HARDIE TRADING LIMITED AND HANSA PAINTS AND CHEMICALS Vs. ADDISON PAINTS AND CHEMICALS AND DY REGISTRAR OF TRADE MARKS

JUDGEMENT

(1.) MESSRS, Mardie Trading Limited, for short 'Hardie', is a foreign company having its registered office at No. 594 St. Kilda Road, Melbourne, Australia. Hardie is the registered owner of the trade mark SPARTAN and Warrior device, it having been registered on 18.6.1926 in Australia and on 6.8.1928 in Newzealand. Hardie registered the trade mark SPARTAN in India on 21.5.1946 under 122172 in Class 2, and on 25.5.1946 under 122175 in Class 3, and the trade mark SPARTAN VELOX on 25.5.1946 under 122174 in Class 2.

(2.) MESSRS Addisons Paints and Chemicals Limited, Huzur Gardens, Sembiam, Madras 11, for short 'Addison', was the selling agent of Hardie in India for the products under the SPARTAN trade mark from 1946 to 1949. In 1948 Addison commenced manufacture of its products under the supervision, technical know-how and quality control of Hardie and until July, 1963, used the SPARTAN trade mark on its products as licensee of Hardie and from August, 1963 till the end of August, 1968, Addison used the trade mark of Hardie in its capacity as Registered User of Trade Mark by agreement dated 11.7.1963. On 31.8.1963, the registration of Addison as a Registered User of the trade mark SPARTAN was cancelled by Hardie. Notwithstanding the cancellation, the terms of the agreement of Registered User were extended from time to time by mutual consent and Addison continued to use the said trade mark till 1971. On 3.11.1971, Addison applied for registration under Nos. 276024 and 276025 in Classes 2 and 3 respectively, for the registration of the device of an ancient warrior in a standing posture within a circle with the words 'Superfine Products' imprinted in the bottom, in its name. This registration was subsequently allowed and Addison adopted the device of ancient warrior, and used the colour combination of blue and red, and green and red.

(3.) DURING 1978, the parties resorted to agitate their rights before this Court as well as the High Court at Calcutta. Addison filed C.S. No. 204 of 1978 before this Court against Hansa, alleging inter-alia that by reason of its continuous and extensive usage in India, the trade mark SPARTAN has become distinctive of the goods of Addison. Hardie and Hansa filed C.S. Nos. 835 and 836 of 1978 respectively against Addison for the alleged infringement of the trade mark SPARTAN. A consent order dated 22.2.1979 came to be passed by the High Court at Calcutta in and by which Addison was given the liberty to use the warrior device, Hardie and Hansa were not to object to Addison selling its products under the get up in which it was selling and similarly, Addison was not to object Hardie and Hansa selling their products under any get up, so long as they distinguished their goods from those of Addison. Hansa started using the composite trade mark SPARTAN and bust of warrior from 3.9.1979 onwards. Addison filed Application No. 3973 of 1979 in C.S. No. 204 of 1978 for contempt against Hardie and Hansa. This Court initially ordered the status quo on 24.4.1979 but ultimately held by order dated 28.3.1980 that the status quo was to be governed by the terms of the consent order passed by the Calcutta High Court.