TaxTMI 
TaxTMI 
2001 (11) TMI 978
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....the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar terms. The case of the plaintiff, sans unnecessary details, is that it is a 'company' incorporated and registered under the Indian Companies Act, 1913 and is an existing company under the Companies Act, 1956. It was incorporated in October 1945 with the name 'Mahendra and Mohammed Ltd.', which was subsequently changed to 'Mahindra and Mahindra Ltd.' on 13th January, 1948. It is the case of the plaintiff that the said company is a flagship company of Mahindra group of companies in which are included 15 other companies, namely : 1. Mahindra & Mahindra Financial Services Ltd. 2. Mahindra Exports Ltd. 3. Mahindra Steel Services Centre Ltd. 4. Mahindra Fort India Ltd. 5. Mahindra Applied Systems Technology Ltd. 6. Mahindra Sintered Products Ltd. 7. Mahindra Engineering & Chemical Products Ltd. 8. Mahindra Network Services Ltd. 9. Mahindra Information Technology Systems Ltd. 10. Mahindra Realty & Infrastructure Developers Ltd. 11. Mahindra USA Inc. USA 12. Mahindra Hellenic Auto Industries SA Greece 13. Mahindra British Telecom....
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....st identical and in any event deceptively similar. In the prospectus of the defendant the words "Mahendra and Mahendra" are more prominently written than the rest of the names. According to the plaintiff the defendant wishes and intends to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff. The plaintiff apprehends that by the use of name/words deceptively similar to that of the plaintiff's name as its corporate name the intention of the defendant is to pass-off or likely to pass-off and to enable others to pass-off its business and products as those of the plaintiff. It is the contention of the plaintiff that the defendant by use of the said words is trading on the goodwill and reputation of the plaintiff.The plaintiff in the notice issued on 28th August, 1996 had called upon the defendant to change its name. It had also moved the Securities and Exchange Board of India and various stock exchanges in the country drawing their attention to the fact that the defendant was using a deceptively similar corporate name as th....
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.... stated that the name 'Mahendra' is a household name in Gujarat and there are several businesses being carried on in the said name throughout Gujarat. The defendant further stated that its products are, in no way similar to the products and businesses of the plaintiff. The business carried on by the defendant does not overlap with the business of any of the companies enlisted by the plaintiff. The defendant pleads that it has a reputation of its own in the name of 'Mahendra & Mahendra' and cannot derive any benefit by the name which is alleged to be similar to that of the plaintiff. The assertion of the plaintiff that the trade mark 'Mahindra' and/or 'Mahindra & Mahindra' have come to be identified with the plaintiff or the plaintiff's group of companies in any manner, has been denied by the defendant. The defendant has also denied that the name of its company can be said to be deceptively similar to that of the plaintiff. The plea of passing-off or likelihood of passing-off of trade or business of the plaintiff has been denied. The defendant has also set up the plea that the balance of convenience is not in favour of the plaintiff nor the plaintiff would suffer irreparable loss in....
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....ered trade mark of Mahindra & Mahindra Company. The appellants want to use the said trade mark by name Mahendra & Mahendra Paper Mills Ltd., for which the company was incorporated in the year 1994. However, before the learned Single Judge, the appellants have failed to produce any material on record to show to what extent the appellants were doing business. Further, considering the reasons recorded by the learned Single Judge, this appeal is dismissed. ..." . Hence, this appeal by the defendant. The main thrust of the submissions of Shri P. N. Misra, learned senior counsel for the appellant, was that the present case is not an action for infringement of trade mark but it is an action in passing-off the business and services. In the absence of any similarity of the goods manufactured or sold by the parties the tests of deception or confusion amongst the consumers does not arise. According to Shri Misra, the action in passing- off is not to be considered in the abstract sense; it has to be judged on the facts and circumstances of the case. The learned counsel contended that the defendant has been doing business since 1974 using the trade name "Mahendra" in a wide range of pr....
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....identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.Section 106 in which is enumerated the reliefs available in an action for infringement or for passing-off provides in clause (c) of sub-section (2) that : "Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or an account of profits in any case - (c) where in a suit for passing-off the defendant satisfies the court - (i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiff's trade mark, he forthwith ceased to use the trade mark complained of." The question that arises for determination in this case is, whether, on the facts and circumstances of the case, the High Court committed an error in granting the plaintiff's prayer for interim injunction. This question has been conside....
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....unction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated :... is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The relief for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies." The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear of a prima facie case. The court also, in restraining a defendant from exerci....
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....a number of decisions of this court and courts in England, this court made the following observations : 'Here the point is in relation to relative strength of the parties on the question of "passing-off". As discussed under Point 5, the proof of resemblance or similarity in case of passing off and infringement are different. In a passing-off action, additions, get-up or trade-dress might be relevant to enable the defendant to escape. In National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1948 AIR(Mad) 481, the passing-off action failed. But thereafter James Chadwick Co. succeeded in an appeal arising out of the registration proceedings and the said judgment was confirmed by this court in National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1953 AIR(SC) 357. It was held that the judgment in the passing-off case could not be relied upon by the opposite side in latter registration proceedings. In the same tone, Halsbury (Trade Marks) 4th edn., 1984, vol. 48, para 187) says that in a passing-off action the "degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a regi....
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.... at the same time not disregarding the common parts ? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p. 597, para 39) that " the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK. ...Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered :- (a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of car....
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....irloskar', held : 'The principle of balance of convenience applies when the scales are evenly balanced. The existence of 1st appellant in each appeal is very recent whereas the existence of the respondents belonging to "Kirloskar group of companies" has been for over a period of 50 years. On their own showing, the appellants are not using the word "Kirloskar" as trade mark but as part of trading style whereas the respondents have not only acquired distinctiveness and goodwill in the word "Kirloskar" but it is even the registered trade mark of the 1st respondent. There is sufficient evidence on record to show that the huge business is carried by "Kirloskar group of companies".There is nothing on record to show the extent of the business of the appellants. The 2nd appellant has throughout been aware about the business reputation of the respondents and efforts of the respondents in protecting their rights in the trade marks as also of preventing others to use the word "Kirloskar" as a part of the trading name or trading style. By extant of the interim injunction in favour of the respondents, the appellants are not prevented from carrying on business without the word "Kirloskar" for....