1997 (5) TMI 440 - HC - Indian Laws

Appeal allowed, injunction order set aside. Trial court to decide suit without influence.

The appeal was allowed, setting aside the injunction order dated 17-1-1992. The trial court was directed to decide the suit without being influenced by ... Likelihood of confusion - passing off - distinctiveness of a trade name - territorial jurisdiction under the Trade and Merchandise Marks Act - jurisdiction for copyright infringement under the Copyright Act - balance of convenience in interlocutory injunctionsLikelihood of confusion - passing off - distinctiveness of a trade name - Similarity of the plaintiff's and defendant's wrappers and the consequent likelihood of deception or passing off. - HELD THAT: - The Court compared the respective wrappers and get-up and found material differences in layout, prominent words, colours and devices: the plaintiff's mark prominently bears 'Royal' in red over 'Dhodha' with a crown and an eagle device, references to 'Estd. 1912' and a round seal, whereas the defendant's wrapper prominently displays 'MAINGI'S' and 'TODHA' in bold black, a circular device bearing 'VRK' and different colour schemes. Phonetic similarity between 'Dhodha' and 'Todha' was noted but the Court held that visual and other distinguishing features were sufficient to dispel a prima facie likelihood of confusion to an ordinary purchaser. The Court further observed that whether 'Dhodha' is a generic name or a distinctive trade name required oral evidence and could not be decided at the interlocutory stage. Reliance on precedent addressing similarity was considered but the Court concluded that on the material before it the wrappers did not so closely resemble one another as to mislead a person usually dealing in such goods. [Paras 6, 7, 8, 9]The Court held there was no prima facie similarity sufficient to cause deception or passing off on the evidence before it; the question whether 'Dhodha' is a generic name was left for trial.Territorial jurisdiction under the Trade and Merchandise Marks Act - jurisdiction for copyright infringement under the Copyright Act - Whether the Civil Court at Ghaziabad had territorial jurisdiction to entertain the suit insofar as it alleged infringement of a registered trade mark or passing off. - HELD THAT: - The plaint alleged infringement of the plaintiff's registered trade mark and passing off; Section 105 of the Trade and Merchandise Marks Act (as discussed by the Court) restricts suits for infringement or passing off of registered trade marks to the District Court having territorial jurisdiction where the cause of action arises. Applying that principle and the facts pleaded (defendant carrying on business in Kot Ka Pura and plaintiff's registered trade mark rights located at Faridkot), the Court held that the Ghaziabad Court did not have territorial jurisdiction to try the causes of action under the Trade and Merchandise Marks Act. Although Section 62 of the Copyright Act would permit suits where the plaintiff carries on business (and the plaint alleged business at Ghaziabad), that statutory jurisdiction under the Copyright Act could not cure lack of territorial jurisdiction in respect of the trade mark/passing off causes of action joined in the same suit. The Court therefore concluded the trial court had no territorial jurisdiction to entertain the trade mark/passing off claims. [Paras 10, 11]The Ghaziabad Court lacked territorial jurisdiction to try the trade mark and passing off causes of action; copyright jurisdiction did not validate the joined trade mark claim in that forum.Balance of convenience in interlocutory injunctions - Whether the interlocutory injunction granted in favour of the plaintiff should be continued. - HELD THAT: - The Court observed that where jurisdiction is prima facie lacking, the equitable consideration of balance of convenience must yield to the jurisdictional defect since jurisdiction goes to the root of the matter. Having found that the Ghaziabad Court lacked territorial jurisdiction over the trade mark/passing off causes of action and having found no strong prima facie case of deceptive similarity on the wrappers, the Court concluded that the balance of convenience favoured the defendant. The defendant had been restrained from conducting business since the injunction; if the injunction were continued it would cause irreparable prejudice to the defendant, whereas any eventual decree could be remedied by damages. [Paras 12, 13, 14]The balance of convenience favoured the defendant and the interlocutory injunction in favour of the plaintiff was not maintainable.Final Conclusion: The appeal is allowed; the interlocutory injunction dated 17-1-1992 granted by the 1st Additional District Judge, Ghaziabad is set aside because (a) on the material before the Court there was no prima facie likelihood of confusion or passing off, (b) the Ghaziabad Court lacked territorial jurisdiction to try the registered trade mark/passing off causes of action, and (c) the balance of convenience favoured the defendant. The trial court is directed to decide the suit on evidence before it without being influenced by observations made in this order. Issues Involved:1. Infringement of Plaintiff's Copyright2. Passing Off of Goods3. Territorial Jurisdiction4. Balance of ConvenienceDetailed Analysis of the Judgment:1. Infringement of Plaintiff's Copyright:The plaintiff, M/s. Dodha House, alleged that the defendants were infringing their copyright by using a similar art work, label, and wrapper for their product 'Maingi's Todha.' The plaintiff's art work and wrapper were registered under the Indian Copyright Act, and they claimed exclusive rights to use these elements. The defendants contended that their trade mark 'Maingi's Todha Sweet' was distinct and had been in use for about 20 years. They denied any similarity or imitation that could cause deception or confusion. The court examined the wrappers of both products and concluded that the similarity was not sufficient to cause deception among customers, as there were distinguishable features in both wrappers.2. Passing Off of Goods:The plaintiff accused the defendants of passing off their goods as those of the plaintiff by using a similar trade name and packaging. The court noted that while the names 'Dodha' and 'Todha' might sound phonetically similar, the visual differences in the packaging were significant enough to prevent confusion. The court referenced previous cases to emphasize that both visual and phonetic similarities must be considered, but ultimately found that the differences in the wrappers were sufficient to avoid confusion.3. Territorial Jurisdiction:The defendants argued that the court at Ghaziabad had no jurisdiction to try the suit, as their business was conducted in Kot Ka Pura and not in Ghaziabad. The court acknowledged that under Section 105 of the Trade and Merchandise Marks Act, a suit for infringement or passing off must be filed in the district where the defendant resides or carries on business. Since the plaintiff's business was also conducted in Ghaziabad, the court had jurisdiction under the Copyright Act. However, for matters related to the Trade and Merchandise Marks Act, the court at Ghaziabad lacked territorial jurisdiction. The court concluded that the suit could not be entertained in Ghaziabad for issues related to the Trade and Merchandise Marks Act.4. Balance of Convenience:The court considered the balance of convenience, noting that the injunction had been in place since 1992, preventing the defendants from conducting their business. The court reasoned that if the suit were ultimately dismissed, the defendants would have suffered irreparable loss, whereas the plaintiff could be compensated for any loss if the suit were decreed in their favor. The court found that the balance of convenience favored the defendants, and the injunction order could not be sustained.Conclusion:The appeal was allowed, and the injunction order dated 17-1-1992 passed by the 1st Addl. District Judge, Ghaziabad was set aside. The trial court was directed to decide the suit based on the evidence without being influenced by the observations made in this order.