RAJENDRA SAHOO Vs. GANESWAR SWAIN

JUDGEMENT

(1.) This first appeal has been filed by the defendant challenging the decision of the trial Court decreeing the plaintiffs suit and permanently restraining him from selling or offering for sale or passing off the bidis manufactured by him in the name of Ganesh Bidi in the market and use the labels and wrappers and in Annexures-V to VIII of the plaint or in any other name and under any other mark which are similar or deceptively similar to those of the plaintiff. The trial Court further directed the defendant and his agents, servants and all other persons on his behalf to hand over all labels and wrappers to the plaintiff for destruction.

(2.) The respondent filed the suit O.S. No. 12 of 1980 (Trade mark), in the Court of the District Judge, Cuttack praying for a decree for permanent injunction in the terms indicated above and for mandatory injunction to hand over all labels and wrappers and all manufacturing implements to the plaintiff for destruction and also for a preliminary decree for accounts directing the defendant to render accounts of profits derived by him by manufacture and sale of bidis under the name and style "Ganesh Bidi" and thereafter to pass a final decree directing the defendant to make good the loss sustained by the plaintiff. The relevant facts pleaded in the plaint are that the plaintiff is the owner and sole proprietor of the firm M/s. Ganeswar Swain and Sons. He carries on business as a manufacturer of bidis under the name and style of "Ganesh Bidi" from the year 1956. Ganesh Bidi is the trade name of the goods manufactured by him. As a mark of identification he has been using different labels as per the Annexures-I, II, III and IV to the plaint for packing the bidis in different bundles and packets. These labels bear a specific and distinct mark of identification. He has applied for registration of this mark under the Trade and Merchandise Marks Act, 1958 and during pendency of his application he has been allotted provisional Nos. 359577 and 359578 on 14-3-80. It is further stated in the plaint that he has been using the name and the marks for more than twenty years last. On account of such user his goods have received recognition in the market and have become popular amongst the consumers. Due to the good quality of tobacco, bidi leaves and the care and expertise used in manufacture and marketing of the bidis, the goods have become well known and popular and have acquired good reputation in different parts of the State, particularly in the district of Cuttack. The bidis manufactured by him are in great demand by the dealers and purchasers who usually purchase the same on seeing the labels on different packets. It is the further case of the plaintiff that the defendant was serving under him till January, 1980 when he left the service. Since April, 1980 the defendant has taken up business of manufacture and sale of bidis. In order to find an easy market for sale of his bidis, he has used the namo 'Ganesh Bidi' and has been using wrappers and marks deceptively similar to those used by the plaintiff. If the wrappers and labels used by the defendant as per Annexures-V, VI, VII and VIII are compared with those of the plaintiff, it would be clear that they have been carefully invented so as to symbolise the name and mark used by the latter. In this process, according to the plaintiff, the defendant has been selling and passing off his bidis under the name and with the mark which are either similar or deceptively similar to those used by the plaintiff. By such use of the name and mark the defendant has been able to procure a good market within a few months. In this process the sale of the plaintiff's bidi has come down considerably within a short span of eight months. The plaintiff also states that the defendant has made no application for registration of any name and mark under the Trade and Merchandise Marks Act, 1958. On these averments the plaintiff filed the suit for the reliefs noticed earlier.

(3.) The defendant in his written statement while refuting the material facts stated in the plaint, denied that the bidis manufactured by the plaintiff are identified and recognised by any distinctive get up of any label. He also denied that since 1956 the plaintiff has been in exclusive use of the name "Ganesh Bidi" and the mark and the said mark has received recognition amongst the consumers throughout the State. He also denied to have used the name "Ganesh Bidi" and the wrappers and the marks as per Annexures-V to VIII to the plaint and thereby captured an easy market for sale of his bidis. He submitted that the allegation that by his action he has been passing off his goods under the name and with the marks which are either similar or deceptively similar to those of the plaintiff is incorrect. It is the case of the defendant that in 1975 he entered the plaintiffs bidi business as a partner paying a sum of Rs. 10,000/- towards its share capital. Though the business was being run in the name and style of "Ganesh Bidi", the mark, design the picture of the deity, Ganesh, the photo and the colour combination as are found in Annexures-I to VIII to the plaint were not being used then on the labels and wrappers. Since the parties could not pull on well in business, the defendant had to part Company with the plaintiff in October, 1978 and it was agreed between them that after withdrawing from the partnership the defendant will carry on a separate Bidi manufacturing business in the name of "Ganesh Bidi". An agreement to this effect was executed by the plaintiff on 24-10-1978. Since the year 1979 the defendant has been carrying on business of manufacture of bidis under the name and style "Ganesh Bidi" after obtaining a 1-4 Licence No. 19 of 1979 from the Central Excise Department. According to the defendant it is he who invented the mark containing the name "Ganesh Bidi" for his business. The specific colour, design and combination on the wrappers and labels were also his creations. The plaintiff became jealous of the attractive design of the defendant's newly invented trade mark as appears from the wrappers and labels under Annexures-V to VIII, copied, imitated, adopted and printed them on his wrappers and labels under Annexures-I to IV of the plaint and used them in his business. In other words, the stand of the defendant is that it is the plaintiff who is imitating the labels on the goods of the defendant. The defendant further stated that he has applied for registration of his trade mark appearing on the plaint (Annexures-V to VIII) to the Registrar of Trade Marks and he has also objected to the application of the plaintiff for registration of his alleged trade mark appearing in Annexures-I and IV of the plaint.