does not create any balance of convenience in favor of plaintiffs and against the defendants. I, therefore, find no force in this application under Order XXXIX Rules 1 and 2 CPC made by plaintiffs. The application is hereby dismissed.
CS(OS) 895 of 2005
List this matter before Regular Bench, subject to orders of Hon''ble the Chief Justice, for 11th March, 2010.
