TMI Blog1991 (1) TMI 443X X X X Extracts X X X X X X X X Extracts X X X X ..... use the said name as a prior adopter of the said design . It is also asserted that in view of the established business and sale promotion and extensive and continuous regular commercial user, the said trade mark Hidesign had acquired secondary meaning with regard to the goods of the plaintiff, and has earned a valuable good-will and enviable reputation. This plea does not seem to be applicable as the concept of secondary meaning comes into play when the primary meaning is different. As the word combination Hidesign is not a word found in English dictionary, secondary meaning concept is inapplicable. (3) The plaintiff asserts that in April, 1980, she became aware that the defendants are manufacturing and selling the same goods or description of goods as that of the plaintiff, under the same or deceptively similar trade mark HIDESIGN. (4) It is also asserted, in the plaint that the defendants were unaware of the constitution of M/s. HI-DESIGN Creations, which is a firm carrying on business at Delhi. (5) The plaintiff, Therefore, sought an interim injunction, restraining the defendants from passing off their goods under the offending trade mark HIDESIGN. The plaintiff in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sband of Ms. Pampa Kapoor. It is the Pampa Kapoor and Dilip Kapoor, her son, who are carrying on the business at and from Pondicherry, and selling their leather goods under the name HIDESIGN. (13) It is also the case of the plaintiff that Bunty Kaiker defendant who is carrying on business as HI-DESIGN Creations from 6A, Yashwant Place, Chanakyapuri, New Delhi, approached the plaintiff in 1986-87, saying that he wished to sell the goods manufactured by the plaintiff at Delhi. The plaintiff, it is not disputed by the defendant, sold the goods to the defendant up till 1987, but owing to some disputes, the transactions between the parties were stopped thereafter. (14) It is further the case of the plaintiff that it came to known in about April, 1990 that Bunty Kaiker is manufacturing and selling same goods as the plaintiff, in the name of HI-DESIGN Creations, which he could not do in view of the fact that the plaintiff was the sole person entitled to carry on the business in the name of HI-DESIGN CREATIONS. (15) The counsel for the plaintiff also dealt with the contention of the counsel for the defendant, that the word Hidesign is an abandoned mark, by saying that this is a me ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the facts were that the plaintiff company was carrying on business in New York, of manufacturers of numbering machines . In 1910 they entered into an agreement with the defendant for sale of the plaintiffs' machine in the U.K. The relationship was not of agency in the strict sense. Under the agreement, the defendant purchased the machine from plaintiff company and paid for them according to terms. Defendant carried on business in such machines under the same name as plaintiffs. The machines also bore the name of the plaintiff company. After termination of the agreement in 1933 the defendant continued to carry on business under the name and claimed the right to do so. plaintiff then brought an action- for passing off to restrain the defendant from using the name and also for breach of contract. They alleged that it was a term of agreement that the defendant should not deal in such numbering machines or be interested in the business of any competitor of plaintiff company. Defendant contended that the plaintiff carried on no business in the U.K. and the name meant his business. He pointed out that since 1917 he had continued to be registered under the Registration of Business Na ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... upra), he did not have any legal right to continue to use the unique name Hidesign in connection with his trading style or goods sold on his trading outlet. The counsel for the plaintiff also referred to 1978 Del 250, which deals with the right of the prior user of any name to continue to use the name, and to restrain any subsequent user thereof. It is not disputed by the defendant in the instant case that the plaintiffs are prior user of the word Hidesign in connection with their business. In fact, the case of the defendant that he started the business under the name Hidesign Creations only in February, 1986, and be stopped buying goods from the plaintiff in the year 1987. There is no serious dispute regarding the plaintiff being a prior user of the word Hidesign in connection with his trade. (24) It is note worthy that in the instant case, we do not have to deal with the concept of deceptive similarity as the instant case is one of identity, namely, Hidesign And Hidesign Creations. Hidesign being the mark placed by the plaintiff upon its goods, and Hidesign Creations being the trading style of the defendant. Since the mark Hidesign relates to the garments, the word 'CREATI ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ding style of the defendant, and that the plaintiff has made out a new case in the replication regarding the nature of the dealings between the parties, and ought not to be, Therefore read in support of the injunction. (29) In answer to the contentions, counsel referred to section 106 of the Trade Merchandise Marks Act. He submits that it is the requirement of that. section that the defendant must be unaware of the fact that the marks which he is using, are being used by the plaintiff. In the instant case, the defendant was purchasing goods from the plaintiff, and he was aware that the plaintiff was selling its goods under the mark HIDESIGN. In my view, the defendant has all along been aware, in view of his dealings with the plaintiff, that the mark Hidesign belongs to them. It is not open to him to contend that merely because the fact of these dealings are not mentioned in the plaint, the plaintiff is estopped from mentioning the same in the replication. As I see it, no possible prejudice has been caused to the defendant in non-disclosure of the fact of prior dealings between the parties in the plaint, as the defendant has all along been aware of the same. In any case, having ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 22 (Yost Typewriter Company, Ld. v. Typewriter Exchange Company), (in which the delay in filing of the suit was of five years). Mr. Gulati has also cited 1941 Mad 31 (Messrs Devidoss and Co. v. Alathur Abboyee Chetty and Co), in which it was established that the plaintiff had the knowledge of the defendant's use of the impugned mark on 18.4.1931, yet the suit was filed after expiry of more than 4 years on 27.7.1935. In the last cited case, the High Court of Madras dealing with the question of delay, held that no hard and fast rule can be made with regard to the effect of delay. It is on fact of each case that the decision of the Court to grant or not to grant, injunction must depend. (35) In the instant case, the alleged delay is slightly under three years. In 1923 Rpc 133, there was no prior relationship of buyer and seller between the parties, inter se, the delay is of 8 years. For such a delay, it may be possible to contend, that in case of passing off action, such a long delay of 8 years may amount to acquiescence. (36) I do not think that the same principle would apply to a case of passing off, like the present, when admittedly the facts are that the defendant was de ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... th. If, however, a person allows another person who is acting in good faith to build up a reputation under a trade name or mark to which the first person has rights, he may lose his right to bring proceedings for infringement or passing off in respect of the use of the mark by the other person, and may even be debarred from himself using a trade name. On the other hand even long user by another, it fraudulent, does not affect the plaintiff's right to a final injunction . 38. The said paragraph states that when the delay is of not inordinate length, would not deprive the registered proprietor of his statutory rights. One of the cases mentioned in the foot-note is the case of Electrolux Ltd. v. Electrix Ltd., (1954) 71 Rpc 23. This case related to a registered trade mark . The contention that ten years' delay has the effect of destroying the statutory rights to the exclusive monopoly, was rejected by Lord Evershed M.R. The instant case, however, relates to an unregistered mark. (39) The observations in that case relate to registered proprietor of a trade name or a trade mark. That case did not relate to common law passing off action. (40) The other observation in th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e purposes of building up a reputation in the defendant's goods. It is only when the plaintiff sits idly. by, while the defendant spends a great deal of time, effort money in building up of a trade in the goods in the impugned name, to which the plaintiff claims exclusive right, can a contention of acquiescence be raised. For example in the case of Vine Products Limited Others v. Mackenzie Company Limited Others, (1969) Rpc 1. Sherry had been sold in England for over 100 years. The growers of Sherry in Spain in a town called Jerez, from (which the word Sherry originated), were denied an injunction, which the Spanish had sought. (44) Mr. S.C. Gulati has cited the case reported as 1923 Rpc 133 under some misapprehension. That case related to selling of tooth-brushes, which bore the term Prophylactic thereon, and marketing them in a get-up which was of a particular nature. The Court, as a fact, found that the get-up was common to the trade of tooth brushes, and that the word Prophylactic was also common to the trade. There is no material on record of this suit which can support such averment regarding Hidesign having become common to the trade in leather garment ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g pens, and pencils, pen sharpeners, fountain pens erasers, pin clips and staples included in class 16. The plaintiff also got it registered for pencils all kinds, erasers, refills for propelling pens and pencils, pencil sharpeners, pens, fountain pens, pins, clips, wire staples for stapling presses and pins. (49) The defendants in that case, were making pins. The defendants in that case, had obtained copyright registration for a label with a dancing figure with respect to pins. (50) It is stated in the judgment, that in June, 1985, the plaintiff had applied for rectification of copyright, and the suit for injunction was filed in 1988. Inasmuch as the knowledge of the plaintiff was clearly there in the month of June, 1985, when they sought rectification of the copyright registration, and the suit was filed in 1988, it was contended by the defendant that there was inordinate delay on the part of the plaintiff in filing the suit. It was 'contended by the defendant they had been advertising their pins since the year 1982, and, Therefore, the delay was of six years. A. large number of English and American cases including Trade-marks and Unfair Competition by J. Thomas McCar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... clusive use of their name, and mark HIDESIGN. (56) There is one more matter, which I need to deal with, which is the contention of Mr. S.C. Gulati that the plaintiffs have not complied with Order 39 Rule 3 of the Code of Civil Procedure, and on that account, injunction has to be vacated. He asserts that the order of injunction was issued on 3.8 1990 the process-fee for issuing notices was filed on 7.8.1990, which was returned under objections, and which was re-filed on 30.8.1990, and the process was issued by the registry on 31.8.1990. and the service was effected on the defendants on 5.9.1990. ' The Local Commissioner went to the premises on 8th August, 1990 at 3.30 P.M. It is contended by Mr. Gulati that the terms of Order 39 Rule 3 requiring the service on the following day , have not bee complied with, (57) As against this, Mr. R.N. Prabhakar contends and replies that 3rd August was Friday, 4th August was Saturday, 5th August was Sunday and 6th August was holiday. The Local Commissioner could only be contacted on 7th August, and the service on the defendant was effected on 8th August of the order dated 3rd August. It is clear from the report of the Local Commissioner ..... X X X X Extracts X X X X X X X X Extracts X X X X
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