CIBA GEIGY LIMITED Vs. SURINDER SINGH

JUDGEMENT

(1.) This is a suit tor : (i) permanent injunction restraining the defendants from using the trademark 'Cibaca' or any other trade mark containing 'Ciba' or the word 'Cibaca' or any other trade mark deceptively similar to the trade mark 'Ciba' or 'Cibaca'; and (ii) rendition of accounts by the defendants to the plaintiffs for the profits made by them by the use of trade mark 'Cibaca'.

(2.) Plaintiff No. 1 is a Swiss Company and the second plaintift is an Indian Company duly incorporated under the Companies Act, 1956 in which the first plaintiffholds approximately 40 per cent of the equity share capital. The word 'Ciba' forms part of the corporate name of both the plaintiffs. As per the plaint,the first plaintiff is a registered proprietor of the trade marks 'Ciba'. 'Cibaca' and various other trade marks, in which the syllable is the word 'Ciba'.. in respect of various items falling in different classes. The second plaintiff is a licencee and user of various trade marks, possessed and owned by the first plaintiff in relation to goods manufactured in accordance with the specifications provided by the first plaintiff. The word 'Cibaca' was adopted by the plaintiffs and has been extensively used on all goods marketted by them in India. The second plaintiff claims to have used the trade mark 'Cibaca' extensively as licencee of the first plaintiff and has additionally spent large sums of money in advertising the goods sold under the said trade marks: by virtue of the aforesaid use and the second plaintiff's sales promotion activities, various trade marks, including the mark 'Cibaca', mentioned in the plaint, are associated by the public as the trade marks of the plaintiffs and only with their goods; the word 'Ciba' and 'Cibaca' also form significant and distinguishing feature of the corporate names and trading styles respectively of the two plaintiffs; the second plaintiff has been trading in India for so long and so extensively that it is popularly known by the abbreviated form of its name i.e., 'Ciba' and the public and the trade also associates all trade marks containing the work 'Cibaca' with the goods only of the plaintiffs.

(3.) Defendant No. 1 and 2 are carrying on business in partnership under the name and style of M/s.Bhatia Sales Corporation. M/s. Link Industries-Defendant No. 3, is a concern manufacturing filters for motor vehicles which are sold bv M/s. Bhatia Sales Corporation, it is pleaded that on or about December, l99l the second plaintiff learnt that the defendants were selling and offering for sale filters for motor vehicles bearing the trade mark 'Cibaca'. On l6 March, 19992, plaintiffs' Advocates addressed a letter to the defendants calling upon them to forthwith cease and desist from using the trade mark 'Cibaca'. No reply was received from Defendant No. 3. However, M/s. Bhatia Sales Corporation, vide their letter dated 1 April, 1992, sought information about plaintiffs registrations for the trade marks 'Ciba' and 'Cibaca' which was duly furnished on 7 April, 1992. Thereafter, on 26 May, 1992, the plaintiffs received a letter on behalf of M/s.Bhatia Sales Corporation, admitting that the said concern was using the trade mark 'Cibaca' but claimed that its use by the defendants was bona fide. Thus, the defendants did not give up the use of mark 'Cibaca' on the automobile filters manufactured and marketted by them. It is alleged that the defendants have deliberately and fraudulently chosen plaintiffs trade mark in order to trade upon the reputation of the plaintiffs and to pass off their filters as the goods of the plaintiffs; they are representing to the public that their goods have some connection with the plaintiffs whereas no such connection whatever exists, and in this manner they are exploiting their goodwill, passing off goods under the plaintiff's distinctive trade mark and causing damage to the plaintiffs' reputation as manufacturers of high quality goods which cannot be compensated in terms of money and hence the present suit for a decree for permanent injunction in the aforenoted terms, alongwith an application under Order 39, Rules 1 and 2, read with Section 151, Civil Procedure Code for grant of ad interim injunction. On the said application, an ex parte ad interim injunction was issued on 9 March, 1994, restraining the defendants from offering either directly or indirectly or through their agents or servants for sale or selling goods bearing the trade mark 'Cibaca' or any other mark deceptively similar thereto till the disposal of the suit.