TMI Blog1985 (11) TMI 239X X X X Extracts X X X X X X X X Extracts X X X X ..... prietor 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 Chap. VIII; A 'mark' is also defined in the Act in Section 2(j) which reads as under: (j) mark includes a device, brand, heading, label, ticket, name, signature, word, letter of numeral or any combination thereof; A name is defined in Section 2(k) which reads as under: (k) name includes any abbreviation of a name. 3. It is not asserted by the Plaintiff in this suit that Super flame is a registered trade mark . SUPERFLAME not being a registered trade mark, the instant suit cannot be an infringement action, and it is conceded to be a passing off action. 4. A distinction between an infringement action and a passing off action is statutory by virtue of the provisions of Section 27 of the Act. Section 27(1) of the Act prohibits institution of any proceedings to prevent or to recover damages for infringement of an unregistered trade mark. 5. Sub-section (2) of Section 27 declares that nothing in the Act shall be deemed to affect the rights of action ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... RFLAME has acquired a secondary signification in the trade and amongst the parties with the public and that there is extensive advertisement of SUPERFLAME in various media such as radio, television, newspapers, magazines, public hoardings etc. It is also asserted in the plaint that use of SUPERFLAME by any rival trader as a part of its name or in relation to its goods is likely to lead to confusion and deception and result in passing off such traders' business and goods as the business and goods of the plaintiff. 11. It is asserted that Blue Superflame Industries, the Defendant 1, and Ganga Ram, Defendant 2, who is alleged to be a partner of Defendant 1/and/or a sole proprietor have recently started manufacturing and selling gas appliances under the trade mark and/or house mark SUPERFLAME and that they have also kept Blue Superflame Industries as their trading style of which the word SUPERFLAME is an essential key and conspicuous portion and has also placed SUPERFLAME at various places upon its goods and/are advertising such goods under their trade name/trade mark SUPERFLAME. It is asserted in the plaint that Defendant 2 was earlier working as a Contractor for the Plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... appliances being SUNFLAME, HOT FLAME, FLAMELINE etc. and that SUPER and HOT are distinct from each other. It is asserted that the plaintiff's trade name Globe Super Parts, and the Defendant's trade name Blue superflame Industries are absolutely different and distinctive and one cannot be confused with the other. It is also asserted that superflame comprises of two commonly known English words and monopoly or exclusive rights cannot be claimed over it; that the word SUPER is laudatory and is (sic) incapable of distinguishing . It is also that the Plaintiff did not have any right much less exclusive right to use the words SUPER and FLAME. The objection is also taken in the preliminary objections to the valuation the suit, which is stated to be not an accordance with the Suits Valuation Act and that inadequate Court-fees has been paid. It is stated the suit is based on a false agreement of a connection between Ganga Ram Verma and Defendant 1; that the suit has been filed because of trade rivalry and that the suit suffers from delay, laches and acquiescence. It is also contended that the suit has not been instituted, in a Court of the lowest grade in accordance with Section 1 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d and are of superior and standard quality: that not a single incident of confusion has been recorded. It is denied that use of SUPERFLAME, as a part of trade name, is likely to lead to passing of Defendants' goods as those of the plaintiff. It is denied that the goods of Defendants have been advertised under the trade mark BLUE SUPERFLAME INDUSTRIES. The suit is described by the Defendants as false, frivolous, vexatious and misconceived, 15. In the replication, the pleas taken in the written statement are traversed and it is specifically, asserted that the trade mark SUPERFLAME has been incorporated as an integral and key part of the firm name of the Defendant. It is asserted that the Plaintiff is not seeking a monopoly in the use of the word FLAME that there could be no objections to Defendants' use of the word HOT FLAME as a part of its firm name such as Blue Hot Flame Industries. But the Defendant's use of SUPERFLAME in the firm name shows the fraudulent and mala fide state of mind. It is further stated that SUPERFLAME is a coined fancy expression. 16. On the pleadings of the parties, the following issues were framed on 14th Jan. 1984: 1. Whether Shri Rahul ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... been divided into two parts by the Defendant. 22. The Defendant relies upon AIR 197l SC 198 Saheb Ram v. Financial Comm(sic) and says that a legal plea can be raised at any time and that no formal issue regarding thereto need to be framed. This authority is cited in support of a contention which has been raised that the suit is not maintainable. 23. The reason why the above contention has been made is because the Plaintiff was described thus: Globe Super Parts (Sole proprietor Super Parts Pvt. Ltd.), 17/1, Mathura Road, Faridabad (Haryana) . Because of the fact that the name Super Parts Pvt. Ltd., has given within brackets, it is urged by Mr. Aggarwal that the real Plaintiff is not Super Parts Pvt. Ltd., but Globe Super Parts. 24. Mr. Aggarwal urges the above contention because evidence has been recorded in this case to the effect, that Globe Super Parts was the partnership concern. After a while the firm Globe Super Parts was reconstituted, and at the time of reconstitution Super Parts Pvt. Ltd., a company incorporated under the Companies Act, was made one of its partners; that thereafter the partnership Globe Super Parts was dissolved and all its business and assets was ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Parts as Globe Super Parts had acquired a name and reputation over the years with people who used to trade with them. All the letter heads, which are to be found on record of this case relating to Super Parts Pvt. Ltd., contain both the names. Globe Super Parts and Super Parts Pvt. Ltd. Super Parts Pvt. Ltd. have, therefore, continued to hold out and rely upon the connection between Super Parts Pvt. Ltd., and Globe Super Parts, which is historical qua them. 26. The meaning and effect of 'Brackets' in the English language, are found in Webster International Dictionary at Page 265 which says that what is placed within the Brackets is put in the same class , or in other words what is contained within the Brackets is equated to the word that proceeds the Brackets. In The Family Word Finder Bracket is stated to mean to group and in Shorter Oxford Dictionary it is stated to mean to mention together as equal . 27. I, therefore, hold that merely because that the plaint is instituted by having recourse to parenthesis (Brackets), it does not mean that the name of the Plaintiff in the instant case is in doubt or that the Plaintiff is nonexistent. Super Parts Pvt. Ltd., ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... itted that Ganga Ram Verma, visits him in connection with the work of Defendant 1. 31. In view of the depositions of D.W. 1 Sri Kant Verma and D.W. 2 Mohd. Abdulla. I am satisfied that there is a connection between the work being done by Defendant 1 and Defendant No. 2. Defendant 2 has, as deposed to by Mohd. Abdulla D.W. 2, been actually riding the business of Defendant 1. In' the circumstances, keeping in view the depositions of the two witnesses D.W. 1 and D.W. 2, I am of the view that there is no misjoinder of parties in this case, and the issue is decided accordingly. Issue No. 3 Whether the Plaintiff is the owner of the trade mark/house mark 'Superflame' in respect of gas appliances? 32. At the outset it must be ascertained whether there is something recognised in law, as a house mark . Trade mark is a recognised concept in law. We have the Trade and Merchandise Marks Act, 1958 which gives statutory sanction to trade marks, whether they are registered under the Act, or whether they are unregistered trade marks. 33. In para 3 of the plaint it is asserted that the trade mark SUPERFLAME, on account of the fact that it appears upon and is used in rela ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vidence in the instant case, of there being a group of companies controlled by any particular company which would lead to a finding that the word SUPERFLAME had become a house mark. In any case, the order in (1930) 47 RPC 37 is not an order of Court and it is not possible for me to say on the basis of this one single order that some legal recognition needs to be given, the concept of the House mark. 34. Mr. Anand also refers to an order of a Division Bench of this Court in AIR 1985 Delhi 210: B.K. Engineering Co. v. U.B.H.I. Enterprises Ludhiana. This was an order passed' on an interlocutory application without recording any evidence. A perusal of the judgment shows that the learned Judges did not refer to (1930) 47 RPC 37, or attempt to define what a House Mark meant if it did connote something in law. They appear to have assumed that the contention of Mr. N.K. Anand (who appeared for the Plaintiff in that case also) that BK' was a House Mark without scrutinising the submission. As stated above before me, Mr. N.K. Anand has conceded that apart from the administrative order in (1930) 47 RPC 37, which did not scrutinise the concept of House mark either, there is nothi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... common coined or Fancy words , are treated differently, as coined words or fancy words are not part of language. 41. One of the earliest cases to decide that there can be exclusive appropriation of a name/word is a case decided by the House of Lords on 13th December, 1877 reported as (1877) 3 AC 376; Singer Machine Manufacturers v. William Newton Wilson. This case set at rest a controversy which existed amongst the lawyers that a 'name' cannot be subject-matter of exclusive appropriation by any person. The facts of the case were that in 1850 Mr. I.M. Singer of New Jersey, USA began the business which was thereafter carried on by the Singer machines manufacturers, of manufacture sewing machines of various kinds, of different constructions. From time to time, he had taken partners into the concern, and finally was incorporated as a Company by the legislatures of New York and New Jersey, by Acts of Incorporation. The machines manufactured by Mr. I. M Singer were subject-matter of various patents which had expired in America. In any case, at the time of commencement of the action in England, the Appellants did not have any patents applicable in England, but the name of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e true, if the term Singer or Singer's machine denotes to the mind of the public or of those likely to purchase such articles, not a particular type, or shape and arrangement of parts of the machine, but a machine the manufacture of the particular person or firm; and if the Defendant whose name is not Singer, represents his machines as being Singer or Singer's machines, there is at least a case which calls upon the Defendant to show some reasons which would justify him in thus making a use of a name which is not his own, but which is the name, and is known to indicate the manufacture, of the plaintiffs. The Lord Chancellor, in view of the facts of the case, and from what had transpired in the Courts below said that he has no option but to direct remitting of the case to the Chancery Division for receiving evidence and thereafter disposed the whole of the case upon evidence. In other words the lord Chancellor ordered the re-trial of the matter. The taw Lords agreed with the action proposed and the matter was remitted. Lord Gordon observed, at page 401, that the Appellants have stated a prima facie case for the injunction which they have sought. 44. This case, therefor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... out 26th March, 1896. The case was started on 3rd May, 1893 when Frank Reddaway and F. Reddaway Co. Ltd., commenced the suit in the Manchester District Registry of the Queen's Bench Division against George Banham and George Banham Co. Ltd., for an injunction to restrain the Defendants from infringing certain trade marks and from continuing to use the word 'Camel in such a manner as to pass off their goods as and for the plaintiff's goods. It was asserted that the plaintiffs had, during the course of trade, sold very large quantities of beltings as 'camel beltings' and that the word 'Camel' appeared upon, or was attached to their beltings as 'camel beltings'. In England and abroad the word 'camel', or the figure of a camel, was universally understood in all the places where their beltings was sold, to indicate goods to be of plaintiffs manufacture. It was also asserted that beltings was sold as 'camel' and 'camel hair beltings also. The action was commenced because the Defendants' company and the Defendant Banham had recently sold in England and advertised for sale in conjunction with the word Camel large quantities o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... use of it by another person . Thus the coined created , Fancy , or new words which were not in use in any language before, and which did not have any meaning in the ordinary language, us evidenced by their absence in authoritative and standard language dictionaries, were the exclusive property of the person who first coined , or created them and adopted them for use, and used it in connection with any article the only reason why a hitherto meaningless word would be used by another in connection with his activities would be to deceive the public, that the letters article, thing or goods or the articles, thing or goods of the former. He also observed that he was unable to see why a man should be allowed in this way, more than in any other, to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival . 52. Not only words can be used is connection with articles of manufacture and denote a connection in course of trade for the purposes of Trade and Merchandise Marks Act, and be exclusively appropriated by the person who has first used the words; words can also be exclusively appropriated under the law of copyright wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ther language. 54. As regards cases in which names of books have been protected, a reference can be made to Weldon v. Dicks (1878) 10 Ch. D 247, at 260 and 264; : W.H. Allen Co. v. Brown Watson Ltd., 1965 RPC 191 at 194; Mathieson v. Sir Issac Pitman Sons (1930) 47 RPC 541. Warner Brothers Pictures Corpn. v. Majestic Pictures Corpn, 70 Federal Reports (2nd)310. 55. In the Mathieson case (1930) 47 RPC 541, it was held at page 550 that secondary meaning in connection with names/titles of the books must connote that in the market where such books are purchased, and among the member of the public who were buyers of these books, the mere title (How to Appeal Against Your Rites) indicated the work of the author of it (Mr. Andrew Douglas Lawrie), and perhaps further indicated that it was published by a particular publisher. On the Principles given in (1930) 47 RPC 547 Books/Titles like Godan - is associated with Prem Chand, Gitanjali with Tagore, Das Kapital with Marx, Mien Kampt with Hitler, and so on. The observation regarding secondary signification in Reddaway v. Banham 1896 (13) RPC 218) (supra) and the Mathieson case are in essence the law in relation to exclusive ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... England and Canada but also in the United States of America. In the USA the National Biscuit Company had sought to restrain the Kellogg Company from using the word Shredded Wheat in connection with their goods. It is noted in 55 RPC 125 at 149 that initially the Company failed before the District Court of Delaware, and on appeal US Circuit Court of Appeals for the third circuit, the decree was affirmed, Subsequently on re-arguments before the same Judges of the Circuit Court of Appeals, that decision was reversed and decree was entered for National Biscuit Co., enjoining the Defendant Kellogg from the use of the name 'Shredded W heat' as its trade mark, and from advertising or offering for sale its product in the form and shape of the plaintiff's biscuit in violation of its trade mark. 59. The Privy Council were aware of the reheard case judgment Instead of relying upon the latter judgment of the Circuit Court of Appeals the Privy Council preferred the overruled earlier judgment of the Circuit Court of Appeals. 60. The appeal had come before the Privy Council as another original action reported in 55 RPC 125 has been instituted in Canada. 61 From the report: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e matter of product of this patented process, between the Courts of America and the Courts in England. Lord Russel of Killowen himself recognised the process was one of mashing rather than shredding. I am, therefore, unable accept that what is mashed, in fact, can be regarded as shredded in law, and I would prefer to sty that filamented wheat biscuits would not be shredded wheat biscuit, that it was open to the inventor to give a coined name to the product being an entirely new product could be named anything by its inventor, as was done he called it shredded wheat. 65. There is another reason for my com(sic) to the conclusion that the shredded wheat was not an apt description for the patented biscuit as held by Lord Russel of Killowen. In my view, the new product could easily have been called Wheatabix, as it was a biscuit made from wheat. In fact, now there is an extensive advertised product in England, a biscuit, made out of wheat, which is sold by the name of Wheatabix, and it is used for exactly the save purpose as the shredded wheat , biscuits is used; that is to say as breakfast food. If the wheat in fact was mashed to make the product, I do not see how it can, in law, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erial gets ignited due to self combustion, or is ignited by spark or a small flame. The type flame which comes into existence as a physical phenomenon upon any combustible matter being ignited, depends upon the combustible material that is ignited. Thus, the flames of burning wood, coal, coke, liquid paraffin (Kerosene oil), combustible gases are different in their characteristic coloration .As is apparent to all those who have noted it, burning wood, burning coal, burning kerosene stoves, and burning gas (in a physical or chemical laboratory where Bunsen burners are of common use), the flames are of different colours. Thus, the reddish glow flame of coke, is different from the flames of charcoal which burn with slightly yellow colour, and the flames of the burning wood are usually yellow. As distinguished from any of the above is the flame of combustible material using Bunsen burner, which emits a blue flame. 71. The flames of various combustible materials have different temperatures, it is also common knowledge that the flames which have the highest temperature are the blue coloured flames. Anyone who has observed an oxy-acetylene flame which is used by welders, will apprecia ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 0 c. 76. The Encyclopedia Britannica 1969 also shows the design of burners used in cookers/ cooking ranges. The explanation of the burner design, which is illustrated at page 415 in the said Volume of Encyclopedia Britannica, indicates that the burners illustrated is so designed that safety of the person using the burners is ensured. The illustration of the burner and the explanation of the illustration shows that immediately beyond the jet from which the combustible gas is emitted, a venturi is a waisted hollow pipe . The function of the venturi is to accelerate the flow of gases. The gas released from the jet goes straight into the venturi, and its flow is accelerated automatically by the venturi. Because of this accelerated flow of gas, atmospheric air is sucked into the venturi from the opening provided therefore just before the venturi. The accelerated flow of air and the gas mixture flowing through the venturi ensure that no part of the inflammable gas is blown back through the opening provided for the intake of air. The burner incorporating venturi in its body, thus ensures that the combustible gas does not flow back out of the air opening provided in the burner body. Th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... oured flames can be found in any adequate illustrated scientific text or reference books. 80. Reference to the standard dictionaries of English language, like Chambers, Shorter Oxford, Webster International, etc., would show that there is no word superflame therein. It is not found either in that part of the dictionary where the word SUPER occurs or in that part of the dictionaries where the word FLAME is dealt with. Prima facie, therefore, it would appear that the word SUPERFLAME is not a common place word of English language nor has it been given any meaning in that language. The dictionaries of English language being silent on the meaning of superflame, the conclusion is inescapable that it is a coined , or fancy word, and one may go so far as to say that in the circumstances, a meaningless word, it is a word which is not a use. In any case, it is not a word which is so common place as to be found in the authoritative language dictionaries. The word is made meaningful only when applied to the products for which it was created. 81. From the above, it is quite clear that Yellow flame, Red Flame and Blue Flame are a part of general public knowledge and that they have bee ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ishing the sole connection with the article to which it is applied. The skill of the person who creates a new word lies in making the word so simple, that the simplest of those, who would be interested in procuring the articles to which that word is applied, or those interested in purchasing the book to which the word/name has-been given as a title would immediately register it in his mind for future reference. This is possible only when the word itself suggests a meaning which did not exist before and yet the word appears to be meaningful. It is not permissible to dissect the word and the word has to be seen as a whole. It must not be dissected, to see whether any of its component parts conveyed any meaning. It is noteworthy that for the purpose of comparison of two words, it was stated by Supreme Court in AIR 1970 SC 2062 that the whole word has to be seen. In my view, it makes no difference whether the Court is called upon to compare the similarity in two different words, or is concerned with only single word. 85. The principle appears to be that a word has to be considered as a whole and it is not permissible to dissect it' into its alleged component parts. In this case ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n it is to be seen whether secondary significance has been acquired by a common language word. 90. As to the duration of prior use, which is required to acquire the exclusive right to the same, Mr. Anand referred to 1967 RPC 589; Standar v. Reay. In that case, the matter in question was who used the words Mr. CHIPPY a coined combination, in connection with sale of fish chips. The Plaintiff had commenced the business in Oct. 1966, and the Defendants in Nov. 1966. Justice Buckley held that there was evidence in the case that substantial takings by the business of plaintiffs were proved by the trade for about three weeks prior to the commencement of the trade of selling fish and chips by the Defendants under the name Mr. CHIPPY and that there was fall in the takings when the Defendants started to trade. The Court held that the business of the Plaintiff had been built up rapidly which was affected by the Defendants also trading under the name of Mr. Chippy, Notwithstanding, that the Defendants had given the name of the business independently of the plaintiff, the Court confirmed the interlocutory injunction, which has been granted in favour of the plaintiff. In other words, ther ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r seen the (sic) mark/word Superflame on any goods (sic) to any person other than the plaintiff. He also stated that if anybody wanted to buy the goods of the plaintiff, he would ask for Superflame. 94. P.W. 2 Akhil Kumar Sharma has deposed On the products of Globe Super Parts the words Superflame are found. 95. P.W. 3 Dhiraj Kumar has stated that the goods purchased from Super Parts Pvt. Ltd. bear the trade mark Superflame. P.W. 5 has stated that the Superflame is the brand of products of Globe Super Parts. 96. D.W. 2 Mohd. Abdulla Malik stated that no person other than Globe Super Parts makes stoves and names it as SUPERFLAME; Globe Super Parts exclusively used the name of SUPERFLAME on the stoves. He further stated that he had knowledge about the trade mark SUPERFLAME since he started business and that SUPERFLAME has been publicised in newspaper from time to time. 97. Evidence has been led by the plaintiffs, through PW4, their Chartered Accountant, Shri Rattan Lal Garg, who has been looking after the accounts, not only of Globe Super Parts partnership, but also of Super Parts Pvt. Ltd. His deposition regarding the expenses incurred on advertising the products of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... act, although, except in the case of old marks they refused registration, and left the owners to obtain protection in another form of action. This is now changed, and under the provisions of the present Act the Court clearly has power to allow descriptive words to be registered, if a case on the merits is proved before it sufficiently strong to induce it to do so. (page 857 L. 40-47) 102. In order to consider the contention of Mr. Aggarwal further, one has to see what is the nature of evidence in the case, produced by him, which establishes that the words SUPER and FLAME are incapable of being exclusively appropriated In this case, there is no evidence led by the Defendants to establish that the word FLAME is descriptive of gas cookers in which the heat is provided by a flame. In all types of cookers whether they are the wood burning chulas or the charcoal/coke burning angithies or whether they are electrically operated cooking ranges, it is the heat which is provided by the various fuels/source of energy which is of essence. Without heat there can be no cooking. In view of the fact that electric cooking appliances like OVENS, electric cooking ranges also exist, in my view ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e, it is useless to contend that the word SUPER is superlative to the word-Flame, also, for the reason that SUPERFLAME may refer to the length or width or both, of a flame and not necessarily to the heat generated by it when a pile of wood is burnt, the flame, though yellow coloured, which does not burn with a higher temperature than a blue flame, because of its length and width, may be called SUPERFLAME or SUPERFLAMES. On the other hand the heat generated by the red glow of burning, coke, without a flame, may be higher than the heat generated by a tall and broad yellow flame of burning pile of wood, Similarly the small flame of the Bunsen Burner which burns with a blue colour may not be super in length and width but generates more heat as the blue coloured flame has a highest temperature. 107. The contention that Super is a laudatory word, flame is descriptive, therefore, SUPERFLAME cannot be exclusively appropriated, is based upon a misconception that it is permissible to dissect the word SUPERFLAME. The word has to be considered as a whole. 108. It is next contended by Mr. Aggarwal what the word SUPERFLAME is actually a misleading word and a misdescription and, therefore, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... there are gas cookers, which are being sold in the market, which do not have the word FLAME upon them. For example, gas cookers being sold with names like, Savloy, Nicky Tasha, Inalsa, etc., and there may be many others. In view of the existence of the gas cookers with names like Planet and Savloy, Nicky-Tasha, Inalsa, it cannot be said, in my view that the word is common to the trade. It may be that a number of manufacturers are using the word FLAME as a part of the name by which they wish to sell their gas cookers, but that is not the same thing as saying that flame is common to the trade. 113. In view of the above discussion, I. am of the view that the word SUPERFLAME is a coined or fancy word, that it has been, in the facts and circumstances of the case, exclusively appropriated by the plaintiffs, and that they are the owners of the mark SUPERFLAME in respect of gas cookers/appliances which are manufactured by them. The evidence in the case also establishes that in the market owing to the extensive publicity where the gas cookers appliances are bought and sold, the name/word SUPERFLAME connotes the goods produced by the plaintiff. This issue is, therefore, decided in favour ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng to read the deposition of the witnesses of the plaintiff. Much of the witnesses of the Plaintiff have specifically stated that if any customer of theirs asked for Blue Superflame then what he would be given by them would be a gas cooker/appliance made by plaintiffs, which has been painted blue in; colour. Deposition to this effect has been made by PW.2, PW3 and PW 5. These were witnesses produced by the plaintiffs, from the trade, and the market. Other witnesses produced was PW 1, a Director of the Plaintiff and PW 4 its chartered accountant. It is interesting that in this case, the market witnesses of the plaintiffs, have themselves stated that there is no likelihood of passing off of the gas cookers/appliances, manufactured by the Defendants as the gas cookers/appliances manufactured by the plaintiff. In view of this evidence, it is not possible to hold that the goods manufactured by the Defendants, are being passed off as goods manufactured by the plaintiffs. 120. There is yet another reason why there no passing off of the goods of the Defendants is the goods of the plaintiff. The word SUPERFLAME, which occurs on the back side of goods of the Defendants is minus cute compa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... proved on evidence that the word SUPERFLAME is not common to the trade; and that in the trade and in the market place, where gas appliances are marketed, sold Superflame has been exclusively identified with the products of the plaintiff. SUPERFLAME being a meaningless word having no meaning ascribed to it in the common language, what is to be seen is why is the word SUPERFLAME adopted as a part of the trading style of the Defendants. 125. It is proved by the evidence of PW 1 and also established by the evidence of DW 1 i.e. Defendant No. 1, in the case, that Defendant 2, the father of Defendant 1, was the painting contractor for a number of years, for Globe Super Parts, as also for Super Parts Pvt. Ltd. The painting contract, for painting gas cookers/appliances of the plaintiffs was terminated by the plaintiff. It is after the termination of the painting contract that the Defendant 1, who is a young man of 21 years, admittedly having no experience in the trade of manufacture of gas cookers/appliances, started the manufacturing of gas cookers/ appliances, as a sole proprietor of sole proprietary concern which he named as Blue Superflame Industries. It is also admitted by DW 2 Mo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se, it was held that When the name of the words consists of words descriptive of that business, and which have not acquired secondary meaning, a slight difference between the plaintiffs and the Defendants to the will, in the absence of fraud, be a sufficient distinction. That case relates to two business names which both business giving the same descriptive service. In this case, what is agitated, is the use of the words SUPERFLAME, a mark put on plaintiffs' cookers, has been incorporated in the trading style of the Defendants. I have held that the word SUPERFLAME is not descriptive word, that it is the fancy word, invented word or a coined word. This case, as it deals with descriptive words only, is of no help to Mr. Aggarwal. 128. Mr. Aggarwal next contends that the small variations are sufficient for making the matter non-actionable. In other words, what in is contended, is that according to the Plaintiff what is actionable is the use of the words SUPERFLAME. The Defendants having not used the word SUPERFLAME by itself, but in conjunction with the other words, therefore, owing to the added matter they are not liable; He relies upon AIR 1974 A P 274 AIR 1981 All 421 AIR ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that case being the descriptive word, and the word under consideration in the instant case, not being a descriptive word, that case has no application to the present case. 135. None of the cases relied' upon by Mr. Aggarwal apply to the present case, inasmuch as the word SUPERFLAME cannot be said to be a descriptive word. It is a coined, fancy, invented word. 136. The argument which has been advanced is that as far as the name of the Defendants' company is concerned matter has been added to the word SUPERFLAME namely, the words THE BLUE.... INDUSTRIES, and that with additions of these three words to the word SUPERFLAME, there is no likelihood of confusion between the name adopted for the product by the plaintiff, and the name adopted for the business by the Defendant No. 1 and, therefore, no injunction be issued. 137. It is also clear from the reading of the cases that in order to escape the injunction what is required is that the added matter must be sufficient to distinguish . I also note from the cases, which have been cited before me that the added matter cases essentially deal with words which are common language words or names which are common names. I am o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dustries, Delhi v. Banarasi Dass Goela in support of his case for grant of injunction. In that case, what had happened, was that the Plaintiff was carrying on business in the name and style of Banarasi Dass Goela, and was registered proprietor of registered trade mark ELORA in respect of watches, time pieces, clocks and their parts. The plaintiffs sold clocks but intended to introduce time pieces also. What the Defendants did, was that they adopted the trading style of Elora Industries for carrying on the business of manufacturing time pieces. 143. It is clear that the business carried on by both the parties related to implements for measuring time; Elora was the registered trade mark of the plaintiffs who were not using the word as a part of their trading style. This Court held that the use of the registered trade mark Elora in the trading style of the Defendants, would cause harm to the plaintiffs. 144. It is clear from Section 27 of the Trade and Merchandise Marks Act, 1958 that a Mark can be a registered Trade Mark, in which case an action for infringement shall have to be instituted, and in the event of the Mark being an unregistered mark then an action for passing of is ..... X X X X Extracts X X X X X X X X Extracts X X X X
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