GOLD STAR COMPANY LIMITED Vs. GOLD STAR INDUSTRIES

JUDGEMENT

(1.) By this application M/s Gold Star Co. Ltd., plaintiff had sought an ex parte inter locutory order, inter alia, on the grounds that the plaintiff is a registered proprietor of the trade mark "Gold Star" in respect of electric washing machines, electric pumps included in class-7 and electric mixing machines, elevator and escalator vide Trade Mark No.333391 of 10th February,1978. Similarly, vide Trade Mark No.333392 of 10th February, 1978 in Class-9, plaintiff's trade mark is registered in respect of Television, radio, transistor, tape recorder etc. Vide Trade Mark No.333393 in Class-11 as of 10th February,1978 in respect of electric fans, refrigerators, air conditioner etc. Vide Trade Mark No.3333963 as of 10th February,1978 in respect of television, radio, transistors, tape recorder etc. included in Class-9, plaintiff also applied for registration of trade mark "Gold Star" vide Trade Mark Registry No.33339 dated 10th February,1978 in Class-14 in respect of electrical clocks and vide No.333397 in Class-11 in respect of refrigerators, air conditioners, electric toaster etc. Registered trade mark of the plaintiff "Gold Star" has been renewed from time to time. The trade mark "Gold Star" of the plaintiff is known all over the world. This trade mark of the plaintiff is registered in almost 100 countries of the world. Plaintiff's goods are of quality and have international market. In India, the plaintiff could not import goods because of import restrictions. But parts were imported and re-assembled in India and then sold in the market. Plaintiff has also been negotiating collaboration with Greysham International Pvt.Ltd. Plaintiff offered technical know- how to the said company in respect of washing machine in India. Pursuance to the said agreement which is duly approved by the Government of India, plaintiff sent a washing machine to the said Greysham International Pvt.Ltd. Plaintiff has also exported and sold TV parts under the trade mark "Gold Star" to India from 1982 onwards. Plaintiffs had been advertising their goods under the trade mark "Gold Star" in generals in India. Because of the quality of the plaintiff's product, plaintiffs are getting offers from Indian manufacturers for collaboration and for giving their know-how. Plaintiff's trade mark "Gold Star" has achieved reputation, goodwill and name in India. Caution notice was issued to the public in India through the media not to buy the products, other than that of the plaintiff under the trade mark "Gold Star". It was somewhere in November,1986 that plaintiff found in the newspaper that the defendants had adopted the trade mark "Gold Star" and were using the same in respect of their product washing machines, for which the plaintiff is the registered proprietor. In this advertisement they also stated that they would be introducing geysers, heat covectors and hot cases. Notice was served on the defendant. Instead of complying with the said notice, defendants filed a suit in December,1986 against the plaintiff seeking declaration to the effect that the threat given by the plaintiff in its notice dated 12th November,1986 was unjustified and further that the Court should declare the defendant herein (plaintiff in that suit) to be the owner and proprietor of the trade mark "Gold Star" and restrain the present plaintiff from interfering in any manner with the business of this defendant (plaintiff before that Court).

(2.) That defendant's use of plaintiff's registered trade mark "Gold Star" in respect of their product namely, washing machines is in fact an infringement of the plaintiff's trade mark. Similarly, use of the trade mark "Gold Star" in respect of fans is also infringement of plaintiff's registered trade mark. It amounts to passing of defendant's goods as that of the plaintiff. Not only the defendants are passing of their goods as plaintiff's goods under the trade mark "Gold Star" but the defendants have also incorporated plaintiff's registered trade mark "Gold Star" in their trading style which is deceptively similar to that of the plaintiff's trading style Gold Star Co.Ltd. Because of passing of their goods under the name of plaintiff's registered trade mark "Gold Star" and also of the trading style, which is deceptively similar, an impression has been created in the mind of public that product of the defendant are in fact that of the plaintiff or that the defendant has become associate of the plaintiff, which fact is not true. At places the defendants have used the letter "R" in a circle over the trade mark "Gold Star" which denotes that their trade mark "Gold Star" is also registered, which fact again is not true. Because of the use, by defendant, the registered mark of the plaintiff "Gold Star" and its trading style, reputation and business of the plaintiffs have suffered. It is in this background that relief of interlocutory order has been sought

(3.) This application has been contested by the defendants mainly on the grounds that the defendant No.1 has been engaged in manufacturing and sale of electric apparatus including washing machines, mixers, heat covectors and fans, since April,1984. It has been continuously and extensively using the trade mark "Gold Star" since 1984 without any encumbrance. The suit suffers from delay, laches and acquiesence, hence, liable to be dismissed. Moreover, the trade mark "Gold Star" is not distinctive of either the plaintiff's goods or plaintiff's business in India. There has been no use or any bonafide intention on the part of the plaintiff to use the trade mark "Gold Star". Continuous period of more than five years has elapsed after the registration of this trade mark by the plaintiff and it has not been used by them, therefore, plaintiffs are not entitled to any relief. Rectification or removal of registered trade mark has already been filed by the defendants. The defendants have established independent right to use the trade mark "Gold Star" on account of continuous user since 1984. On the other hand plaintiff has no manufacturing or sale activity in India and, therefore, not entitled to the relief. Plaintiff in fact is guilty of violating the provisions of law, therefore, also not entitled to discretionary relief. In fact no case of infringement of any kind has been made out nor the question of passing of has been established. The suit is liable to be stayed under Section 10 of the Code of Civil Procedure, because of the earlier suit instituted by the defendant in the Court of District Judge, Delhi. Plaintiff had no bonafide intention to use the trade mark "Gold Star" in India at the time of obtaining the registration and a continuous period of five years or more has elapsed during which there has been no actual user of the alleged trade mark "Gold Star" on the part of the plaintiff. Since, the plaintiffs have never used the trade "Gold Star" in India, therefore, there is no violation of the goodwill and reputation of the plaintiffs in India.