M MAHENDRA SHAH Vs. HINDUSTAN LEVER LIMITED

JUDGEMENT

(1.) These two C.M.A. No. 1715/96 and C.M.A. No. 46/97 have been filed being aggrieved by the common judgment and order dated 6-11-1996 passed by the III Additional Chief Judge, City Civil Court, Hyderabad on I.A. No. 35/96 in O.S. No. 2/96 and on I.A. No. 237/96 in O.S. No. 6/96. The appellant in C.M.A. No. 1715/96 is the plaintiff in O.S. No. 2/96 and the appellant in C.M.A. No. 46/97 is the plaintiff in O.S. No. 6/96. By the impugned order their respective I. As filed for injunction restraining the respective defendants in each suit from using the trade mark 'ANNAPURNA' either by itself or in combination with any other word or words or any other mark identical with or deceptively similar thereto in relation to their respective goods viz., whole wheat flour/atta so as to pass off or enable any other person to pass off their goods, have been dismissed by the court below and at the same time directing the plaintiffs in both the suits to maintain the status-quo ante. The counsel for the appellant in both the cases strenuously contended that the impugned order is illegal and without justification and contrary to the materials on record. They submitted that the court has erred in directing them to maintain status-quo. According to the appellant's counsel in both the cases there should have been an injunction in favour of the respective plaintiffs as against the respective defendants.

(2.) In order to appreciate the rival contentions on both sides, I have to summarily note the facts of this case. The plaintiff in O.S. No. 2/96 Sri M. Mahendra Shah filed the present suit alleging that he is engaged in the manufacture, sale and marketing of items including wheat, flour, etc., under the trade mark 'ANNAPURNA' which is also the trade name under which he carries on the business. The said trade mark he has been using since long. He further alleged that in the year 1996 he has sold goods worth Rs. 2,37,500.00 and he has also advertised under the said trade mark in various newspapers, periodicals etc. In order to popularise his products he incurred a lot of expenditure for advertisements. He further stated that he has already made an application bearing No. 657595 for registering the said trade mark 'ANNAPURNA' for the goods he markets, which fall under class 30 of IV Schedule of Trade and Merchandise Marks, Rules (1959), and the same is pending. He further stated that recently he came to know that the defendants M/s. Hindustan Lever Limited and two others have been using a similar trade mark "ANNAPURNA" along with word 'GOLD SEAL' on their product namely wheat flour (atta) only with a view to pass off their goods as those of the petitioner and thus the defendants have been causing great damage and injury to the plaintiffs reputation as well as his business. Under these circumstances the defendants were liable to be restrained from using the trade Mark 'ANNAPURNA' for their goods. Along with the suit Mr. M. Mahendra Shah (hereinafter referred to as Mr. M. Shah) filed I.A. No. 35/96 for injunction. On that I.A. it appears that an ex parte injunction was granted on 2-2-1996 for a period upto 26-2-1996. Meanwhile M/s. Hindustan Lever Limited (hereinafter referred to as 'HLL') i.e., the D-2 in the case, filed a counter denying the allegations made by the plaintiff inter alia contending that the suit as filed by the plaintiff was not maintainable. Further contending that the defendants were engaged in manufacturing selling and exporting of food items such as Vanaspati, edible oils, soaps, detergents, personal products etc., in the year 1992 in order to extend their food business they decided to engage in marketing staple food such as salt, pulses, rice, atta, maida, etc., and for such products they adopted the trade mark "ANNAPURNA" as a suitable name for their staple food business. Accordingly they applied for registration of the trade mark 'ANNAPURNA' by itself and also in combination with trade mark 'GOLD SEAL'. They filed their application bearing No. 621121 on 3-3-1994 regarding class 30 under the trade mark 'ANNAPURNA' word per se and the second application No. 647300 on 1-12-1994 for class 30 under the trade mark 'GOLD SEAL ANNAPURNA' and the third application No. 664869 on 8-5-1995 for class 32 under the trade mark 'ANNAPURNA' and those applications are pending. It is further contended that HLL caused M/s. Stefen Chemicals Limited to market their 'ANNAPURNA' salt in A.P. in December 1994. The first advertisement regarding salt was released though 'Eenadu' a Telagu daily dated 23-12-1994 and also launched through television from 27-4-1994 at Hyderabad kendra and for such advertisement they have invested huge amounts. As things stood thus in the second week of February 1996 they received information from the plaintiff that he has filed O.S. No. 2/96 praying for injunction and on I.A. No. 35.96 he has secured an ex parte order of injunction and the same was in force till 26-2-1996. HLL further contended that the defendant company has a turnover of more then Rs. 35 crores and they have already marketed their iodised salt under trade mark 'ANNAPURNA' since the year 1992 either by themselves or through their subsidiary companies under the brand name 'ANNAPURNA' or 'GOLD SEAL ANNAPURNA'. Since the year 1994 the said brand name 'ANNAPURNA' has become known to the traders as well as to the consumers and in the year 1994-95 along with every 2 kg 'ANNAPURNA SALT' one 'WHEEL' detergent, 12.5 grams was given free a the promotional cost of Rs. 25 lakhs. In these circumstances using of the said brand name by M. Shah was dishonest and fraudulent and Sri M. Shah was trying to take advantage of the goodwill of the brand name of HLL, and Mr. M. Shah also is trying to pass off his goods under the trade mark 'ANNAPURNA' of HLL fradulently from the month of March 1995. They further contended that HLL company and their dealers have huge stock of goods under the brand name 'ANNAPURNA' awaiting for sale and grant of interim injunction against them would have the effect of blocking the sale of their goods and also their future sale. They further contended that HLL has got superior rights over other subsequent users like plaintiff. The polythene bag in which the HLL has been selling iodised salt since 1994 is identical to the polythene bag which is used for selling atta since December 1995. Even the composition of colour combination, the lettering and the picturisation on both the polythene bags is the same. Accordingly they have built up the business reputation over the picture, colour and the trade mark 'ANNAPURNA' on their plastic bags. They contended that Mr. M. Shah was not a genuine trader and he is trying to put an obstacle in their progress or taking advantage of the extensive advertisement made by them regarding their product under the trade mark 'ANNAPURNA'.

(3.) In addition to the counter filed by HLL in I.A. No. 35/96 in O.S. No. 2/96 they also filed a separate suit in O.S. No. 6/96 for injunction against M. Shah restraining him from making use of their trade mark 'ANNAPURNA'and restraining him from passing off under the trade mark 'ANNAPURNA'. It is to be noted at this stage itself that the allegations in the suit O.S. No. 6/96 and in I.A. No. 237/96 made by HLL are similar to the counter they have filed to I.A. No. 35/96 in O.S. No. 2/96. Having regard to these circumstances only in order to avoid the confusion, instead of describing them as plaintiff, defendant, respondents, etc., in both the suits and IAs I am referring them by name. In fact the learned counsel on both sides submitted the arguments with reference to the names of the respective parties.