TMI Blog1997 (8) TMI 530X X X X Extracts X X X X X X X X Extracts X X X X ..... e defendant to manufacture and sell its product under the name, style and trade mark Praveen Cleanzo with the rider that they will not right the word Cleanzo in isolation or in conjunction with 'Praveen' in an Oval Shape or in other shape, which may be deceptively similar to the manner in which the plaintiff is writing its trade mark. Defendant's appeal is against that part of the order which has restrained it from manufacturing, selling and offering for sale or dealing with or selling their product under the trade mark Cleanzo or any other mark or marks similar to the plaintiff's registered trade mark CLEANZO. (3) Learned counsel for the parties were heard and suit record has been perused. (4) plaintifF'S case is on the allegations that it is a leading manufacturer of Cleansing agents, detergents etc. and is proprietor of the trade mark CLEANZO. The same is registered in Class 3 under No.335807 under the Trade and Merchandise Act, 1958, (hereinafter referred to as 'the Act') which is renewed up to 20th April, 1989. It is alleged that the plaintiff and its predecessors in interest had been using the trade mark Cleanzo since 1947. plaintiff also cla ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d a petition has already been filed by the defendant for removal of the said entry from the register of trade marks. plaintiff's title to sue the defendant is under challenge on the ground that the goods of the plaintiff falls in Class (3) of the Fourth Schedule of the Trade and Merchandise Rules, 1959 whereas defendant's goods fall in Class 5 of the Fourth Schedule of the same Rules and on account of pendency of its petition being Co 11/90 the plaintiff's suit is liable to be stayed under the provisions of Section 111 of the Act. (8) Learned Single Judge negatived the defendant's preliminary objection that because of the pendency of petition (CO 11/90) filed by the defendant for removal of the entry of the plaintiff from the register of trade marks, no interim injunction could be granted. It was held that civil court continues to have jurisdiction to pass interim interlocutory order on the application of the plaintiff in terms of sub-section (5) of Section 111 of the Act. Learned Single Judge also found the plaintiff admittedly to be the registered user of trade mark Cleanzo, which registration in part A is valid up to 20.4.1999. Comparing the label of the plain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... le Judge, the defendant had discontinued use of the word Cleanzo and had come up with a new label. For the new label also the plaintiff had moved an application under Order 39 Rules 1 2 of the Code (i.e. is 2119/96) which was rejected, as such, the relief claimed by the plaintiff in its appeal cannot be granted in as much as the order passed in is 2119/96 has remained unchallenged by the plaintiff. It was also contended that the plaintiff at the most had registration for the mark Cleanzo and not for the colour scheme, get up, lay out and arrangement of features, as depicted in the labels for which no injunction could have been granted in its favor as a matter of right. plaintiff's entire case was based upon mis-representation. In the criminal complaint the plaintiff had alleged that that it had been using the mark for the last fifteen years whereas longer user is claimed in the suit. It was argued that the defendant's trade mark Parveen Cleanzo with Parveen as suffix was sufficient to distinguish its product. Therefore, there was no deception or confusion in the mark. It was also urged that pendency of petition for rectification was sufficient for stay of the suit for whi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... retion. In the light of the above settled proposition of law that the appeals as preferred by the parties under Order 43 Rule 1 of the Code of Civil Procedure will have to be dealt with and decided. (12) Trade mark Cleanzo is alleged to have been adopted in 1947 by Kedar Nath Malhotra. The mark was registered as a trade mark No.131595 in Class 3 dated 14.11.1947 for cleaning agents. The trade mark is alleged to have been acquired by Metropol Corporation, partnership firm in the year 1958. In 1975 the plaintiff Company is alleged to have been formed and taken over all its assets and liabilities. Registration of the earlier trade mark lapsed and in 1978 a fresh registration was sought, which was allowed by trade mark No.335807 on 20.4.1978 in Class 3 in respect of cleaning preparations and cleaning agents for the word CLEANZO. This trade mark in plaintiff's favor stands renewed up to the year 1999. These facts are borne on record on the basis of material, which have remained unrebutted. The plaintiff is shown to have advertised its product in Hindustan Times of 26.9.1958 for the trade mark Cleanzo and is also shown to have marketed the product through various invoices from 195 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it is stated that the plaintiff has been using the label for 15 years. Such a statement has to be seen in the light of the fact that the copyright was registered in 1974. It is explained that the whole purpose of using the term 15 years before the D.C.P. Crimes was that the copyright of the plaintiff gained statutory recognition only in 1975 and it had been in force only for the last 15 years at the time of filing of the complaint before the D.C.P. (Crime). (14) Trade mark Cleanzo was registered in the name of the plaintiff's predecessor in 1949, which is evident from the extract from the trade mark Journal No.65 at Page 1726. Application for registration was filed on 14.11.1947. Registration was wide enough to cover cleaning, polishing and abrasive preparations. (15) The contention of the learned counsel for the defendant that inspection of the entire original record was not given by the plaintiff despite directions of the learned Single Judge is also not substantiated from record. Record does suggest that inspection was given by the plaintiff to the defendant of all bill books in original from 1960 onwards. According to the plaintiff, the bill Books prior to 1960 were n ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ning agents. In Class 3 item No.C-1111 refers to cleaning parquet floors (preparations for) and Item C-1117 refers to cleaning preparations whereas defendant's goods, according to the stand taken by it falls in Class 5 i.e. deodorant. The contention was that the defendant's goods are different and do not fall in the same Class and are not under the same description. What is the effect of such registration of cleaning preparation and cleaning agents in Class 3, when according to the defendant its goods do not fall in Class 3 but in Class 5 as deodorant? This argument on behalf of the defendant does not appear to be of much substance, in as much as, the classification of goods is irrelevant for determining similarity of goods. Defendant has described its goods as Naphtha Deodorant cleaner. Such goods are nothing but cleaning preparations and cleaning agents, which would be clear and evident from the description given by defendant on its container, the broad features of which are: i) beneath word Cleanzo, the defendant described as a marvelous cleaner; ii) the product underneath the trade mark, is again described as a marvelous cleaner; (iii) It is also described as : leaves ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion for deceit, i.e., passing off by a person of his own goods as those of another. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but it is the sine qua non in an action for infringement. The suit brought out by the plaintiff complains both, namely, invasion of statutory rights under Section 21 of the Act in respect of registered trade mark and also of passing off by the use of same mark. The Supreme Court in Kaviraj Pandit Durga Dutt's case observed: THE other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under S.21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favor of the appellant to which the learn ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... urther evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. (23) When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be in the course of trade , the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of likelihood of confusion or deception arising from similarity of marks both in infringement and passing off actions. (25) Learned Single Judge applying the test to determine as to when a trade mark is deceptively similar to another as held in Parley Products (P) Ltd. v. J.P. Co. Mysore, [1972]3SCR289 , on the basis of the material on record, held that the mark and label of defendant bear such a similarity to the registered mark and label of the plaintiff that it is likely to mislead the consumer to accept good of the one as of the other, if offered to him. Therefore, in the light of the material on record and the ratio of the three decisions aforementioned learned Single Judge was right in granting the injunction as prayed for to the extent it was granted. (26) However, learned Single Judge was not justified in giving a clarification that defendant was entitled to trade its product under the trade mark Praveen Cleanzo. The use of the very word Cleanzo whether with pre-fix Praveen or otherwise definitely is likely to have an effect of creating confusion in relation to cleansing goods and is also likely to deceive the purchasers of the goods. The very act of the defendant ..... X X X X Extracts X X X X X X X X Extracts X X X X
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