CHANDER MOHAN Vs. STATE

JUDGEMENT

(1.) This Appeal is directed against the Order of the learned Single Judge passed on 26.4.2005 whereby the application of the Plaintiffs'/Appellants for interim relief had been rejected. The Suit had been filed by the Appellants seeking a Decree of permanent injunction restraining the Defendants from using the word or name 'Havell's' as its trade mark or even as part of its corporate name. The learned Single Judge has recorded that the Defendants admit the proprietary rights of the Plaintiffs over 'Havell's' so far as the trade mark is concerned, but dispute the Plaintiffs' claim for exclusive use of 'Havell's' as part of the corporate name also. After taking note of the pleadings of the parties and the undisputed documents, the learned Single Judge noted that Havell's Pvt. Ltd. (Defendant No.6) was in existence since 1956, fourteen years prior to when Haveli Ram Gandhi executed the Assignment Deed dated 9.10.1971 relied upon by the Plaintiffs. At that point of time Haveli Ram Gandhi was a Director of Havell's Pvt. Ltd. and would have possessed specific knowledge of the fact that Havell's was part of the corporate name of Defendant No.6. The Assignment Deed conveyed only the right to the trade mark Havell's, explicitly excluding the goodwill of the business. Even Defendant No.5, namely, Havell's Electronics Pvt. Ltd., had been incorporated as far back as in 1974. Objections had not been raised from any quarter including the Petitioners with regard to the continued use of Havell's in the corporate name of either of these Defendants. Mr. Lalit Seth, who controls these two Defendant Companies, had merely acknowledged the exclusive rights of the Plaintiffs to the trade mark Havell's, in its letters dated 11.10.1971 and 6.11.1971. Significantly, these letters were written on the Letterhead of Havell's Private Limited. Even after the assignment of the trade mark Havell's on 9.10.1971, Haveli Ram Gandhi himself continued to transact business in the name and style of Havell's Electricals Sales Corporation. Ten years later, when the Agreement dated 13.4.1981 was executed, Haveli Ram Gandhi had no authority to bind Defendant Nos.5 and 6. Between 1971 and 1981 the Assignees/Plaintiffs did not remonstrate against the use of the word Havell's as part of the trade name of any business enterprises belonging to Haveli Ram Gupta or of the contesting Defendants. The learned Single Judge also came to the prima facie view that the Plaintiffs or their predecessors-in-interest raised no objection to the use of Havell's in the corporate name till 1988. The decision in Rustom Cavasjee Cooper -vs-UOI, 1970(1) SCC 248 was applied. In these circumstances the learned Single Judge found it fit and proper to preserve the status quo.

(2.) We have already had the occasion of considering the interesting but complex question of the use of a word or name as part of a corporate name in Atlas Cycles (Haryana) Ltd. -vs- Atlas Products Pvt. Ltd., (hereinafter referred to as ATLAS). We had accepted the Appeal of the Plaintiffs by restraining the Defendants from using the name or word 'Atlas' as part of their corporate name. We had preferred the view that ordinarily the interests of the consumer are paramount, and if the use of a word or name as part of a corporate name would result in creating confusion in the mind of a prospective customer, an injunction should issue against the new user. In arriving at to our conclusion we had carefully dissected, digested and applied the Judgment of the Supreme Court in Ramdev Food Products (P) Ltd. -vs- Arvindbhai Rambhai Patel, (2006) 8 SCC 726 : AIR 2006 SC 3304 : 2006(2) CTMR 1(SC). We had analysed the precedents dealing with acquiescence and honest and concurrent user. However, in the factual matrix of ATLAS we were of the opinion that that Plaintiffs could not be seen to have acquiesced in the Defendants' use of 'Atlas' as part of its corporate name. No useful purpose shall be served in repeating in detail the same analysis of the law. It will only lead to making this Judgment prolix.

(3.) Mr. N.K. Kaul, learned Senior Counsel for the Appellants, has contended that the definition of the word 'mark', presently contained in Section 2 (1) (m) of the Trade Marks Act, 1999, has not undergone any change as it corresponds exactly to the definition contained in Section 2 (1) (j) of the Trade and Merchandise Marks Act, 1958. The definition of the word 'Mark' includes, inter alia, a name, ergo Havell's (we shall presume for the present purposes that it is a name) could constitute a mark. The fallacy in the argument is that, at the interlocutory stage, there is no logical justification for the conclusion that even this name constitutes a Mark as postulated by Section 2 (1) (m). Although 'trade mark' has been defined in Section 2 (1) (zb) of the Trade Marks Act, as meaning a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others, the word trade name or corporate name has not been dealt with in that statute. This absence becomes crucial for the simple reason that whilst the Defendants have not laid any challenge to the Plaintiffs' claim for exclusive use of the word 'Havell's' in or as their trade mark, they have strenuously contended that they are entitled to its use in their trade name.