VIKRAM STORES Vs. S N PERFUMERY WORKS

JUDGEMENT

(1.) THE present Appeal from Order has been preferred against the order dated 5th november, 2007 below Notice of Motion exhs. 6 and 7 in Civil Suit no. 2175 of 2007 passed by the Judge, City Civil Court, Court no. 6, Ahmedabad, whereby the Notice of motion filed by the present appellants (original plaintiffs) was rejected and therefore, the appellants (original plaintiffs)have preferred the present Appeal from Order.

(2.) RANGOLI is a registered trademark of the petitioner (plaintiff), whereas the defendant is using predominantly word RANGILI for sale of same product viz. Essence stick. The present appellants have instituted Civil Suit No. 2175 of 2007 for infringement of copyright, infringement of trade mark and for passing off and to restrain the present respondents (original defendants) from printing, publishing and using the label RANGILI and/ or any other label which is identical and/or deceptively similar to the plaintiffs' rangoli Agarbatti (Essence stick) label. Defendants are apparently using words 'sai rangili', but a word 'sai' is having different colour and smaller size than eye-catching and predominant word 'rangili'. And size and colour of word 'rangili' and 'rangoli' (trade mark of the plaintiffs) are very much similar, difficult to be distinguished by a man of average intelligence or a man of imperfect recollection.

(3.) IT is contended by the learned advocate for the appellants (original plaintiffs) that the plaintiffs are having a registered trade mark RANGOLI in English, hindi, in label, in box label. They are manufacturing Agarbattis (Essence sticks) in the name and style of RANGOLI since the year 1978. They have adopted trade mark rangoli in respect of their product since 1984. The said trade mark is registered in the year 1990 and it has been renewed/ extended from time to time. The original defendants are using label SAI RANGILI. Looking to the label used by the original defendants, it is visually and phonetically similar and deceptive and, therefore, the same is an act of passing off as well as breach of trade mark and copyright. It is further submitted by the learned advocate for the appellants that if one or more of the essential features of the label is used by others, there is an infringement of the trade mark. In the facts of the present case, it is submitted by the learned advocate for the appellants that the word RANGOLI is an essential feature of the label used by the original plaintiffs. They have also given their figures of sale of all these Agarbattis. They ran into lacs of rupees. The original defendants have started manufacturing of rangili Agarbattis and looking to the Hindi version of RANGOLI in Devnagri script and looking to the Hindi version of the word rangili used by the original defendants, the label used by the defendants is deceptively similar, phonetically as well as visually. It is also submitted by the learned advocate for the appellants that on earlier occasion also, a criminal complaint was filed against the defendants as they were using the trade mark of the original plaintiffs. A panchnama was also drawn at the relevant time, by the police at the site of manufacturing of the original defendants and it was found that bigger size packets of agarbattis manufactured by the defendants, though they were using the label RANGILI agarbatti and when bigger size packets were opened, there were small size of packets of rangoli agarbattis. Thus, the defendants were using the trade mark of the plaintiffs. Because of the criminal complaint, ultimately this practice of using trade mark RANGOLI was stopped by the original defendants. It is also submitted by the learned advocate for the appellants that whenever there is a prima facie case in favour of the original defendants, in a trade mark case, stay ought to be granted by the trial court because infringement of trade mark causes irreparable loss to the original plaintiffs which cannot be compensated in terms of money. The learned advocate for the appellants (original plaintiffs) have relied upon the following decisions: (1) AIR 1953, SC 357 (2) AIR 1965 SC 980 (3) AIR 1970 SC, 1649 (4) AIR 1960 SC 142 (5) AIR 1963 SC 449 (6) AIR 1970 SC 146 (7) (2001) 5 SCC 73 (8) (2006) 8 SCC 726 (9) (2007) 6 SCC 1 (10) (1997)1 SCC 99 (11) (2004) 3 SCC 90 (12) AIR 1998 Guj 247 from the above judgments, he has pointed out that whenever the defendants are using one or more essential features of the trade mark or label, there is an infringement of trade mark. The learned advocate for the appellants has taken this court to fine niceties, distinction between action of passing and action of infringement and submitted that in the facts of the present case, passing off action can be considered at the time of final hearing of the suit. But so far as infringement is concerned, stay ought to have been granted by the trial court looking to deceptively similar trade mark being used by the original defendants, and therefore, the impugned order deserves to be quashed and set aside and the stay as prayed for is the Notice of Motion exhs. 6 and 7 may be granted.