TMI Blog1995 (10) TMI 235X X X X Extracts X X X X X X X X Extracts X X X X ..... 4 are the plaintiffs in Civil Suit No. 3 of 1993. The respondents in appeal from Order No. 1153 of 1994 are the plaintiffs in Civil Suit No. 4 of 1993 and the respondents in appeal from Order No. 1154 of 1994 are the plaintiffs in Suit No. 5 of 1993. All these suits have been filed for permanent injunction to restrain the appellants herein from using the word 'Kirloskar' as part of the corporate name of the 1st appellant in each appeal and/or its trading style so as to pass off or enable others to pass off the goods and/or business of 1st appellant in each Appeal as that of the respondents. In each of the said suits restricted to passing off action, the respondents had filed an application for grant of interim injunction. All these applications for grant of interim injunction have been disposed of by the common order dated 14th June, 1994 impugned in these appeals. By the order impugned in these appeals, pending the hearing and final disposal of the said suits, the appellants by themselves, their servants and agents and/or any other person (s) claiming by, under or through them or any of them have been restrained from using the word 'Kirloskar' as part of corporate ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... reputation, quality and goodwill acquired over scores of year. The word 'Kirloskar' forms an important part of the corporate name of the respondents and other companies belonging to 'Kirloskar Group of Companies'. (iii) The 2nd appellant in each appeal was associated with the 'Kirloskar Group of Companies'. Between June, 1983 and August 1985, he was president of the 3rd respondent .During that time, a vigorous campaign for image building of the 'Kirloskar Group of Companies' was carried out. Though the 2nd appellant, who is the promoter of the 1st appellant in each of the appeals, was aware that 'Kirloskar' is a registered trade mark of the 1st respondent and as such could not be used as a part of corporate name of 1st appellant in each of the appeals, promoted the 1st appellant in each Appeal with word 'Kirloskar' as part of the corporate name by suppressing the fact that none of the 1st appellant is a Company belonging to the 'Kirloskar Group of Companies'. (iv) On 28th May, 1992, the 2nd respondent received a letter from DD Penning AD Penning, the Patent Trade Mark Agents, intimating that Kirloskar Holdings Pv ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he recorded or registered holder of Trade Mark or trade name 'Kirloskar' and that the 1st respondent has not acquired proprietary right over the said Trade Mark or the trade name. (ii) That the other respondents have not obtained licences from the 1st respondent to use the Trade Mark or trade name 'Kirloskar'. (iii) Though the appellants admit that there are as many as 27 companies as mentioned in the plaints filed in the suits who have used the name 'Kirloskar' as part of their corporate names, according to the appellants, many of such companies are not the members of the so called 'Kirloskar Group of Companies'. (iv) That the name of the 1st appellant in each appeal has been allotted under the provisions of the Companies Act, 1956 after following the requisite procedure and observing necessary guidelines as per Section 22 thereof and such allotment could have been challenged within a period of one year therefrom which the respondents did not do and as such, the respondents are not entitled to raise an issue in respect thereof at this belated stage. (v) That there is no concept of 'Kirloskar Group of Companies'. (vi) ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s being different and there being dis-similarity in the products of the appellants and those of the respondents, the passing off action instituted by the respondents is untenable and as such, the respondents are not entitled to any relief by way of interim injunction granted by the learned Judge. Mr. Kane has also submitted that the respondents, who are the plaintiffs in the suits, having no common cause of action against the appellants are together not entitled to maintain the said suits and as such, the learned Judge ought not to have granted interim injunction against the appellants. It is further submitted on behalf of the appellants that the 1st respondent is not manufacturing any goods and that the 1st respondent has permitted respondents 2 to 5 to use as licensees the trade marks owned by the 1st respondent on the products manufactured by them and as such, the user of the trade mark 'Kirloskar' by respondents 2 to 7 cannot be considered as 'deemed user' thereof by the 1st respondent and hence in the facts and circumstances of the case, no interim injunction ought to have been granted against the appellants preventing the appellants from having the word 'K ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t); Aktiebolaget Volvo v. Volvo Steels Ltd. (Notice of Motion No. 950 of 1995 in Suit No. 1055 of 1955 decided on 28-4-1995 by Jhunjhunuwala, J. of Bombay High Court); S. M. Chemicals Electronics Ltd. v. M/s. Symtronics (Notice of Motion No. 38 of 1975 in Suit No. 25 of 1975 decided on 7-8-1975 by Rege, J. of Bombay High Court); In the matter of The Pianolist Company Ltd. reported in (1906) 23 RPC 774; In the matter of M/s. R. T. Engineering Electronics Co ., reported in AIR. 1972 Bom157; String fellow v. McCain Foods (GB) Ltd. reported in (1984) RPC 501; M/s. Victory Transport Co. Pvt. Ltd. v. The District Judge, Ghaziabad reported in AIR1981All421 ; sony Kabushiki Kaisha v. Shamrao Maskar reported in AIR1985Bom327 ; In the matter of John Taylor Peddie reported in 61 RPC 31; Parker-Knoll Ltd. Parker-Knoll (Textiles) Ltd. v. Knoll International Britain (Furniture Textiles) Ltd. reported in 1961 RPC 346; Bajaj Electricals Ltd. v. Metals Allied Products. Bombay reported in AIR1988Bom167; Turton v. Turton reported in (1889) 42 Ch. D 128; Parker-Knoll Ltd. v. Knoll International Ltd. reported in 1962 RPC 265; Boswell-Wilkie Circus (Pvt.) Ltd. v. Brian Boswell Circus (P ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a cause of action to file the said suits as framed and filed. Mr. Tulzapurkar has also submitted that requirement of a common field of activity is not found in passing off action more particularly so since the focus is shifted from the external objective test of making comparison of activities of parties to the state of mind of public in deciding whether it will be confused. In the submission of the learned Counsel in the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaken, a passing off action can successfully lie if other person has adopted identical or similar trading name even when such other person does not carry on similar activity. In the submission of Mr. Tulzapurkar, the trade name 'Kirloskar' has become a household word under which variety of activities are undertaken by the respondents and since the appellants have adopted 'Kirloskar' as part of their trade names, action in passing off lies against the appellant even if the appellants may not carry on activities similar to those of the respondents. Even if the appellants' activities are remote, in the submission of the learn ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... riod of more than 50 years. 7. In support of this submission, Mr. Tulzapurkar has put reliance on judgments in cases of :-- (1) M/s. Azim Gadighar v. Abdul Aziz reported in 1987(1)BomCR341 ; (2) K. G. Khosla Compressors Ltd, v. M/s. Khosla Extraktions Ltd ., reported in AIR1986Delhi181 ; (3) Albion Motor Car Company LD. v. Albion Carriage And Motor Body Works LD ., reported in 34 RPC 257; (4) Baume Co. Ltd. v. A. H. Moore, Ltd ., reported in (1958) 2 All E R 113; (5) Bajaj Electricals Ltd. v. Metal Allied Products , reported in AIR1988Bom167 ; (6) Sturtevant Engineering Co. Ltd. v. Sturtevant Mills Co. of USA Ltd ., reported in (1936) 3 All. ER 137; (7) John Haig Coy. LD. v. John D. D. Haig LD ., reported in (1957) 16 RPC 381; (8) Fine Cotton Spinners and Doublers' Association LD. And John Cash Sons LD. v. Harwood Cash Co. LD., reported in 24 RPC 533; (9) Kingston, Miller Co. Ltd. v. Thomas Kingston Co. Ltd., reported in (1912) 1 CD 575; (10) Parker-Knoll Ltd. v. Knoll International Ltd. , reported in 1962 RPC 265; (11) Boswell-Wilkie Circus (Pty.) Ltd. v. Brian Boswell Circus (Pty.) Ltd ., rep ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd Builders Pvt. Ltd., (19) Kirloskar Musical Instruments Pvt. Ltd., (20) Kirloskar Warner Swasey Ltd., (21) Kirloskar Cummins Ltd., (22) Kirloskar Kissan Equipment Ltd., (23) Kirloskar Ferrous Industries Ltd., (24) Kirloskar Services Pvt. Ltd., (25) Kirloskar Kenys Ltd., (26) Kirloskar (Malaysia) D. Bhd. (27) Kirloskar Ghatge Patil Auto Ltd. The word 'Kirloskar' forms an important part of the corporate names of the respondents and other companies belonging to 'Kirloskar' Group of Companies'. The respondents and the other aforesaid companies have been incorporated to carry on diverse business. In respect of the business carried on by the respondents and the other aforesaid companies, their products came to be associated by the consumers and the members of the public exclusively with the 'Kirloskar Group of Companies'. The word 'Kirloskar' was adopted as a trade-mark and has been extensively used in respect of the products manufactured by the companies belonging to 'Kirloskar Group of Companies'. The 1st respondent is the registered proprietor of various trade marks containing the word ' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ture of fodder cutters, which was one of the objects of the 2nd respondent, spread and expanded over a variety of activities entering into market with new products and lately with the business of even providing services of financial consultancy coupled with business of leasing and hire purchase, which business is carried by respondents 6 and 7. The business of 'Kirloskar Diesel Recon Pvt. Ltd., the 1st appellant in appeal No. 1152 of 1995 is similar to the business of respondents 6 and 7. The 2nd respondent carries on business inter alia of manufacturing power driven pumps, valves, hermetic sealed compressors units, machine tools, sugar can crushers, etc. The 3rd respondent carries on business inter alia of manufacturing diesel engines of 3 HP and above, assembling of generating sets in the ranges of 0.5 KVA two 1000 KVA, Bi-metal bearing, engines valves, etc. The 4th respondent carries on business inter alia of manufacturing electric motors, alternators, generators, transformers, are welding and resistance welding equipments, micro and mini computers, etc. Respondent No. 5 carries on business inter alia of manufacturing air and gas compressors of all types and ranges including ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ination thereof. The term 'trade mark' is defined in Section 2(v) of the Act as under: trade mark means- (i) in relation to Chapter X (other than Section 81), a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and (ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII; The very definition of 'trade mark' includes 'mark' and the very definition of 'mark' includes 'name' and as such, the term 'trade mark' in Section 105(c) of the Act must, therefore, be considered to be a comprehensive term including within itself 'trade na ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ndents' delay in filing the action would not disentitle the respondents to the reliefs and it would be right to grant rather than to withhold interlocutory injunction prayed for. In my view, the respondents have made out a very strong prima facie case for grant of interlocutory relief and in the circumstances, I hold that delay, if any, on the part of the respondents in filing the suits docs not disentitle the respondents to interlocutory relief nor it amounts to consent, waiver or acquiescence on the part of the respondents nor even estoppel so as to disentitle the relief of grant of interlocutory relief to the respondents. Moreover, as held by the Delhi High Court in the case of Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. AIR1990Delhi19 (supra) even where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because the interest of the general public, which is the third party in such cases, has to be kept in mind. Since in my view, in the facts of the case, prejudice is likely to be caused to the general publi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hers to use the word 'Kirloskar' as a part of the trading name or trading style. By grant of the interim injunction in favour of the Respondents, the Appellants are not prevented from carrying on business without the word 'Kirloskar' forming part of the corporate name of the 1st Appellant in each Appeal. In the facts of the case, the Respondents' reputation is likely to be adversely affected if the Appellants are not prevented from using the word 'Kirloskar' as part of the corporate names of the 1st Appellant in each appeal. In the facts of the case, the balance of convenience is not in favour of the Appellants. 12. This takes me to the controversy pertaining to 'common field of activity' and also to the question that if the fields of activities are different and the goods manufactured by the Respondents are different than those manufactured by the Appellants, whether the Respondents are entitled to interim injunction in passing off action. Mr. Kane has submitted that since there is no common field of activity between the Appellants and the Respondents and the goods manufactured or the services rendered by the Appellants being different than t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iff; (iii) the defendant is in fact using the plaintiffs trade mark or any mark deceptively similar to the registered mark of the plaintiff; and (iv) the field of activity of the plaintiff and the defendant are similar or almost similar. Mr. Kane also relied upon the case of Aktiebolaget Volvo v. Volvo Steels Ltd. (supra), a case of passing off action where the plaintiffs therein sought to restraining the defendants therein from using the word 'Volvo' or any other deceptively similar word as part of the corporate name and/or trading style of the defendants so as to pass off the defendants' goods and/or business as that of the plaintiffs. On the facts of that case, it was held that the plaintiffs did not enjoy any reputation in the Indian market and the sales of the plaintiff's product in India were absolutely insignificant. It was further held that the activities and products of the plaintiffs in the defendants being different and distinct, there was no question of the defendants passing off their products as the products of the plaintiffs and there was no likelihood of deception and/or confusion amongst the traders and/or customers. Mr. Kane has further relied upon ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... de, but the list is not exhaustive and there will be several other circumstances which are required to be taken into consideration in combination before recording a conclusion as to whether there is likelihood of deception or confusion by use of the mark. In the facts of that case, it was further held that the registration of mark 'SONY' in respect of 'Nail Polish' sought by the respondents therein was not likely to cause confusion or deception in the minds of the customers of electronic goods like Television, Recorders and Transistors manufactured by the petitioners therein under the mark 'SONY', the electronics goods and nail polish being items poles apart looking to the nature and purpose of their use. 13. The expression 'common field of activity' was coined by Wynne-Parry J. in McCulloch v. Levis A. May (Product Distributors) Ltd. popularly known as 'Uncle Mac' case reported in 65 RPC 58 in which he held that its presence or absence was conclusive in determining whether or not there was passing off. However, the requirement that a 'common field of activity' is conclusive in determining whether there can be passing off has been ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are remote, the same are likely to be presumed a possible extension of plaintiff's business or activities. In the instant case, the Respondents have established that word 'Kirloskar' has become a household word and their businesses cover variety of activities and that there is even a common connection with some activities of the Respondents and activities of the Appellants. In the case of Albion Motor Car Company Ltd. v. Albion Carriage and Motor Body Works Ltd. 34 RPC 257 (supra) on which reliance has been placed by Mr. Tulzapurkar, it has been held that the Defendant Company's business had not been proved to be the same class of business as that of the Plaintiff Company, yet the probability of confusion between the two companies, both being connected with the motor car industry, was proved and injunction was granted. In that case, the Plaintiff Company carried business in a large way as makers of engines and chassis of commercial and other motor-cars, their goods being identified and known to the trade by the name 'Albion' for which they had two Trade Marks. The defendants did not make motor cars or manufacture engines or chassis. In the action, the plaint ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion and in want of proofs establishing common reputation the Respondent are not entitled to the equitable relief of injunction, I find no merit in the submission made. Indeed, in a variety of circumstances reputation and goodwill in a name, mark or get up may be shared or divided amongst a number of different people. Where good will is shared, plaintiffs may bring proceedings jointly, separately or in a representative capacity. In the case of K. G. Khosla Compressors Ltd. v. M/s. Khosla Extraktions Ltd. AIR1986Delhi181 (supra), the Delhi High Court has held that passing off action need not merely relate to the goods but it relates to name also. I agree with the ratio of the said Judgment. Prima facie, I am satisfied when reference is made to 'Kirloskar' in business circles it is referred to the Respondents and the words 'Kirloskar Group of Companies' again refer to the companies of the group of the Respondents. Nothing has been brought on record to show that the Appellants belong or could belong to 'Kirloskar Group of Companies'. In the facts of the case, to me there appears to be no reason why the names of the 1st Appellant in ' each appeal should be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n if it does not cause anything more than confusion. Same view has been expressed by Delhi High Court in the cases of: (i) Bhandari Homeopathies Laboratories v. L. R. Bhandari (Homeopathies) Pvt. Ltd. 1978 Tax LR 1382 (Delhi) (supra); (ii) KG Khosla Compressors Ltd. v. M/s. Khosla Extraktions Ltd. AIR 19S6 Delhi 181 (supra); and (iii) Sarabhai International Ltd. v. Sara Exports International AIR 1988 Delhi 134 (supra). In the case of The North Cheshire and Manchester Brewery Co. Ltd. v. The Manchester Brewery Co. Ltd. 1899 AC 83 (supra), the House of Lords has also taken the same view and held that since the name of the appellant company was calculated to deceive, the appellants must therefore be restrained by injunction in the usual way. In the case of Ewing v. Buttercup Margarine Co. Ltd. 1917 (2) Ch 1 (supra), the Court of Appeal has held that the Court has jurisdiction to restrain a defendant from using a trade name colourably resembling that of the plaintiff if the defendant's trade name, though innocently adopted, is calculated to deceive either (a) by diverting customers from the plaintiff to the defendant, or (b) by occasioning a conclusion between the two businesse ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s Allied Products, Bombay AIR1988Bom167 (supra) the Division Bench of our Court has while granting injunction put reliance on Parker-Knoll's case decided by House of Lords wherein Lord Morris while opening the speech, observed (at p. 170 of AIR) :-- In the interests of fair trading and in the interests of all who may wish to buy or to sell goods the law recognises that certain limitations upon freedom of action are necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straightforward principle that trading must not only be honest but must not even unintentionally be unfair. 18. In passing off action, the plaintiff is not required to establish fraudulent intention on the part of the defendant and as such, it was not necessary for the respondents to establish fraudulent intention on the part of the appellants in incorporating the word 'Kirloskar' as part of corporate names of 1st appellant in each of the appeals. It was even not necessary for the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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