TMI Blog1977 (4) TMI 177X X X X Extracts X X X X X X X X Extracts X X X X ..... t No. 2 is the proprietor of respondent No. 1. Respondent No. 3 is a processor who is supplied unbleached textiles, including voiles, by manufacturers for being processed, dyed and printed with marks which are ultimately marketed by the manufacturers. (3) The appellant's case is that it is manufacturing voiles and from the year 1973 up to the end of 1975 got the same processed by respondent No. 3. Thereafter it is getting goods manufactured by it processed from another party. It is claimed that the appellant directed respondent No. 3 after processing to put the trade mark in question on its voiles and respondent No. 3 complied with that direction. From 1976 the appellant gave this processing work to another party and is getting the same trade mark placed n its goods. However, in the middle of 1976 it came to know that respondents 1 and 2 arc using the identical mark for voiles manufactured by it by getting it processed from respondent No. 3. (4) The respondents' case is that the said trade mark is a mark developed by and belongs to respondent No. 3. It is a processor's mark which it used to previously affix on the voiles processed by it for the appellant but is no ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s RAJARANI or King and Queen . (8) In granting or not granting ad interim injunction, it is settled law. three factors have to be kept in view, namely, the establishment of a prima facie case, the balance of convenience between the parties and whether if the interim injunction is not issued it will cause irreparable injury to the applicant. (9) The prima facie case in favor of the appellant stands established by admitted user of the mark by the appellant on voiles produced and marketed by it. It has been rightly so held even by the learned Single Judge. But this prima facie case made out by the appellant is said to be considerably watered down or weakened by the fact that the mark is alleged to be common to the trade and the various registrations adverted to in the learned Single Judge's order. The first point, therefore, that arises for consideration is whether this approach is correct. It must be remembered that the suit is one based on a claim of passing off. It is not a suit for infringement of a registered trade-mark. In a passing off action registration of the trade mark is immaterial. Section 27 of the Trade and Merchandise Marks Act; 1958, hereinafter referred ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... atter, i.e. Malhotras got their mark Kismat (word per se) registered with the Registrar of Trade Marks in December, 1967. In December, 1969 Ropis made an application for registration of their trade mark KISMAT. This application was advertised in the trade mark journal in November, 1970. In February, 1971 Malhotras filed an opposition. Ropis had sought registration of a label mark of which the word Kismat was the dominant part claiming that 'they were using the label mark Kismat since 1963. The Assistant Registrar held that Ropis were prior users of the trade mark KISMAT. In April, 1971 Ropis made an application for rectification of the register under Section 56(2) of the Act vis-a-vis the registration granted to Malhotras. That is how the matter came before Avadh Behari, J. He observed :- NOWit will appear that Ropis were first in the field. Their user dates back to April 1, 1963. But they are later in registration. Malhotras were the first to get their trade mark registered. In other words Ropis were prior in use and anterior in Registration while Malhotras were prior in registration but posterior in use. Who has got a better right of the two. That is the question. INt ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... emark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with instent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade-mark is the test rather than the extent or duration of the use. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods. . (13) The Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., laid down the rule vis-a-vis user of a mark as opposed to registration of mark. It observed that the onus of proving user is on the person who claims it. It did not approve of looking into the register of trade marks where a mark may be entered to be any proof of user. To quote from the speech of A.K. Sarkar, J. : Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... so of alleged passing off. (18) It was next contended that a passing off action is an action in deceit and the appellant had to prove that either there has been actual passing off or the use of the mark by the respondents has actually caused confusion or damage to the appellant. This proposition also, in our opinion, cannot be accepted. As was held in T. Oertli AG's case, referred to above :- WEemphasise that this appeal is concerned solely with passing off and not with the infringement of Trade Mark or Patent rights. It is, of course, essential to the success of any claim in respect of passing off based on the use of a given mark or get up that the plaintiff should be able to show that the disputed mark or get up has become by user in this country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff or that mark or get up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff's goods. The gist of the action is that the plaintiff, by using and making known the mark or get up in relation to his goods, and thus causing it to be associated or identified wi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Sukndayal and others, I.L.R. 1974 (1) Delhi 545(7). (20) Mr. Anoop Singh, learned counsel for the respondents has relied on Prina Chemical Works, case, referred to above, to contend that a pirated mark cannot be protected. His contention is that in view of the appellant and, perhaps also respondent No. 3, having pirated the mark RAJARANI from the proprietors of the same registered trade mark, namely, M/s. Karam Setty Venkataratnam of Chirala, Andhra Pradesh and Raj Mal Pahar Chand of Amritsar, the appellant cannot claim protection of this court. The reliance by the learned counsel on Prina Chemical Works' case is misplaced. In that case as a matter of fact it was found that the plaintiff was not the proprietor of the mark but someone else. In the present case relying on the observations of Avadh Behari, J. in the case of M/s. L. D. Malhotra Industries, v. M/s. Ropi Industries, I.L.R. 1976 (1) Delhi 278(1), we are of the opinion that the appellant has made out a case which requires consideration. In any case even on the evidence on record till now the registration in favor of M/s. Karam Setty Venkataratnam of Chirala, Andhra Pradesh, is restricted to Andhra Pradesh whereas ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d that there is nothing on the record to show that any loss has been occasioned to the appellant and, in any case, the respondents can be ordered to keep accounts. We do not agree. The irreparable injury would be the likely confusion that may be caused if respondents arc allowed to use the mark which we have held prima facie as being the mark of the appellant. It will take some time before the suit is decided. If the respondents are not restrained by means of an interim injunction they would continue to market their goods with the offending mark. That ultimately might be held to be long user and the ultimate relief of permanent injunction may be refused on the plea of common or concurrent user. At the moment no plea of common or concurrent user has been raised by the respondents but there is nothing to prevent them from doing so in future if they are allowed to use the trade mark for the duration of the pendency of the suit. The likelihood of confusion being caused and the likelihood of the plea of common or concurrent user being raised by a later stage would be the irreparable injury to the appellant. (23) We, therefore, accept this appeal, reverse the judgment of the learned S ..... X X X X Extracts X X X X X X X X Extracts X X X X
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