Mohd. Shamim, J.@mdashThese are two applications in Suit Nos. 1616/90 and 2461/96 for issue of an ad interim injunction restraining the defendants, their servants and agents from using the word "GRANDLAY" or "HENLAY" in connection with their business and goods. They have further prayed through the said applications that the defendants be restrained from using any trade mark deceptively similar or identical to the trade mark "GRANDLAY" and GRANDLAY ELECTRICAL (INDIA)".
2. Brief facts which led to the presentation of the present applications are as under: that the plaintiff No. 1 (in Suit No. 2461/96) are a partnership firm duly registered with the Registrar of Firms since the year 1969. plaintiff No. 1 was formed for the purpose of manufacturing wires and cables/electric cabals and insulated wires of different sizes. The turnover of the plaintiff No. 1 for the year ending March, 1996 was more than Rs. 13 crores. It is hoped that the turnover of the plaintiff during the year 1996-97 would near about Rs. 20 crores. The estimated budget for advertisement and publicity for the financial year 1996-97 is Rs. 15 lacs. The plaintiff enjoy a very good reputation for the quality of their products under the trade mark "GRANDLAY CABLES".
3. plaintiff No. 2 prior to 5th December, 1985 was carrying on the business of manufacture of electric wires and cables Along with S/Shri C.L. Batra, K.L. Batra, Anil Kumar Batra and Jhanda Ram Batra under the name and style of plaintiff No. 1. The trade marks "GRANDLAY CABLES" was registered with the Registrar of the Trade marks under No. 214129 dated March 2, 1963. Shri Jhanda Ram Batra breathed his last on November 12, 1985. Disputes arose amongst the partners. Hence the matter was referred to an Arbitrator who rendered his consent award on December 5, 1985. By virtue of the said award the trade mark "GRANDLAY CABLES" fell to the shares of Shri K.L. Batra and plaintiff No. 2. Defendants have thus got no right and title to use the trade mark "GRANDLAY CABLES" as their trade mark. The said award was made a rule of the Court vide judgment and decree dated January 9, 1986.
4. Later on, on December 7, 1985 plaintiff Nos. 2 and 3 entered into a partnership with Shri K.L. Batra and his son Shri Sudhir Batra for carrying on the business under the name and style of plaintiff No. 1. On October 22, 1988 both Shri K.L. Batra and his son Shri Sudhir Batra retired from the above partnership relinquishing all their rights and interests in the partnership property including the trade name "GRANDLAY ELECTRICALS (INDIA)" and trade mark "GRANDLAY CABLES" in favor of plaintiff Nos. 2 and 3.
5. In view of the above plaintiff No. 2 and 3 have become the sole proprietors of the trade mark "GRANDLAY CABLES" and as such they alone have got the exclusive right to use the trade mark "GRANDLAY CABLES" as part of their trading style. Shri C.L. Batra Along with his four sons known as Rakesh Batra, Rajesh Batra, Brajesh Batra and Vivek Batra floated a company under the name and style of CLA Telelinks India (Pvt.) Ltd., at Grandlay Electric India Cinema Building Complex, New Friends Colony, New Delhi. During the year 1989-90 the said defendants started manufacturing wires and cables under the deceptively similar trademark "BATRA HENLEY". The plaintiffs thus filed a suit, being Suit No. 1616/90, and obtained an ex parte ad interim injunction restraining the defendants from using the trade mark "GRANDLAY". During the pendency of the said suit CLA Telelinks India (Pvt.) Ltd. went into liquidation on November 5, 1992. The said fact came to the notice of the plaintiffs in November, 1995 through the statement of the Counsel for the Official Liquidator made before the Court. It has recently come to the knowledge of the plaintiffs that the defendants have floated another firm under the name and style of Batra Henlay Cables. The defendants are using with impunity the trade "GRANDLAY" despite the ex parte injunction order dated May 18, 1990. They are also further using the deceptively similar trade mark "HENLAY". They are carrying on their business under the trade name "BATRA HENLAY" at Grandlay Electric India Cinema Building Complex, New Friends Colony, New Delhi. The use of the trade mark" HENLAY CABLES" by the defendants which is deceptively similar to the plaintiffs'' registered trade mark" GRANDLAY CABLES" in respect of their electrical goods and also as a part of their trading name is bound to cause confusion and deception amongst the members of the public which may lead to the passing off the defendants'' goods and business and that of the plaintiffs. The chances of deception are further enhanced on account of the fact that the goods of the defendants are identical to those of the plaintiffs. The adoption and use of the deceptively similar trade mark "BATRA HENLAY" amounts to an infringement of the plaintiffs'' trade mark "GRANDLAY".
6. By virtue of prior adoption and continuous user of the above said trade mark in respect of the electrical wires and cables the plaintiffs have acquired goodwill and reputation. Hence the plaintiffs alone are entitled to the exclusive use of the same. Adoption of and the use of the identical or deceptively similar trade mark is bound to cause confusion and deception amongst the members of the public and would tantamount to passing off goods of the defendants as that of the plaintiff so. In case the defendants are not restrained from using the trade mark "BATRA HENLAY" which is a deceptively similar trade mark to that of "GRANDLAY CABLES", the plaintiffs would suffer irreparable loss and injury. It has thus been prayed that the defendants, their servants and agents be restrained from using the word "GRANDLAY" or any other trade mark which is deceptively similar to the above word. It has further been prayed that the defendants, their servants and agents be also restrained from using the trade name "HENLAY".
7. Defendants have opposed the applications, inter alia, on the following grounds : that the plaintiffs are neither the proprietors of the trade mark "GRANDLAY" nor the firm Grandlay Electricals (India). Defendant No. 2 (in Suit No. 1616/90) as per the arbitration award dated December 5, 1985 was awarded cinema division of Grandlay Electricals (India) with firm name M/s. Grandlay Electricals (India) Cinema. The plaintiffs/applicants are neither trading under the name "GRANDLAY ELECTRICAL (INDIA)" nor using the trade mark "GRANDLAY" in relation to insulated wires and cables. It is wrong and false that Shri K.L. Batra and Shri Sudhir Batra have relinquished and assigned all their rights, title and interests in the partnership firm Grandlay Electrical (India) and the plaintiffs have become the absolute owners and proprietors of the trade mark "GRANDLAY" and as such have got the exclusive right to the words "GRANDLAY CABLES" as part of their trading style. The defendants have adopted trade mark "BATRA HENLAY" with reflective decorative geometrical device in relation to the goods being manufactured by them, such as fire retardant cables, automobiles, aircraft, ship, mining, control and ribbon cables, wiring harness. Defendants are not using the "GRANDLAY GROUP" as trade mark in relation to their business and goods. The words "GRANDLAY GROUP" are only an indicia or a house mark of the defendants. They are well within their right to use the words "GRANDLAY GROUP" as per the arbitration award. The defendants'' trade mark i.e. "BATRA HENLAY" is neither identical nor deceptively similar to the aforementioned trade mark "GRANDLAY". The apprehensions of the plaintiff/applicants are imaginary and without any basis, whatsoever. The trade mark of the defendants i.e. "BATRA HENLAY" is a composite trade mark. It consists of the two words i.e. "Batra" and "Henlay" and as such is altogether different from "GRANDLAY". The plaintiffs are not the registered proprietor of the trade mark "GRANDLAY". It is wrong that the defendants by the use of the trade mark "BATRA HENLAY" are passing off their manufactured goods as that of the plaintiffs. It is also wrong and false that the use of the said trade mark is tantamount to the infringement the trade mark of the plaintiff i.e. GRANDLAY". The applications are false and frivolous and are liable to be dismissed.
8. It has been urged for and on behalf of the plaintiffs that they are the owners of the trade mark "GRANDLAY" and have exclusive right to the use of the same as part of their trading style for their partnership firm M/s. Grandlay Electrical India. They derived the said right through an award dated December 5, 1995 which was later on made a rule of the Court vide judgment and order dated January 9, 1986 and a decree was passed in terms thereof. Hence none other than the plaintiffs are entitled to use the said trade mark. The defendants, however, have caused infringement of the said trade mark by using the word "GRANDLAY" in connection with their electrical goods. They have in violation of their rights applied for and obtained registration of a company with the Registrar of Companies with the name of M/s. Grandlay Electrical India (Pvt.) Ltd. Later on the defendants also floated a company under the name of Batra Henlay for the manufacture of wires and cables. They are also marketing the said cables under the name "GRANDLAY GROUP". The trade mark "HENLAY" adopted by the defendants is phonetically, visually and deceptively similar to the plaintiffs'' registered trade mark "GRANDLAY".
9. Learned Counsel for the defendants Mr. Bansal while countervailing the said arguments has vehemently argued that the trade mark "BATRA HENLAY" is altogether different from the trade mark "GRANDLAY". It is neither deceptively nor phonetically nor in any way similar and identical to the trade mark "GRANDLAY" so as to cause confusion in the mind of the public to take and treat the electrical goods manufactured by the defendants as that of the plaintiffs. The apprehensions given vent to for and on behalf of the plaintiffs are without any basis, whatsoever.
10. Learned Counsel for the defendants has further argued that the suit of the plaintiffs for infringement of their trade mark is not maintainable. There is an inordinate delay of six years in bringing forward the Suit No. 2461/96. The plaintiffs all the time knew with regard to the user of the word "HENLAY" for and on behalf of the defendants in connection with their electrical goods. They stood by all the above said years without raising even a tiny finger of protest against the plaintiffs. Now this is, too, late in the day for them to object to the user of the trade mark "HENLAY" by the defendants. The plaintiffs have themselves allowed Shri K.L. Batra and Shri Sudhir Batra to use the trade mark "GRANDLAY". Hence there is a dilution of the trademark "GRANDLAY". Thus the plaintiffs should not have any grievance on account of the user of the said trade mark by other persons.
11. I have heard the learned Counsel for both the parties at sufficient length and have very carefully considered their rival contentions and have given my anxious thoughts thereto.
12. It is manifest from the rival contentions as canvassed above that Mr. Bansal has raised a preliminary objection with regard to the maintainability of an action on the part of the plaintiff for infringement of the trade mark "GRANDLAY". According to the learned Counsel the plaintiffs are not the owners and proprietors of the said trade mark. The said trade mark has so far not been registered in favor of the plaintiffs. Hence the plaintiffs are debarred from bringing forward the present suit for infringement. Learned Counsel for the plaintiffs has urged to the contrary
13. There is no dispute in between the parties with regard to the fact that the present plaintiff Shri Bihari Lal Batra was carrying on business Along with his other brothers known as Shri C.L. Batra i.e. defendant No. 2 in Suit No. 1616/90, Shri Krishan Lal Batra and Shri Anil Batra, and Shri Jhanda Ram Batra, father of the parties to the suit, under the name and style Grandlay Electrical India (Pvt.) Ltd. All of them were joint owners and proprietors of the trade mark "GRANDLAY CABLES" registered under No.214129 dated March 2, 1963 in respect of insulated electric wires and insulated electric cables. Disputes arose amongst the brothers who are parties to the present proceedings and the matter was referred to the sole arbitration of Shri Gurdayal Singh who rendered a consent award dated December 5, 1985. Later on a decree was passed in terms of the said award vide judgment and decree dated January 9, 1986. The trade name Grandlay Electrical India fell to the share of Shri Bihari Lal Batra and Shri K.L. Batra jointly. Two or three days thereafter the plaintiff (in Suit No.1616/90) entered into a partnership with Shri K.L Batra and Shri Sudhir Batra for carrying on business under the name and style Grandlay Electrical India on 7th December, 1985. Later on Shri K.L. Batra and Shri Sudhir Batra retired from the partnership. They relinquished all their rights in the said partnership firm and assigned their rights and interests in the partnership property including the trade name and trade mark "GRANDLAY" in favor of the plaintiffs. A copy of the said retirement deed dated October 22, 1988 is on the file of this Court. Thus it can be inferred there from that the plaintiffs became the exclusive owners of the said trade mark "GRANDLAY".
14. Now the question which is precariously perched on the tip of the tongue is as to whether the plaintiffs in view of the above stated circumstances have got a right to maintain an action for the infringement of their trade mark "GRANDLAY". My answer to the above question is a positive `yes''. It is manifest from the evidence and the facts canvassed above that the trade mark "GRANDLAY" fell to the share of the plaintiff Shri Bihari Lal Batra vide the award dated December 5, 1985. Subsequently through the retirement deed dated October 22, 1988 Shri Sudhir Batra and Shri K.L. Batra relinquished their rights and interests in the partnership property including the trade mark "GRANDLAY" in favor of the plaintiff Shri Bihari Lal Batra. The plaintiffs herein have further applied to the Registrar of Trade Marks for their names being entered in the registered of Trade Marks as a proprietor of the impugned Trade Mark No. 214129 in Clause 9 from October 22, 1988 onwards. The said matter is still sub judice and no order thereon has so far been passed . Thus if no action has been taken by the Registrar of Trade Marks on the application of the plaintiffs the plaintiffs cannot be blamed thereof. Admittedly the impugned trade mark "GRANDLAY CABLES" was a registered trade mark under No. 214129 dated March 2, 1963 in Clause 9 in relation to insulated electric wires and insulated cables. It was allotted to the plaintiffs with the consent of the defendants vide the consent arbitration award dated December 5, 1985. Thus the plaintiffs have virtually become the owners and proprietors of the trade mark as per the consent of the other partners in the erstwhile partnership including the defendant Shri C.L. Batra. Hence the defendants should not have any quarrel on the said score and I feel they cannot be permitted to raise any sort of objection on the said ground. If the plaintiffs have become the owners of the impugned trade mark which has fallen to their share and that, too, with the consent of the defendants, whereunder they have got a right to carry on their business, it would be highly unjust and improper to allow the defendants to object to the suit on the ground that the plaintiffs cannot be permitted to maintain an action for infringement off their trade mark and for passing of the goods of the defendants as that of the plaintiffs under the said trade mark and trade name.
15. An identical matter very much akin to the matter in hand came up for consideration before a learned Single Judge of this Court as reported in
16. This Court is thus firmly of the view that the present suit is maintainable.
17. The next contention raised by the learned Counsel for the defendants is that the plaintiffs themselves have allowed different persons to make use of the trade mark "GRANDLAY". Hence it would be a sheer absurdity to agree with the plaintiffs that the plaintiffs are the exclusive owners of the trade mark "GRANDLAY". In this connection he has referred to the retirement deed dated October 22, 1988 whereby Shri K.L. Batra and Shri Sudhir Batra were permitted to use the trade mark "GRANDLAY". Thus according to the learned Counsel there is a dilution of the trade mark and the same has become publicity juris. Learned Counsel in support of his argument has led me through the observations of a learned Single Judge of Madras High Court as reported in K.R. Jadayappa Mudaliar & Ors. Vs. K.S. Venkatachalam & Anr., (1989) 14 I.P.L.R. 111. It was observed therein "that the Trade and Merchandise Marks Act has laid down elaborate procedure for a registered proprietor of a trade mark to allow another party to use his registered trade mark, which procedure includes obtaining prior sanction of the Government of India. In the instant case the registered proprietor was allowing free and unlicensed use of his trade mark to others without entering into a registered user agreement. This was trafficking in the trade mark and had resulted in the mark losing its distinctiveness". Inspired by the said observations learned Counsel for the defendants Mr. Bansal contends that the impugned trade mark in view of the above circumstances has no more remained a distinctive feature of the business of the plaintiffs. It has become a publicity Jurisdiction i.e. a thing of public use. I am sorry I am unable to agree with the contention of the learned Counsel for the defendants. Learned Counsel while raising the said objection has construed amiss the contents of the retirement deed dated October 22, 1988. A close scrutiny of the same reveals that the plaintiffs have not allowed the user of the trade mark M/s. Grandlay Electrical India (Pvt.) Ltd. to Shri K.L. Batra and Shri Sudhir Batra in connection with wires and cables. They were permitted to use the trade mark "GRANDLAY" in connection with goods other than electrical wires and cables and that, too, on registration of the said trade mark by the Registrar of Trade Marks. Thus while so contending the learned Counsel is oblivious of the fact that the plaintiffs never permitted the use of the said trade mark in connection with electrical goods. The plaintiffs could not have objected to the use of the trade mark "GRANDLAY" for goods other than electrical goods because they are using the trade mark "GRANDLAY" relating to the electrical goods only manufactured by them. Furthermore, they even put a restriction on the use of the trade mark "GRANDLAY" by the out-going partners namely, Shri K.L. Batra and Shri Sudhir Batra as they can use the same in respect of the goods other than the electrical goods, only and that, too, after registration of the same. Nothing has been shown by the defendants that the said Shri K.L. Batra and Shri Sudhir Batra have got the said trade mark registered in connection with the goods manufactured by them and they are using the same for carrying on their business. I am thus of the view that there is no dilution of the impugned trade mark.
18. The next argument advanced by learned Counsel for the defendants is that the plaintiffs have made mis-representation and played fraud on this Court (vide paras 19 & 27 of the plaint in Suit No.2461/96), hence the plaintiffs are not entitled to the equitable relief of injunction. It is a well recognised principle of civil jurisprudence that those who want to claim equitable relief of injunction must approach the Court with clean hands. The hands of the plaintiffs, according to the learned Counsel for the defendants, in the present case are soiled with the dust of mis-representation. Hence this Court, sitting as a Court of Equity, would refuse the relief of injunction. The learned Counsel further contends that if this Court agrees with his said contention then the plaintiffs are also guilty of delay, acquiescence and laches. Consequently they are not entitled to injunction on the said score also. Learned Counsel for the plaintiffs has urged to the contrary.
19. The grievance of the defendants is that it is false and preposterous that the cause of action in Suit No.2461/96 arose in favor of the plaintiffs only in the second week of June, 1996. According to the learned Counsel this fact has been mentioned in order to show and prove that they came to know with regard to the floating of the new firm Batra Henlay recently, which is not a fact. In fact the plaintiffs knew with regard to the floating of this firm since long yet they did not choose to take any action and stood by, allowing the defendants to use the said trade mark and the firm name. Admittedly the plaintiffs filed a suit, being Suit No. 1616/90 wherein they prayed for a restraint order interdicting the defendants from using the said trade mark and the trade name. Thus the plaintiffs cannot be heard to say that they came to know with regard to the trade mark "BATRA HENLAY" and the firm name only in the second week of June, 1996 (para 27).
20. The reply to the said argument is in the contention canvassed by the learned Counsel himself.
21. Admittedly Suit No. 1616/90 was filed on May 11, 1990, against CLA Telelinks India (Pvt.) Ltd. on the ground that the defendants floated a company and had got the same registered under and name and style of Grandlay Electrical India (Pvt.) Ltd. and they are using the trade mark "BATRA HENLAY" in relation to their wires and cables under the trade name Grandlay Group. The plaintiffs in order to substantiate the said contention placed on record advertisements in different newspapers, Hindustan Times daily dated May 13, 1990 which shows that the plaintiffs have advertised their goods under the trade name Batra Henlay. They have again advertised their goods under the name and style Batra Henlay in the Hindustan Times daily dated April 19, 1990. Then there is an advertisement in the Sandhya Times dated 8th May, 1990.
22. Besides the above they have also placed on record a rate list under the name and style Batra Cables which is to be effective from August 15, 1989. Then there is a copy of a guarantee booklet where through the defendants have given a guarantee in the sum of Rs. 50 lacs in case of damage to the building, loss of human life etc. This goes to show that the defendants started using the said trade name/trading style since August 15, 1989. Hence the present suit as has been stated above was filed on May 11, 1990. Thus the defendants cannot be permitted to argue that the plaintiffs did not take action at their earliest possible opportunity and instead allowed the defendants to use the said trade mark and trading style.
23. Suit No. 2461/96 was filed on October 3, 1996 against the defendants herein known as Mrs. Vidya Batra, Madhvi Batra and Rajesh Batra. The earlier suit was admittedly filed against CLA Telelinks India Ltd. which was also a company floated by the defendants to carry on their business under the name and style M/s. CLA Telelinks India (Pvt.) Ltd. The said company went into liquidation as is manifest from the statement of Mr. Bikramjit Nayyar, Advocate dated September 26, 1995. It was only then the plaintiffs came to know with regard to the fact that the said company was no more the existence. The orders with regard to the liquidation of the said company were passed by the Company Judge of this Court on November 5, 1992. The fact that the said company had gone into liquidation as far back as on November 5, 1992 must have been within the knowledge of the defendants. However, for the best reasons known to them they did not inform the Court with regard to the said fact. l feel that a duty was cast on the shoulders of the defendants to have apprised this Court of the said fact at the earliest possible opportunity.
24. Surprisingly enough the defendants in reply to the contempt petition dated December 12, 1995 under Order 39, Rule 2A of the CPC filed by the plaintiffs had nowhere stated as to on which date the said company had gone into liquidation and that they had formed a separate firm with such and such persons as partners thereof. Though there is a mention in para A of the reply that the company CLA Telelinks had gone into liquidation, however, neither a copy of the order nor the date was given therein. Similar is the case with the affidavits filed by the defendants in support of the reply. There is no mention in the said affidavit as to on which date CLA Telelinks India Limited went into liquidation. Furthermore, the defendants have nowhere brought to the notice of the Court that after the liquidation of the Company CLA Telelinks they floated a fresh firm under the name and style of Batra Henlay Cables and got the same registered in the year 1992. On the other hand, the defendants have been filing different documents and affidavits in order to show and prove that they were carrying on business under the name and style of M/s. CLA Telelinks India Ltd. It was only through the statement of Mr. Bikramjit Nayyar, Advocate who appeared for and on behalf of the Official Liquidator that this information was furnished to the Court for the first time on September 26, 1995. Thus there is nothing wrong when the plaintiffs contended that they were under the impression that it was only CLA Telelinks which was carrying on business under the name and style of Batra Henlay Cables. The fact with regard to the floating of a new firm under the trade name Batra Henlay Cables came to the knowledge of the plaintiff only after September, 1995. The plaintiff after making enquiry and ascertaining various facts filed the present suit on October 3, 1996.
25. The defendants herein are themselves responsible for bringing about a particular situation inasmuch as they suppressed the factum of the liquidation of CLA Telelinks India Ltd. from the Court as well as the plaintiffs. The said fact was disclosed to the Court only by the Advocate who appeared before this Court on behalf of the Official Liquidator on September 26, 1995. Thus they cannot be permitted to take advantage of the said situation which they themselves brought about and to argue that the plaintiffs are responsible for making mis-representation that the cause of action arose in their favor in June, 1996.
26. The plaintiffs herein are residents of 43, Rajpur Road, Delhi. They are carrying on their business from 127, Nirankari Colony, Delhi. Whereas the defendants herein have been carrying on their business at Grandlay Cinema Complex, New Friends Colony, New Delhi. The location of the firm of the plaintiffs is in the extreme North of Delhi whereas the location of the business premises of the defendants is in the extreme South. Their residences are also in different areas and localities. There would be a distance of near about 25 to 30 kms. in between the business premises of the parties to the suit. The relations in between the parties are strained and they are at daggers drawn. They had been litigating with each other for the last 8 years. Thus it was but natural that plaintiffs took some time to ascertain the correct particulars with regard to the firm Batra Henlay floated by the defendants. Viewed from this aspect also I am of the view that there is no delay on the part of the plaintiffs in bringing forward the present suit.
27. There is another side of the picture. A mere delay on the part of the plaintiffs to bring forward a suit for interdicting the defendants through a permanent injunction is not sufficient enough to defeat an action on the part of the plaintiffs for the grant of a permanent injunction. Delay would be prejudicial to the case of the plaintiff only in those discerning few cases where a prejudice has been shown to have been caused to the defendant on account of the delay. No prejudice has been shown to have been caused to the defendants in the present case.
28. I am supported in my above view by the observations of a learned Single Judge of this Court as reported in
29. Thus I am of the view that there was neither mis-representation nor concealment of material facts nor delay on the part of the plaintiffs to bring forward the present suit.
30. The other point raised by the learned Counsel for the defendants is that the impugned trade mark "BATRA HENLAY" is altogether different and distinct from the trade mark "GRANDLAY". It is neither confusingly nor deceptively similar to the trade mark "GRANDLAY". Thus the plaintiffs have got no right to object to the use of the trade mark "BATRA HENLAY" for and on behalf of the defendants.
31. Learned Counsel for the plaintiffs, on the other hand, has contended that the word "HENLAY" is phonetically and deceptively similar to the trade mark "GRANDLAY". Thus an average person with imperfect memory and recollection would take the one for the other and the similarity of the two trade marks is likely to cause confusion in the mind of the public and they are likely to purchase the goods of the defendants under an impression that they are that of the plaintiffs. Learned Counsel for the plaintiffs has in this connection led me through Section 12 of the Trade & Merchandise Marks Act, 1958. It is in the following words:
"(1) Save as provided in Sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods."
32. It is manifest from above that there is a bar and a complete prohibition for the registration of a trade mark which is identical or deceptively similar to a trade mark already registered with the Registrar of Trade Marks as the same is likely to cause confusion in the mind of the public in regard to that trade mark.
33. With the above back-drop let us now find out as to how far the impugned trade mark "BATRA HENLAY" is similar to and identical with the trade mark of the plaintiffs "GRANDLAY".
34. It is a well-established and well recognised principle of law that in case of an action for infringement of a registered trade mark the Court has to find out only that the said trade mark is registered with the Registrar of Trade Marks and the opposite party is using the said trade mark or a trade mark which is similar to the said trade mark. An action for infringement of a registered trade mark is a statutory right of a party whereas this is not the case in case of an action for passing off. The gist of an action for passing off is dependent on the fact that nobody can be permitted to represent his goods as that of the other.
35. The above view was given vent to by their Lordships of the Supreme Court as reported in
36. The same view was again reiterated in
37. The trade mark of the defendants "HENLAY" is, to my mind, phonetically and deceptively similar to the trade mark "GRANDLAY" inasmuch as the last three letters in the two trade marks are same. Furthermore, there is a striking similarity of the sound in the two trade marks. While deciding the question as to whether the two trade marks are phonetically and deceptively similar, we have to keep in mind that the human memory is very short and fleeting. People with imperfect recollection and weak memory cannot be expected to remember distinctive features of one trade mark distinguishing it from the other. Thus there is every possibility and likelihood that the goods belonging to the defendants may be treated as the goods of the plain- tiffs.
38. Learned Counsel for the defendants has argued that the trade mark which is being used by the defendants is a composite trade mark. Hence nobody would take and treat the goods of the defendants as that of the plaintiffs. In any case, the word "BATRA" is sufficient enough to distinguish the trade mark of the defendants from that of the plaintiffs. The contention of the learned Counsel I feel is devoid of any force. While building up the said argument the learned Counsel is oblivious of the fact that both the parties to the present suit are Batras. The said word cannot be a distinguishing feature of the trade mark of the defendants in order to clothe it with a distinctive trait and personality. The only thing which the Court has to find out on a comparison of the two trade marks is as to whether there is a visual similarity or phonetical similarity in between the trade marks of the plaintiffs and that of the defendants which is likely to cause a confusion in the minds of the unwary public which may lead to confusion in their mind with regard to the identity of the goods and there is likelihood of their considering the goods of the defendants as that of the plaintiffs.
39. Faced with a similar situation the Hon''ble Supreme Court in Ruston & Hornby Ltd., (supra), observed as under (vide para 8): "In the present case the High Court has found that there is a deceptive resemblance between the word "RUSTON" and the word "RUSTAM" and, Therefore, the use of the bare word "RUSTAM" constituted infringement of the plaintiff''s trade mark "RUSTON". The respondent has not brought an appeal against the judgment of the High Court on this point and it is, Therefore, not open to him to challenge that finding. If the respondent''s trade mark is deceptively similar to that of the appellant the fact the word ''INDIA'' is added to the respondent''s trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark."
40. The trade mark "GRANDLAY" as l have already observed above fell to the share of the plaintiffs on the basis of a consent award dated December 5, 1985. They have been using the said trade mark in respect of their electrical goods since December 7, 1985 (vide para 10 of the plaint). The plaintiffs have placed on record a large number of documents to prima facie show and prove that they have been manufacturing and selling electrical goods under the said name. In this connection they have placed carbon companies of the invoices (vide pages 2 to 43) for the period 1986 of 1990. They have also filed the statement of quarter wise grand turnover for the period 1986 to September 30, 1990. They have also placed cuttings from different newspapers with regard to the advertisements during the period from 1986 to 1990. The plaintiffs have also placed on record photocopy of a letter from Luna Electricals, Engineers & Contractors, to M/s. Grandlay Electrical (India), Grandlay Complex, New Friends Colony, Mathura Road, New Delhi, dated November 30, 1990 in order to show and prove that the defendants are carrying on their business under the name and style M/s. Grandlay Electrical (India), Grandlay Complex, New Friends Colony, Mathura Road, New Delhi. The said letter was, however, delivered to the plaintiffs. This goes to show that the trade and business of the defendants can be treated as that of the plaintiffs. The plaintiffs in reply to the said letter clarified that they are not having any office/branch/showroom/godown or agent in Grandlay Complex, New Friends Colony Mathura Road, New Delhi. It shows that the defendants have been using the trade mark "GRANDLAY" even in November, 1990. The defendants have admitted (vide para 16 of their written statement in Suit No. 1616/90) that they have adopted a composite trade mark "BATRA HENLAY" relating to the goods manufactured by them. However, they have not disclosed therein as to since when they are using the trade mark "BATRA HENLAY". Towards close of the said para they have asserted that they are well within their right to use the words "GRANDLAY GROUP" as an epithet or by way of distinctive indicium or as a source mark to denote the source of their emanation. Thus it is clear from above prima facie, that the defendants are using the words "GRANDLAY" as well as "BATRA HENLAY" in connection with their electrical goods. The plaintiffs in this connection have placed on the file certain advertisements given by the defendants in the Hindustan Times daily dated April 19, 1990, May 13, 1990 and in the Sandhya Times dated May 9, 1990. The said advertisements reveal that the defendants are carrying on their trade and business under the name and style of "BATRA HENLAY". They are also using the words "GRANDLAY GROUP" in the said advertisements.
41. The plaintiffs have thus established a prima facie case in their favor against the defendants. In case the injunction is not granted the plaintiffs are likely to suffer an irreparable loss and injury and it would be difficult to compensate them in monetary terms. The defendants on the other hand are not going to suffer any irreparable loss or injury by the grant of injunction inasmuch as they are dealing and carrying on other trades and business e.g., running a cinema. It will be tantamount to simply delay in using the impugned trade mark if they ultimately succeed. In any case the plaintiffs by the institution of these two suits have raised substantial questions which are to be gone into and need investigation. It would be premature to adjudicate upon the rights of the parties at this stage unless the parties have led their evidence in full. I thus feel that the plaintiffs are entitled to an ad interim injunction.
42. Learned Counsel for the defendants, Mr. Bansal, during the course of his arguments has led me through quite a good number of authorities i.e.:
(i)
(ii)
(iii) Kellogg Company Vs. Pravin Kumar Bhandabhai 1996 (16) PTC 187 ;
(iv) In the matter of an application by Fox & Co. (1920) RPC 37.
(v) Coca-Cola Company Vs. William Structures & Sons Ltd. (1968) R.P.C. 231; and
(vi) In the matter of an application by the Pianotist Company Ltd. (1906) RPC 774.
I have very carefully gone through the said authorities, yet l am of the view that they are not applicable to the facts and circumstances of the present case.
43. The two applications are allowed. The defendants, their servants and agents are hereby restrained from using the trade marks and trade names "GRANDLAY CABLES", "BATRA HENLAY", "HENLAY CABLES" and "GRANDLAY GROUP" directly or indirectly in connection with electrical goods i.e., wires and cables, under the said trade marks or trade names or any other trade mark which is identical or deceptively similar to the said trade names and trade marks till the disposal of the suits.
