PRAKASH INDUSTRIES LIMITED Vs. RAJAN ENTERPRISES

JUDGEMENT

(1.) This appeal is directed against the order dated 18.5.1992 by which the application of the appellant under Order 39 Rules 1 and 2 was dismissed by the trial court. Brief facts giving rise to this appeal are that the appellant filed a suit for permanent injunction before the District Judge on the allegations that since the year 1980 the plaintiff company had been manufacturing and selling various goods. In the year 1986 the plaintiff and its predecessors started manufacturing and selling television picture tubes, parts thereof, video tapes and cassettes and television tuners etc. The said goods were sold under the trade mark 'PRAKASH' used in stylish manner. The trade mark of the appellant had become a symbol of quality with the consumers. The plaintiffs are the proprietors of the trade mark 'PRAKASH' in respect of the goods of the plaintiff since 1986. The goods are being sold on a large scale through out the length and breadth of the country. The trade mark" PRAKASH' was used in a distinguishing manner in relation to the aforesaid goods on account of its open, regular, continuous and extensive user, coupled with large scale publicity and advertisement throughout the country and abroad through various media has acquired a secondary meaning and distinctiveness so much so that the said artistic trade mark 'PRAKASH' has come about to be exclusively identified and recognised with the said products of the appellants manufacture and none else. The appellants, during the past many years, have established large and extensive sale of their said products under the aforesaid artistic trade mark 'PRAKASH' which runs in several crores of rupees annually, and have acquired unique reputation and goodwill on account of the superior and high-standard quality of products. The appellants, therefore, have a right to restrain any person from using a trade mark or name which is identical with and/or deceptively similar to that of the appellants and such right extends not only to the particular goods sold by the appellants but alse to cognate/allied classes of goods as it is bound to lead unwary customers to mistake the goods manufactured by any other person for those goods, manufactured by the appellant. The goodwill and the reputation which the appellants have built up over the years had vitally helped them in increasing the annual turnover the years.

(2.) It is further alleged that from an advertisement inserted in Navbharat Times dated 11.11.1991 the appellant came to know that the respondent also had adopted/started using the reputed artistic trade mark 'PRAKASH' of the appellants in respect of their products such as televisions, tuners, and T.V. Kits which are identical, cognate, allied and connected goods of the same description, nature as those of the plaintiffs, falling in the same class, without the permission, consent or authority of the appellants, is a mis-representation made by the defendants in the course of the trade to injure the business or goodwill of the plaintiffs and to cause potential damage to such business or goodwill. The use of the artistic word 'PRAKASH' with the identical or deceptively similar logo by the respondents is clearly mala fide and dishonest. The use by the respondents of the mark 'PRAKASH' in relation to their goods would be taken as indicating that such goods were the products of the manufacture of the appellant under their reputed and well known trade mark 'PRAKASH' or of a concern, associated or connected with the plaintiffs and would, therefore amount to passing off and would enable others to pass off. The appellant and the respondent's goods are identical, cognate, allied connected or associated goods of the same nature and description and are associated on account of the fact that these are displayed and sold side by side across the same counters in retail outlets such as electrical/electronic shops. The appellant's goods and those of respondent's have common trading channel as the class of customers are almost the same. There would be confusion as a substantial number of persons including traders, unwary buyers, manufacturers of televisions would think and believe that the appellant's business under their reputed artistic trade mark 'PRAKASH' is diversifying and the impugned goods, namely-televisions, tuners and T.V. Kits of the defendants have something to do with the appellants. If the respondents are not restrained now from using the trade mark 'PRAKASH' in the same fashion, the plaintiffs will lose potential for exploiting their reputation and goodwill in their reputed and long used artistic trade mark 'PRAKASH' in the area of electrical and electronic by marketing good. In these premises relief of perpetual injunction is claimed.

(3.) Needless to say that the suit is being contested on behalf of the respondent. The case set up by the respondent is that the appellant is not the proprietor of the alleged trade mark'PRAKASH'in relation to picture tubes, parts thereof, video tapes, cassettes and T.V. tuners etc. The appellant has never extended the use of said trade mark in relation to the said goods. The goods of the appellant under the trade mark 'PARKASH' are not available in Indian markets and therefore, the user claimed by the plaintiff in relation to the above goods since the year 1986 is false to the knowledge of the appellant. The appellant cannot claim exclusive rights to the use of the trade mark 'PRAKASH' in relation to the goods. The trade mark 'PRAKASH' when used in relation to the said goods has so direct reference to the character and quality of the goods that the said trade mark cannot be regarded as inherently capable of distinguishing the appellant's goods from similar goods of other traders and manufacturers. The trade mark 'PRAKASH' in relation to picture tubes, is highly laudatory having direct reference to the character and quality of the goods, therefore, the monopoly over the use of the trade mark 'PRAKASH' in relation to the said goods cannot be exercised. The appellant is claiming proprietorship of the trade mark 'PRAKASH' in relation in television picture tubes, parts thereof, video tapes, cassttes and television tuners while the respondent is using the trade mark 'PRAKASH' in relation to television tuners and T. V. Kits. The goods of the respondents are absolutely different and distinct from the goods of the plaintiff. Therefore, the possibility of confusion and deception is negligible. The respondent is the proprietor of the trade mark 'PRAKASH' in relation to television tuners and T.V. Kits. The respondent adopted the said trade mark in the year 1987 and had been continuously using the same since then without any interruption or interference from any corner whatsoever. The respondent has already build up a valuable trade under the said trade mark. The suit has been filed after a very long delay and is liable to be dismissed. The appellant has not stated the exact date since when he is manufacturing the said goods. The appellant has also concealed the name of its predecessor-in- interest. The goods of the appellant under the mark 'PRAKASH' are not available in the Indian Markets. It is denied that the appellant and its predecessors are the owners and proprietors of the mark 'PRAKASH'.