GOLD STAR CO LTD 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 conditions etc. Vide Trade Marks No. 333396 as of 10th February, 1978 in respect of television, radio, transistors, tape recorders etc. included in Class-9. Plaintiff also applied for registration of trade mark "Gold Star" vide Trade Mark Registry No. 333393 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 toasters 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 Journals in India. Because of the quality of the plaintiff's product, plaintiffs are getting offers from Indian manufacture 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 convectors 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. No 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.) MR. Mangla, however, placed reliance on the decision of this Court in case of R.J. Reynods Tobacco Company v. I.T.C. Limited 1987 (1) Arbitration Law Reporter 156 to stress that if a trade mark has remained non-user, then plaintiff cannot claim any relief. The fact of that case were that an American Company, registered proprietor of the trade mark "NOW" in nearly 80 countries of the world, challenged the use of the trade mark by the defendant. Similar defence was taken by that defendant, that the plaintiff though the registered proprietor of the trade mark, but in fact has not been using the same in India ever since its registration in 1975. The court declined to grant injunction on the ground that the plaintiff therein got the trade mark registered during the import ban, knowing fully well that it could not sell its products in India and had in fact not sold for number of years. But that is not the case in hand. Plaintiff herein has specifically pleaded that he imported parts, got them resembled and sold under its trade mark in India market. The factum of importing parts, reassembling and selling has not been denied. Only defence taken that it was violative of law. Secondly, plaintiff entered into collaboration in 1986 with Indian Company which has been approved by the Govt. of India. These two facts repell the arguments of MR. Mangla that plaintiff had no intention to use this trade mark at the time of registration. Nor the judgment quoted above by MR. Mangla apply to the facts of this case.