A J VON WULFING Vs. DHJIVANDAS AND CO

JUDGEMENT

(1.) In this case the plaintiffs allege that for several years prior to 1914, they had manufactured and sold under the names of " Sanatogen " and " Formamint " certain chemical compounds for use in medicine and pharmacy, that within a short time the said compounds sold under the name of Sanatogen and Formamint acquired a very high reputation throughout India and the sales thereof were large and profitable and the names of Sanatogen and Formamint had come to mean chemical compounds of the plaintiffs manufacture. They further allege that on the outbreak of the War the said compounds were imported into India by the plaintiffs London firm until the property and assets of the plaintiffs London firm were sold in June 1917 by the controller appointed under the Trading with the Enemy (Amendment) Act 1916 to Genatosan Limited, that from and after June 1917, the said Genatosan Limited imported the said compounds under the names of Sanatogen and Formamint, that on the termination of the War the plaintiffs started importing Sanatogen and Formamint from Berlin, and that their original exclusive right to the use of the said names was by the terms of Treaty of Peace of Versailles restored to the plaintiffs, The plaintiffs further allege that at the end of October 1923, the defendants imported into Bombay two consignments of some substances under the names of Sanatogen and Formamint and were selling the same at a much lower rate than the plaintiffs goods. The plaintiffs charge that the object of the defendants in importing and selling the said goods was to deceive the public and lead them to believe that in purchasing the inferior compounds offered for sale they were buying the genuine articles of the plaintiffs manufacture, and further say that the general make up, marking and appearance of the defendants packages, apart from the use of the names Sanatogen and Formamint, was made to closely resemble the plaintiffs packages. The plaintiffs pray for an injunction restraining the defendants from passing off or attempting to pass off or from enabling others to pass off chemical compounds not of the plaintiffs manufacture as the goods of the plaintiffs by use of the names Sanatogen or Formamint and other consequential reliefs.

(2.) By their written statement the defendants deny that the names Sanatogen and Formamint came to mean chemical compounds of the plaintiffs manufacture as alleged by the plaintiffs. They further contend that the trade marks of Sanatogen and Formamint were avoided and removed from Register of Trade Marks in October 1916, by and under the Order made by the Board of Trade and under rules made under the Patents, Designs and Trade Marks Temporary Rules Act 1914 Amendment Act and that thereupon the said marks and names became public property both in England and India. They further contend that Sunatogen and Formamint were, from 1917 to 1923, imported into India by Genatosan Limited and also by various other persons and that the said names and marks have become public property by reason of common user. The defendants further deny that the plaintiffs had the original exclusive right to the use of the said names or that such right is restored to the plaintiffs by the Treaty of Peace. The defendants admit that they had imported twenty-two cases of Sanatogen and a consignment of Formamint but deny that it was inferior to the plaintiffs compounds or that their object in importing the said goods was to deceive the public as alleged. They further deny that the general make up, marking and appearance of the packages closely resemble the plaintiffs packages, and allege that the make up of their packages was of a description common to the trade. The defendants further allege that the plaintiffs have no right to the exclusive use of either the names Sanatogen and Formamint or to the use of the said get-up.

(3.) Eighteen issues were raised and at the beginning of the hearing Mr. Binning for the plaintiffs asked for issue of commission to England, America and Germany, to prove various allegations in the plaint on which the defendants have raised issues Nos. 1 3, 4, 8 and 11, I refused the application for commission and the trial went on chiefly on issues Nos. 2, 5, 7, 12 and 15. In my opinion, the issues on which Mr. Binning asked for a commission were not at all necessary for the decision of the case, and, at the end of the hearing, I was confirmed in my opinion that on the evidence as led before me the said issues were not at all necessary for coming to a decision in this case, The issue of a commission would have caused a very heavy expenditure of money and a good deal of delay in the decision of the suit, and after fully considering all the facts I came to the conclusion that neither the said expenditure nor the said delay was at all necessary.