AI OCR 
TaxTMI 
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1996 (9) TMI 629
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....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. By is 9915/93, the plaintiffs brought to the noti....
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....he 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. To take advantage of the reputation earned by trade mark/tra....
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....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 the acronym UIL in their corporate names, trading style etc. (ii) restrainin....
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....G USHA PAINTS 119536 26.2.1975 2 ENAMELS USHA MOTOR 216380B 4.7.1977 7 ELECTRIC USHA LUBRICATING OIL 248336B 15.2.1972 4 USHA 278335 15.2.1972 26 NEEDLES USHA 203071B 15.6.1967 8 SCISSORS USHA GRINDERS 336101 1.5.1978 7 DIE JAY ENGINEERING WORK LTD - ABROAD Mark Regn. No. Date Country Goods USHA MACHINE B826355 5.9.1961 ADEN SEWING USHA 3122 16.6.1976 AFGANISHTAN " USHA A169226 14.9.1961 AUSTRIALA " USHA 24924 21.11.1975 ALGERIA " USHA 19484 24.9.1979 AFRICAN UNION " USHA BIK 1530 11.8.1967 BAHRAIN " USHA 492 10.6.1976 BURMA " USHA B830450 29.11.1971 BENELUX " USHA 950970 13.3.1962 BELGIUM " USHA 80 19.6.1972 BANGLADESH " USHA 7394 11.10.1961 CYPRUS " USHA 9643 6.6.1975 FIJI " USHA 138 6.9.1962 HONGKONG " USHA 106641 13.5.1975 INDONESIA " USHA 9842 15-8-1963 IRAQ " USHA 43051 19.7.1956 IRAN " USHA 21277/C/79 11.10.1979 ITALY " USHA B11982 16.8.1963 KENYA " USHA M/29522 20.1.1958 MALAYA "....
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....1993 THAILAND " USHA B15961 17.7.1989 TANZANIA " USHA B855250 14.10.1963 U.K. " USHA 50750 9.7.1985 U.A.R. " USHA 392 3.10.1980 TUNISIA " USHA 28932 7.9.1980 SYRIA " USHA 142892 11.12.1980 TAIWAN " USHA 1757/61 30.12.1961 ZAMBIA " USHA 172719 27.2.1973 CHINA " USHA 17635 1.12.1987 JORDAN " USHA 1462 26.5.1987 QATAR " USHA 5339 28.1.1993 ADEN " USHA HP MOTORS 3122 16.6.1976 AFGHANISTAN FRACTIONAL USHA 24924 21.11.1975 ALGERIA " USHA 294375 19.2.1976 AUSTRALIA " USHA 492 10.6.1976 BURMA " USHA 16508 26.8.1971 CYPRUS " USHA 9643 6.6.1975 FIJI " USHA 43051 19.7.1975 IRAN " USHA B21975 19.6.1975 KENYA " USHA B1048978 3.7.1975 U.K. " USHA ENGINE PUMP 3122 16.6.1976 AFGHANISTAN DIESEL USHA 492 10.6.1976 BURMA " USHA B21975 19.6.1975 KENYA " USHA B1048978 3.7.1975 U.K. " USHA 50749 11.2.1976 U.A.R. " USHA 31742 27.3.1985 SYRIA " ....
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....eved a sales turnover of USHA products of over ₹ 46,682 lacs and over ₹ 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 and name USHA. Between 1962 till December, 1994 the defendants have never used the single word USHA as a trade mark, name or corporate name. Defendant No. 1 illegally and unlawfully attempted to....
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....f'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 commenced business between 1977 and 1992 admittedly. None of these companies have used the single word USHA as a trade mark or a trade name for any of their products which are available to the cons....
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....re 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 NETWORKS (P ) LTD 3.1.1989 16 USHA CAD (P ) LTD 10.4.1989 17 USHA DRAGGER (P ) LTD 18.6.1990 18 USHA CCI COMPUTERS LTD 17.8.1990 19 USHA HOUSING DEVELOPMENT CO 23.10.1991 20 USHA MATRA LTD 12.10.1992 21 USHA AVIONICS (P ) LTD 20.10.1992 22 USHA HYBRID CIRCUITS (P ) LTD 20.10.1....
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.... 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 long thereto, the plaintiffs have chosen to deal in certain items with the brand name USHA (W.S. page 2, para VII). In any case the terms USHA and USHA RECTIFIER are totally different (W.S. page 3 Para X). 17. The documents filed by the parties go to show that while the plaintiffs commenced using trade mark Usha in the year 1936, the defendant alleges its association with the word USHA for the....
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....oducts 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 'USHA Group' for themselves. 26. I may now examine the case from the aspect of the defendants having used USHA as part of their corporate name. According to the plaintiffs USHA was the name of one of the female members of the family of the founder of the plaintiff's group. According to the defendants it was the name of the daughter of Mr. Kulwant Rai, the founder of the defendants group. As it will be ....
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....ngement 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 would suffice to state the relevant settled legal principles and refer to a few authorities as necessary. 33. The following observations from Parker Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265, by Lord Morris have been quoted by way of preface to a Division Bench Judgment of this court in B.K. Engineering Company, Delhi v. U.B.H.I. Enterprise (Regd.) Ludhiana and another AIR1985Delhi210 . "In the interests of fair tra....
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....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 the plaintiff has his, or where both parties are equally unmeritorious. Since, however, there is recall no such thing as right to use a mark or name, such cases require more careful analysis for the purpose of pleading a defense." 39. In Rodgers (Joseph) & Sons Ltd. v. W. N. Roders & Co. (1924) 41 RPC 277, which is probably the first case available on the point and which has held the field till the da....
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....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 Electricals Ltd. Bombay v. Metals and Allied Products, Bombay and another AIR1988Bom167 , the defendants were using their family name not as a trading style but as a trade mark or trade sign. The Division Bench held that such user was not permissible. "The fact that damages would be suffered by the plaintiff cannot be ignored and the actual sufferance of damages cannot be established on the dat....
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....training 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 the learned counsel for the defendants shall have to be kept in view. 51. In S. No. 2149/94 vide para 10 of the plaint, the plaintiffs have stated that since 1962 - "the main business of the defendant No. 1 comprised of Engineering, iron and steel, electric components and industrial software design and not consumer goods". In rejoinder to is 7170/94, the plaintiffs have ....
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.... 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, the injunction is usually suspended for a short time to allow a company to change its name." 57. For the foregoing reasons IAs. Nos. 8219/89 and 9915/93 in S. No. 2957/89; is No. 8283/89 in S. No. 2991/89; is No. 8488/89 in S. No. 3086/89 and is No. 8655/94 in S. No. 2149/94 filed by the plaintiffs are allowed. The following injunctions are issued so as to rem....