CHIMANLAL NARSAJI SUHAN Vs. PARASMAL MITHALAL PARMAR

JUDGEMENT

(1.) THIS appeal by the original plaintiff is directed against the order dated 18th February, 1997 whereby the learned Single Judge dismissed the plaintiffs notice of motion for interim injunction. The appellant is manufacturer and dealer in buckets, milk cans, containers and sieves and other similar goods. The appellant alleges that he has adopted trade mark and label mark consisting of the words "om PRABHAT" written in English and device of "cow" in respect of buckets, milk cans and sieves in the year 1972. The trade mark and label are at Exs. A-1 and A-2 to the plaint. The essential features of the trade mark given in Ex. A-1 are the device of cow within two curved lines. Above the said device of cow, the words "om PRABHAT" are represented along the top curved line and the bottom curved line similarly followed alongwith the word "bombay" so as form the ground or base of the said device. The trade mark Ex. A-2 consist of the words "om PRABHAT" written with an oval like device and is embossed on the product in addition to the printing on the outer package. On 20th August, 1975 the appellant applied for registration of the trade mark Ex. A-1 under the Trade and Merchandise Marks Act, 1958 (hereinafter called "the Act") and the same has been registered under No. 307852 in respect of buckets included in Class 21 for sale in the State of Maharashtra, Gujarat, Madhya Pradesh, Union Territory of Goa, Daman and Diu on 18th July, 1979. The trade mark OM PRABHAT was registered under the Act as a trade mark No. 351518 in respect of sieves, milk cans and winnowing baskets. According to the appellant, the device of cow is the most essential integral and memorable part of the trade mark registered under No. 307852. The milk dhabbas, milk cans and buckets of the appellant bearing the said label are identified by the members of the public as the COW BRAND products of the appellant alone and of none else in the market. In or about 1990 the appellant added the words "gai CHAAP" above the upper curved line and commenced describing the said device in Devnagiri script also. The said trade mark is continued to be used till today in respect of buckets including milk cans. According to the appellant the products bearing the aforesaid trade mark of the appellant are very popular. The appellant has annexed to the plaint the sale figures of the appellants product at Ex. B.

(2.) THE appellant has alleged that in or about 1993 he came across an advertisement in the Trade Mark Journal dated 16th November, 1994 for a label mark sought to be registered by the first respondent in respect of milk cans and buckets in respect of which the appellants trade mark is already registered. The essential features of the said trade mark sought to be registered was a device of cow enclosed within two curved lines. The words COW BRAND were written under the top curved line and the word BOMBAY was written below the bottom curved line. Since the said trade mark was nothing but a slavish copy of the appellants trade mark No. 307852, the appellant opposed the registration of the said trade mark by filing a notice of opposition in or about 9th March, 1994. In the reply filed by the respondents to the opposition, it was contended that the first respondent had applied for registration of another trade mark bearing No. 493496 having a device of Ox and has been using both the trade marks. On taking search at the Trade Marks Registry, the appellant found that the said trade mark had been advertised in the Trade Marks Journal No. 1064 dated 1st October, 1993 in respect of milk cans in Class 21. The essential features of the said trade mark sought to be registered was a device of an Ox enclosed in two similar curved lines. The word OX BRAND was written under the top curved line and the word BOMBAY is appearing below the bottom curved line. The trade mark was proposed to be used in respect of milk can. Thereafter the appellant came across another advertisement in the Trade Mark Journal No. 1102 dated 1st May, 1995 of a trade mark consisting of the device cow within two curved lines and words COW BRAND written above the said device and the word BOMBAY below the bottom curved line. The said trade mark was advertised under Application No. 493946-8. This was stated to be the correct mark to be read and deemed under the said application. This application was also opposed by the appellant. It is stated that the entire label under application referred to above is also a slavish copy of the appellants registered label mark except that the words OM PRABHAT have been replaced with the words COW BRAND. On enquiries having been made the appellant found that no goods bearing the marks COW BRAND and OX BRAND were available. However, it came to the appellants notice in July, 1995 that the respondents have commenced the sale of milk cans and buckets bearing the trade marks COW BRAND and OX BRAND and has embossed the same on his goods. The appellant also learnt that in or about the first week of August, 1995 the respondents had commenced sale of sieves bearing the trade mark OM PARAS which is deceptively similar to the word OM PRABHAT. Hence it is pleaded that the respondents have infringed the appellants registered trade mark Nos. 307852 and 351518. The appellant by an Advocates notice called upon the respondents to cease and desist from infringing the appellants trade mark and further from using the said marks so as to pass off their goods as and for that of the appellant. These facts have been reiterated in the affidavit in support of the notice of motion.

(3.) IN reply, the respondents have contended that the appellants trade mark consisting of the words OM PRABHAT and the device of a cow is registered only in respect of buckets whereas the respondents are using the trade mark OX BRAND and COW BRAND along with the devices of an ox and cow respectively only in respect of milk cans. As far as the sieves are concerned, the appellants mark OM PRABHAT (word per se) is registered subject to a disclaimer of the word OM whereas the respondents are using the trade mark OM PARAS which is visually, phonetically and conceptually quite different. The product of the respondents are sold under a totally different trade mark. Similarly on the question of alleged passing off, the claims of the appellant are not supported by any documentary evidence. It was also contended that the trade mark OM PRABHAT (word per se) are registered in respect of, inter alia, sieves, subject to a disclaimer of the word OM. Consequently the appellant has no right to use the word OM. It was also contended that the words GAI CHAAP in the trade mark were used only since the year 1990. On the other hand, the respondents have been using the words OX BRAND and COW BRAND in respect of milk cans since the year 1988. Hence the application of the respondent No. 1 for registration of these two marks dated 6th July, 1988. Thus the rights of the respondents are protected under section 33 of the Act. It was contended that the respondents have been selling the products under the disputed trade marks over the last seven years to the full knowledge of the appellant. Having slept over the matter, the appellant cannot be granted any interim relief. There is no similarity let alone any deceptive similarity between OM PRABHAT on the one hand and OX BRAND, COW BRAND and OM PARAS on the other. The respondents made a grievance that the appellant failed to offer inspection of the invoice books for the period relied commencing from 1986 upto the date of commencement of the suit.