TaxTMI 
TaxTMI 
1996 (9) TMI 629
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....n set of facts and the contentions raised by learned counsel for the parties would be dealt with soon thereafter. 4. S. No. 2957/89 is filed on 2nd November, 1989 by (i) Smt. S. Charat Ram & Shri N. R. Dongre Trustees of M/s. Chinar Trust, (ii) Shri L. P. Gupta and Shri Subodh Verma Trustees of M/s. Mansarovar Trust, also trading as M/s. Usha Shriram India, and (iii) M/s. International Ltd. against two defendants namely (i) M/s. Usha Rectifier, Home Appliance Division, and (ii) M/s. Usha Rectifier Corporation (India) Ltd. The suit seeks protection of plaintiffs trade mark and permanent injunction restraining infringement of registered trade marks as also passing off by the defendants and decree for accounts etc. The suit relates to registered trade marks USHA and USHA SHRIRAM (LOGO). 4.1. On I.A. No. 8219/89 filed by the plaintiffs, the court has on 2.11.1989 directed the defendants to remain restrained from manufacturing or selling electric irons, bread toasters, cooking range, electric ovens, microwave oven, geysers, immersion rods and mixes bearing the trade mark USHA or the mark/mark USHA RECTIFIER or any other mark or name of which trade mark USHA forms a part. 4.2. B....
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.... said was going on, it appears that the defenses raised by the defendants in the above said three suits made the plaintiffs wiser and they realised the necessity of striking at the root cause of the problem. On 24th September 1994, six plaintiffs, namely, (i) Usha International Ltd. (ii) The Jay Engineering Works Ltd. (iii) Usha Intercontinental (India), the trading name of General Sales Ltd.; (iv) Usha Shri Ram (India), the trading name of Mansarover Trust (v) Shriram Pistons and Rings Ltd., and (vi) Chinar Trust have jointly filed a suit impleading (i) Usha India Ltd. formerly known a Usha Rectifier Corporation (India) Ltd., and (ii) Usha Home Appliances Ltd., registered as suit No. 2149/94. The net of this suit is which the plaintiff companies were born and since how long have they been in existence, they claim the word USHA having been identified as trade mark exclusively of the plaintiffs as having acquired reputation and goodwill associated with the plaintiffs. It is alleged that whenever the mark USHA or the expression USHA Group or UIL or USHA brand or any other equivalent expression is used the public and the consumers are reminded of the plaintiffs' trade mark/trade. ....
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.... The advertisement prominently bore the mark Usha Home Appliances. 7.5. In views of the several restraint orders passed against the defendant No. 1 in the three suits noticed hereinabove, in 1993 the defendant No. 1 incorporated a wholly owned subsidiary in the name and style of M/s. Usha Home Appliances Ltd. (the defendant No. 2) having the same registered office as defendant No. 1. This was done to circumvent the order of injunction passed by the court against Home Appliances Division of the defendant No. 1. 7.6. Again in order to circumvent the orders of the court, the defendant No. 1 had adopted the name of Usha India Ltd. which name not only illegally uses the name USHA but also copies the acronym UIL of plaintiff No. 1. 7.7. The reliefs sought for by the plaintiffs in this suit are restraining infringement of registered trade marks of the plaintiffs, restraining the passing off by the defendants of their goods as that of the plaintiffs. For that purpose the plaintiffs have sought for the following three injunctions apart from the reliefs of rendition of accounts and delivery up etc. : (i) restraining defendants from using the trade mark/name and word USHA and/or t....
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....nbsp; " USHA 195537 20.4.1960 " USHA ARISTOCRAT 249632 3.6.1968 " USHA AIRKING 2436115 11.8.1967 " USHA DELUXE 243613 11.8.1967 " USHA EXHAUST 243619 11.8.1967 " USHA GYRO 249628 3.6.1968 " USHA MINIFLOW 249627 3.6.1968 " USHA NOVA 243618 11.8.1967 " USHA POPULAR 259985 13.10.1969 " USHA SUPREME 253893 3.1.1969 " USHA SENATOR 249629 3.6.1968 USHA PRIMA 243617 11.8.1967 USHA INJECTION EQUIPMENTS 400668 28.1.1969 7 & 12 FUEL USHA FRACTIONAL HP MOTORS 216308b 4.7.1970 7 USHA BOOKS/MAGAZINES 187918 2.12.1958 16 USHA STOVE 3060 4.8.1942 11 COOKING USHA PAINTS 119536 26.2.1975 2 ENAM....
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....HA 1756/61 29.12.1982 ZAMBIA " USHA 172718 27.2.1983 CHINA " USHA 17634 1.12.1980 JORDAN " USHA 1462 27.5.1981 QATAR " USHA 3122 6.6.1976 AFGHANISTAN FAN USHA A303021 13.12.1976 AUSTRALIA " USHA 19484 AFRICAN UNION " USHA BIK 3573 3.4.1976 BAHRAIN " USHA 492 10.6.1976 BURMA " USHA 083045 29.11.1971 BENELUX " USHA 81 19.6.1972 BANGLADESH " USHA 10292 10.3.1976 BULGARIA " USHA 22819 20.9.1991 CEYLON " USHA 16421 16.6.1975 CYRPUS " USHA 25350 21.6.1976 DOMINICAN " USHA 1105014 22.8.1978 FRANCE " USHA 9643 6.6.1975 FIJI " USHA 139 6.9.1962 HONGKONG " USHA 106641 22.7.1972 INDONESIA " USHA 9842 1.1.1978 IRAQ " USHA 43051 18.7.1981 IRAN " USHA 21277/C/79 11.10.1979 ITALY " USHA ....
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....; 24.7.1992 S. KOREA " USHA INJUNCTION EQUIPMENTS 244586 24.7.1992 S. KOREA FUEL USHA 72072 9.5.1992 EGYPT " USHA 9392/050 21.9.1993 NEPAL " USHA INTERCONTINENTAL LTD. Mark Regn. No. Date Class Goods USHA RADIOS, 406969 21.6.1983 9 TELEVISION ANTENNA SHRIRAM PISTONS & RINGS LTD. Mark Regn. No. ....
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....red publicity expenditure of over Rs. 5,950 lacs in respect of the trade mark and name USHA, spending over Rs. 90 lacs for the year 1993-94 only. Between 1983-84 to 1994-95, the plaintiffs have achieved a sales turnover of USHA products of over Rs. 46,682 lacs and over Rs. 55,000 lacs for the year 1993-94 only. Between 1983-84 to 1994-95, the plaintiffs have sold USHA brand consumer items of over 1527 lacs, and for the year 1993-94 over 200 lacs. 9.2. According to the plaintiffs the trade mark and trade name USHA is associated with the plaintiffs solely to the exclusion of the defendants in the minds of the public and the consumers of USHA goods and products since 1936. It is a mark and name that has an overwhelming reputation that belongs solely to the plaintiff to the exclusion of the defendants in the mind of the public. It is a mark, name and brand that is and has been used in almost every household, and by almost every consumer in India, both urban and rural and is associated solely with the plaintiffs to the exclusion of the defendants. 9.3. Defendant No. 1 was incorporated in 1962, twenty six (26) years after the plaintiffs began to use the single word as a trade mark ....
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....f No. 1, USHA International Limited (UIL) amounts to an illegal and unlawful appropriation of the plaintiffs trade mark and name USHA. It is a trade conspiracy to misappropriate the plaintiff's established and overwhelming reputation in the plaintiff's trade mark and name USHA. The defendants are illegally infringing the plaintiffs trade mark and name USHA. They are passing off themselves as the plaintiffs illegally and unlawfully in the minds of the public since the public associate the trade mark and name USHA with the plaintiffs as the plaintiff have been using the single word USHA as a trade mark and name continuously since 1936 whereas the defendants have never done so till date. It is not correct to say that there can be no confusion between USHA RECTIFIER and USHA in the minds of the public. To their further illegal and unlawful misappropriation of the plaintiffs trade mark and name USHA, the defendants have purportedly incorporated 32 companies using the name USHA of which : - 17 admittedly have not commenced business till date (including companies incorporated as far back 1962 onwards) - 8 allegedly commenced business in 1993-94 admittedly - 5 allegedly co....
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....k and hence are not entitled to the relief of injunction. The relevant defense whenever necessary to be noticed with any more details shall be so dealt with at its appropriate place. 12. Before proceeding to examine the several questions arising for decision, it will also be useful to note the names of the 32 companies with their respective dates of incorporation which belong to the defendants. They are as under : Sl No Name of the Company Date of Incorporation 1 USHA SPINNING & WEAVING MILLS LTD 6.4.1961 2 USHA RECTIFIER CORPORATION (INDIA) LTD 15.2.1962 3 USHA FORGING & STAMPING LTD 9.5.1962 4 USHA FLOUR & GENERAL MILLS LTD 9.2.1965 5 USHA SERVICES & CONSULTANTS LTD 20.9.1976 6 USHA MARKETING (P ) LTD 25.9.1980 7 USHA TELEVISION (P ) LTD 1.5.1982 8 USHA ISPAT LTD 13.3.1983 9 USHA VIDEO SYSTEMS (P ) LTD 27.6.1983 10 USHA DIDAK LTD 17.2.1986 11 USHA MARCONI MICROELECTRONICS LTD 1.7.1987 12 USHA GENERAL MILLS LTD 1.7.1987 13 USHA GEC PLESSY TELECOMMUNICATION (P ) LTD 6.1.1988 14 USHA AMORPHUS METALS LTD 19.1.1988 15 USHA PLESSY NETWORK....
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....achines. It obtained trade mark registration No. 003058 dated 4.8.1942 in relation to sewing machines. Soon this Group started expanding use of the trade mark Usha in relation to various domestic consumer goods. In 1947 USHA was registered trade mark for fans. Trade mark registration No. 311724 dated 17.1.1976 was obtained in Class 11 in relation to Room Heaters, stoves, ovens, toasters and other domestic appliances. Trade mark registration No. 276920 dated 14.1.1991 was obtained in class 9 in relation to electric flat irons. The details of several other registrations which have followed, all in the name of USHA, are noticeable from the list given in para 8 above of this order. 16. The defendants, on the contrary have pleaded user of the Company name Usha Rectifier since 1961. Some statements made in the written statement dated 27.3.1990 deserve to be specially noticed and mentioned. The defendants have pleaded - "the defendant has not used the plaintiffs' alleged trade mark USHA (Written Statement page 2 para (VI); the defendant's Company's name as registered in 1961 is "Usha Rectifier". The defendant cannot be prevented from using the term Usha Rectifier, simply lo....
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....ffs. 24. From the documents brought on record, it is clear that mostly in respect of household consumer goods, home appliances and various other productions of the plaintiffs they have been using the trade mark USHA Along with trade mark registration numbers and effective dates thereof whenever the trade marks are registered. The trade mark USHA is being used by the plaintiffs in respect of a few other products also which are not so covered by the registrations. As against this, the defendants have only a single registration and that too for U.R. logo wherein their corporate name appears in microscopic print. 25. A comparative evaluation of documents brought on record by both the parties clearly goes to show that the defendants are practicing deception in the field of trade mark USHA. This they are doing in several ways. At times they are using USHA as part of their corporate names but placed upon the goods so boldly and prominently as to appear as a trade mark. In their advertisements they are referring to themselves simply as USHA which is sure to create confusion. At times on their products and in advertisements they are using expressions like 'group USHA' or '....
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....Usha International Ltd. 31. From the above said discussion the following findings follow : (i) that USHA is the trade name owned by the plaintiffs to the extent to which they have registrations, they are the owners by virtue of registrations; otherwise, they are prior users of the trade mark USHA. (ii) that use of the word USHA by the defendants in any manner as to show trade mark/name of their goods amounts to infringement of the plaintiffs trade mark and passing off of the defendants goods as that of the plaintiffs. The use of the expressions such as USHA or Group USHA also amounts to attempt at passing off themselves as the plaintiffs, as the same is likely to cause confusion in the minds of the consumers. (iii) that the corporate name USHA (India) Ltd. in its full or abbreviated form as U.I.L. or as acronym ULI also amounts to passing off the defendants in the commercial world as plaintiffs. 32. During the course of hearing in support of their respective submissions the learned counsel for the parties have relief on a good number of decided cases and authorities. It is not necessary to refer to and deal with each of them as the principles are well settled. It wou....
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....37. Kerly (ibid, vide para 16.84) states as under : 'Use of one's own name' It would seem clear that there is in some circumstances a defense to an action for passing-off, that all the defendant was doing was to make a normal use of his own name; but the precise nature and extent of his defense are none too clear, the rather numerous authorities on the point being difficult to reconcile. The defense is certainly of limited scope; in particular, it does not extent to allow use of that name in relation to goods so as to pass off : "To the proposition of law that no man is entitled so to describe his goods as to represent that the goods are the goods of another, there is no exception." 38. The law as to concurrent right to use a title, mark or name has been so stated by Kerly (ibid, para 16.39) : 'Other cases of concurrent right' "There are other cases best considered as cases where the defendant has as good a title to use the mark or name complained of as the plaintiff has to use the mark or name with which (as he alleges) it is likely to be confused; as for instance, where the defendant has been using his mark or name for nearly as long as....
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....ries Ltd. v. Montari Overseas Ltd. 1995 (1) AD (Del) 1319, on a review of the case law and the authorities I have held : "The trend of judicial opinion appears to be that reputation or goodwill in business generally attaches with the trade name adopted by a house. Such reputation or goodwill would be protected by the court Copyright of the name by a competitor is likely to cause an injury to its business. No one is entitled to commence or carrying on business in such a way as to represented it to be the business of someone else or at least associated with such someone else. If a person or house uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business house, then the impugned, action or intended action would be prevented by the courts on the same principles which are applicable to ordinary cases of passing off relating to sale of goods. Innocence of the defendant is no defense. The law applies with more rigour when the defendant is an inanimate person such as a company and when the name consists of a coined word." (para 15) 43. In Bajaj Electrical....
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.... off action the injunction may relate to the use of a trading name or to the use of a mark or name on goods or to both these matters. An injunction relating to the use of a mark or name on goods may restrain user of the mark or name without clearly distinguishing the goods from the plaintiff, but it is difficult to comply with such an injunction. An injunction may be granted restraining user calculated to deceive, or imitation of get-up, or sale under a name or mark so closely resembling the plaintiff's as to be calculated to pass off or enable others to pass off goods as his, or the sale of goods other than the plaintiff's goods under a particular name unless it is first ascertained that the plaintiff's goods are not required. In other passing-off cases the order may not give the defendant the opportunity to distinguish his goods from the plaintiffs. In special cases the order may permit sales under a mark only if certain labelling precautions are taken. A mandatory injunction requiring a company to change its name may be ordered. (Halsbury's Laws of England, Fourth Edition, Vol. 48, para 263 at p. 172.) 50. Here a few relevant considerations as highlighted by t....
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.... were held entitled to an injunction against the defendants using the word EXXON and/or allowing its name in a form incorporating the word EXXON to remain on the Companies Registrar because it would be unlawful and damaging to the plaintiffs. His Lordship said : If it continues to do so, the act of so doing if any fraudulent is at least more unlawful and is clearly damaging to the plaintiff. If this is the situation I think that a court would be shutting its eyes to realities unless it did best that it could to prevent any such thing happening in future". Also see Montari Industries Ltd. (supra). 56. Adopting the corporate name USHA HOME APPLIANCES LTD. gives an impression that this was a company manufacturing marketing home appliances which have already acquired goodwill and reputation in the market with the trade mark/name USHA. 56.1. Though an injunction has to be issued restraining the use of respective names by these two companies, the operation of the injunction shall have to be suspended for a reasonable time. Kerly in Trade Marks (ibid, para 16.65) states : "Where an injunction is granted against limited Company carrying on business under its registered name, th....