Passing off and trademark restraint limited to Class 3 goods; no damages awarded for lack of proof of loss.

Territorial jurisdiction was upheld because sales of the impugned goods in Delhi were admitted, so no further proof was required. The plaintiff's prior use and registration of FENA were accepted, and the earlier Registrar's finding on deceptive similarity was given weight; however, confusion between FENA and FINA was found only for Class 3 goods, not for dissimilar goods such as lubricants outside that class. The defendants failed to establish prior user rights or registration in their favour. Damages and rendition of accounts were refused for want of evidence of loss, and a permanent injunction was granted only in respect of Class 3 goods.

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Issues: (i) Whether the Court had territorial jurisdiction to entertain the suit; (ii) whether the plaintiff was the proprietor of the mark FENA and whether use of FINA by the defendants amounted to passing off, and to what extent relief could be granted; (iii) whether the defendants were prior users and registered proprietors of FINA, and with what effect; (iv) whether the plaintiff was entitled to damages or rendition of accounts.

Issue (i): Whether the Court had territorial jurisdiction to entertain the suit.

Analysis: The plaintiff relied on sale of the impugned goods at Delhi through defendant no. 3. The defendants did not deny the allegation in the pleadings and the sale within Delhi was treated as admitted. On that basis, further proof was not required.

Conclusion: The issue was decided in favour of the plaintiff.

Issue (ii): Whether the plaintiff was the proprietor of the mark FENA and whether use of FINA by the defendants amounted to passing off, and to what extent relief could be granted.

Analysis: The plaintiff's prior use and registration of FENA were accepted. Considerable weight was given to the earlier order of the Registrar, which had already found FENA to be the plaintiff's mark and FINA to be deceptively similar for Class 3 goods. Applying the principle of comity, that finding was relied upon for the present dispute. The Court, however, distinguished between Class 3 goods and the defendants' goods outside that class, holding that the marks were likely to confuse consumers only in relation to Class 3 goods and not in relation to lubricants or other dissimilar goods.

Conclusion: The plaintiff succeeded only in relation to Class 3 goods and failed as to goods and services outside Class 3.

Issue (iii): Whether the defendants were prior users and registered proprietors of FINA, and with what effect.

Analysis: The defendants advanced inconsistent versions of prior adoption and produced no evidence to prove prior use. The earlier order of the Registrar had also found that prior use was not established in their favour.

Conclusion: The issue was decided against the defendants.

Issue (iv): Whether the plaintiff was entitled to damages or rendition of accounts.

Analysis: No evidence of pecuniary loss was led, and the defendants were not shown to be trading in detergents, soaps or cosmetics in India under the impugned mark. In the absence of proof of loss, monetary relief was not justified.

Conclusion: The plaintiff was not entitled to damages or rendition of accounts.

Final Conclusion: A permanent injunction was granted only against use of the impugned mark for Class 3 goods, while no restraint was imposed for goods outside that class, and no monetary relief was awarded.

Ratio Decidendi: A deceptively similar mark may be restrained only to the extent that likely confusion is established on the relevant market, trade channel and class of consumers, and prior findings of a competent trade mark authority may be given due weight where they directly bear on the same issue.

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