SARABHAI INTERNATIONAL LTD Vs. SARA EXPORTS INTERNATIONAL

JUDGEMENT

(1.) BY this order I propose to dispose of the plaintiff's application I.A. 3475/82 under Order 39 Rules 1&2 C.P.C. praying for the issuance of injunction order restraining the defendants, their servants, agents, stockists, from using the trading style/trade name Sara Exports International which is deceptively similar to the trading style Sarabhai International Limited of Plaintiff No. 1 and the trading style Sarabhai Chemicals of plaintiff No. 2 and which include registered trade mark "SARA" of plaintiff No. 2 or part of their trade mark "SARABHAI" in respect of the goods for which plaintiff No. 2 is registered proprietor of the trade mark No. 113072 in clause 5 and 113072 in clause 1 and thereby pass off their goods, and business as that of the plaintiffs.

(2.) IN order to appreciate the scope of this application, it will be relevant to keep in mind the salient features of the plaintiff's suit for perpetual injunction, infringement of trade mark, passing off and rendition of accounts etc. against the defendants. Plaintiff No. is a company registered under the Companies Act and carrying on business as exporters, having their principle place of business at Shahibag House, 13 Walchand Hirachand Marg, Ballard Estate, Bombay, while the plaintiff No. 2 is having its registered office at Wadi Wadi, Baroda, and is engaged in the business of manufacture, sale and distribution of wide variety of pharmaceutical, medicinal and veterinary preparations, chemicals, dyestuffs and pigments, synthetic detergents, soaps, cosmetics, toiletroies laboratory chemicals, machinery and equipment and many other items: that the plaintiffs have their branch office at 12/3, Asaf Ali Road, New Delhi; that plaintiff No.1 has exported to various countries, including middle east countries, during the last eight years the aforesaid goods to the tune of Rs. 46.20 crores, out of which Rs. 7.24 crores accounts for drugs and pharmaceuticals alonge ; that the name Sarabhai INternational Ltd. Is well known for the past many years in the field of the export of the aforesaid goods and has acquired considerable goodwill among manufacturers and dealers as well, both in INdia as also broad; that plaintiff No. 2 is the owner of the trading style/trade name, Sarabhai Chemicals and the goodwill pertaining thereto in respect of medicinal pharmaceutical an veterinary preparations by virtue of assignment deed dated 25.4.1978; that the said trading style is being used on their products sold and exported from INdia to various countries including middle east countries; that the trading style Sarabhai Chemicals is used by the plaintiff No. 2 and their predecessor in business for the last more than 30 years in respect of the said goods; that the plaintiff No. 2 is the proprietor of the trade mark containing the word 'Sara' under No. 113071 is clause 5 as on 27.8.45 in respect of pharmaceutical, veterinary and sanitary substances, infants; and invalids' goods, plasters, material for surgical bandaging; material for stopping teeth; dental wax, disinfectants preparing for killing weeds and destroying vermin; that they are also the proprietor of the trade mark of the word 'Sara' under No. 113072 in clause 1 as on 27.8.45 in respect of chemical products used in industry, science, photography, agriculture, horticulture, forestry, manures, fire extinguishing compositions etc; that the above trade marks are being used since the date of adoption/registration and are subsisting and valid; that plaintiff No. 2 is also the proprietor of trade mark 'Sarabhai per se Sarabhai emblems; that the said trade marks are pending for registration under No. 319659B and 310658B as on 9.12.75 and No. 361884 as on 15.5.80 in respect of medicinal, pharmaceutical and veterinary preparation in Class 5 under the Trade and Merchandise Marks Act; that plaintiff No. 2 is using the above said trade marks since March 1977 and the sales turnover of goods under the marks 'Sarabhai' and 'Sarabhai emblems' during the period March 77 and June 81 is approximately of Rs. 223 Crores; that the expenditure incurred to make the products bearing these trade marks, during the said period is of the order of Rs. 17.38 crores : that plaintiff No.2 and its predecessor in business have widely used their trading style/trade name Sarabhai Chemicals during the past 30 years on their products; that by virtue of the long continuous and extensive user, huge, sales and expenditure incurred on their trading style and trade marks, have acquired very wide reputation, goodwill and name all over INdia and abroad in respect of their products: that on June 20, 1981 plaintiff No. 2 received a letter dated June 16, 1981 from the defendants and for the first time came to know the existence of "Sara Exports INternational" and their alleged activities; that by this letter the defendants showed interest in export of goods manufactured by the plaintiff No. 2 and also asked for literature, samples and terms etc; that plaintiff No. 2 called upon the defendants to immediately discontinue the use of the word 'Sara' as part of their trading style ; that similarly plaintiff No.1 by their registered letter dated 4.7.81 also requested the defendants to forthwith discontinue the use of the word either as part of the trade name/trading style or in any other manner whatsoever; that defendants, however, refused to accept the suggestions made by the plaintiffs; that the facts stated go to show that the defendant's activities extends to the goods which plaintiff No. 2 are manufacturing and exporting and are being exported by and through plaintiff No. 2; that their are common fields of activities in respect of similar goods and as such there is likelihood of great confusion between the business activities and the goods of the parties in INdia and in the international market; that in the international market it is likely to be taken that the goods exported by the defendants are coming from the plaintiffs and are the manufacture of plaintiff No. 2; that the defendants' adoption of the trading style 'Sara Export INternational" and their offering for sale, and advertising goods under the said trading style is fraudulent and is calculated to deceive and create confusion among the trade and general public in INdia and abroad ; that use of the word 'Sara' as part of the defendants' trading style is an infringement of plaintiff No. 2 a registered trade mark No. 113071 and 113072 containing word 'Sara' as essential features thereof; that on account of the deceptive trading style the defendants are passing off their goods and/or business as the goods and/or business of the plaintiff Nos. 1 & 2 that on account of this the plaintiffs have suffered and are likely to suffer damages and injury in their business, name, goodwill and reputation unless the defendants are restrained from using the trading style Sara Exports INternational or any other trading style in which 'Sara' forms part of, in respect of pharmaceuticals, medicinal and veterinary preparations and other goods manufactured by the plaintiffs; that he defendants by using the offending trading style and have made wrongful gains from the reputation and woodwill of the plaintiffs and are also liable to render accounts to them and pay the profits so made; that inspite of repeated calls the defendants have failed to desist from the use of the offending trading style. Hence, the present suit and the application.