TaxTMI 
TaxTMI 
1985 (11) TMI 239
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....nnection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chap. VIII;" A 'mark' is also defined in the Act in Section 2(j) which reads as under: (j) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter of numeral or any combination thereof; A "name" is defined in Section 2(k) which reads as under: (k) "name" includes any abbreviation of a name. 3. It is not asserted by the Plaintiff in this suit that Super flame is a "registered trade mark". SUPERFLAME not being a registered trade mark, the instant suit cannot be an "infringement" action, and it is conceded to be a "passing off action. 4. A distinction between an infringement action and a passing off action is statutory by virtue of the provisions of Section 27 of the Act. Section 27(1) of the Act prohibits institution of any proceedings to prevent or to recover damages for infringement of an unregiste....
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....ll in relation to gas appliance and that SUPERFLAME connotes the products of the Plaintiff exclusively. It is also stated that SUPERFLAME has acquired a secondary signification in the trade and amongst the parties with the public and that there is extensive advertisement of SUPERFLAME in various media such as radio, television, newspapers, magazines, public hoardings etc. It is also asserted in the plaint that use of SUPERFLAME by any rival trader as a part of its name or in relation to its goods is likely to lead to confusion and deception and result in passing off such traders' business and goods as the business and goods of the plaintiff. 11. It is asserted that Blue Superflame Industries, the Defendant 1, and Ganga Ram, Defendant 2, who is alleged to be a partner of Defendant 1/and/or a sole proprietor have recently started manufacturing and selling gas appliances under the trade mark and/or house mark SUPERFLAME and that they have also kept Blue Superflame Industries as their trading style of which the word SUPERFLAME is an essential key and conspicuous portion and has also placed SUPERFLAME at various places upon its goods and/are advertising such goods under their tra....
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....nces and is common the trade of gas appliances and that the word SUPERFLAME is in common use for as appliances, words being used on appliances being SUNFLAME, HOT FLAME, FLAMELINE etc. and that SUPER and HOT are distinct from each other. It is asserted that the plaintiff's trade name Globe Super Parts, and the Defendant's trade name Blue superflame Industries are absolutely different and distinctive and one cannot be confused with the other. It is also asserted that superflame comprises of two commonly known English words and monopoly or exclusive rights cannot be claimed over it; that the word SUPER is laudatory and is (sic) "incapable of distinguishing". It is also that the Plaintiff did not have any right much less exclusive right to use the words SUPER and FLAME. The objection is also taken in the preliminary objections to the valuation the suit, which is stated to be not an accordance with the Suits Valuation Act and that inadequate Court-fees has been paid. It is stated the suit is based on a false agreement of a connection between Ganga Ram Verma and Defendant 1; that the suit has been filed because of trade rivalry and that the suit suffers from delay, laches and ac....
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....s or reputation. It is asserted that the Defendants' goods which are marketed under the trade mark HOT FLAME enjoy a good demand and are of superior and standard quality: that not a single incident of confusion has been recorded. It is denied that use of SUPERFLAME, as a part of trade name, is likely to lead to passing of Defendants' goods as those of the plaintiff. It is denied that the goods of Defendants have been advertised under the trade mark BLUE SUPERFLAME INDUSTRIES. The suit is described by the Defendants as false, frivolous, vexatious and misconceived, 15. In the replication, the pleas taken in the written statement are traversed and it is specifically, asserted that the trade mark SUPERFLAME has been incorporated as an integral and key part of the firm name of the Defendant. It is asserted that the Plaintiff is not seeking a monopoly in the use of the word FLAME that there could be no objections to Defendants' use of the word HOT FLAME as a part of its firm name such as Blue Hot Flame Industries. But the Defendant's use of SUPERFLAME in the firm name shows the fraudulent and mala fide state of mind. It is further stated that SUPERFLAME is a coined fan....
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....titute the suit, sign and verify the plaint on behalf of Super Parts Pvt. Ltd., Plaintiff (sic) 21. Much argument has been addressed on this issue and the arguments have been divided into two parts by the Defendant. 22. The Defendant relies upon AIR 197l SC 198 Saheb Ram v. Financial Comm(sic) and says that a legal plea can be raised at any time and that no formal issue regarding thereto need to be framed. This authority is cited in support of a contention which has been raised that the suit is not maintainable. 23. The reason why the above contention has been made is because the Plaintiff was described thus: "Globe Super Parts (Sole proprietor Super Parts Pvt. Ltd.), 17/1, Mathura Road, Faridabad (Haryana)". Because of the fact that the name Super Parts Pvt. Ltd., has given within brackets, it is urged by Mr. Aggarwal that the real Plaintiff is not Super Parts Pvt. Ltd., but Globe Super Parts. 24. Mr. Aggarwal urges the above contention because evidence has been recorded in this case to the effect, that Globe Super Parts was the partnership concern. After a while the firm Globe Super Parts was reconstituted, and at the time of reconstitution Super Parts Pvt. Ltd., a co....
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....be Super Parts, a partnership concern which was in fact a predecessor of Super Parts Pvt. Ltd. Super Parts Pvt. Ltd continues to carry on the same activities as Globe Super Parts as Globe Super Parts had acquired a name and reputation over the years with people who used to trade with them. All the letter heads, which are to be found on record of this case relating to Super Parts Pvt. Ltd., contain both the names. Globe Super Parts and Super Parts Pvt. Ltd. Super Parts Pvt. Ltd. have, therefore, continued to hold out and rely upon the connection between Super Parts Pvt. Ltd., and Globe Super Parts, which is historical qua them. 26. The meaning and effect of 'Brackets' in the English language, are found in "Webster International Dictionary" at Page 265 which says that what is placed within the Brackets is "put in the same class", or in other words what is contained within the Brackets is equated to the word that proceeds the Brackets. In "The Family Word Finder" Bracket is stated to mean "to group" and in "Shorter Oxford Dictionary" it is stated to mean "to mention together as equal". 27. I, therefore, hold that merely because that the plaint is instituted by having rec....
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....that business. 30. That there is a connection between Defendant 1, and Defendant 2 is also established by the deposition of D.W. 2, a dealer of goods of Defendant No. 1. He admitted that Ganga Ram Verma, visits him in connection with the work of Defendant 1. 31. In view of the depositions of D.W. 1 Sri Kant Verma and D.W. 2 Mohd. Abdulla. I am satisfied that there is a connection between the work being done by Defendant 1 and Defendant No. 2. Defendant 2 has, as deposed to by Mohd. Abdulla D.W. 2, been actually riding the business of Defendant 1. In' the circumstances, keeping in view the depositions of the two witnesses D.W. 1 and D.W. 2, I am of the view that there is no misjoinder of parties in this case, and the issue is decided accordingly. Issue No. 3 Whether the Plaintiff is the owner of the trade mark/house mark 'Superflame' in respect of gas appliances? 32. At the outset it must be ascertained whether there is something recognised in law, as a "house mark". Trade mark is a recognised concept in law. We have the Trade and Merchandise Marks Act, 1958 which gives statutory sanction to trade marks, whether they are registered under the Act, or ....
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....d as a trade mark. He said that the mark had become in effect the House Mark of the whole group of companies formed by the applicant company and also associated companies. There is no evidence in the instant case, of there being a group of companies controlled by any particular company which would lead to a finding that the word SUPERFLAME had become a house mark. In any case, the order in (1930) 47 RPC 37 is not an order of Court and it is not possible for me to say on the basis of this one single order that some legal recognition needs to be given, the concept of the House mark. 34. Mr. Anand also refers to an order of a Division Bench of this Court in AIR 1985 Delhi 210: B.K. Engineering Co. v. U.B.H.I. Enterprises Ludhiana. This was an order passed' on an interlocutory application without recording any evidence. A perusal of the judgment shows that the learned Judges did not refer to (1930) 47 RPC 37, or attempt to define what a House Mark meant if it did connote something in law. They appear to have assumed that the contention of Mr. N.K. Anand (who appeared for the Plaintiff in that case also) that "BK'" was a House Mark without scrutinising the submission. As stat....
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....own by various judgments. The pre-conditions are because some names are common, and most words are part of the language. The words which are of common usage; and the words, which are uncommon "coined" or "Fancy words", are treated differently, as coined words or fancy words are not part of language. 41. One of the earliest cases to decide that there can be exclusive appropriation of a name/word is a case decided by the House of Lords on 13th December, 1877 reported as (1877) 3 AC 376; "Singer" Machine Manufacturers v. William Newton Wilson. This case set at rest a controversy which existed amongst the lawyers that a 'name' cannot be subject-matter of exclusive appropriation by any person. The facts of the case were that in 1850 Mr. I.M. Singer of New Jersey, USA began the business which was thereafter carried on by the Singer machines manufacturers, of manufacture sewing machines of various kinds, of different constructions. From time to time, he had taken partners into the concern, and finally was incorporated as a Company by the legislatures of New York and New Jersey, by Acts of Incorporation. The machines manufactured by Mr. I. M Singer were subject-matter of various....
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....r or Singer's machines, and they have become known as such throughout the world, and the name has become, and is a trade mark of the plaintiffs; observed that "if these allegations are true, if the term Singer or Singer's machine denotes to the mind of the public or of those likely to purchase such articles, not a particular type, or shape and arrangement of parts of the machine, but a machine the manufacture of the particular person or firm; and if the Defendant whose name is not Singer, represents his machines as being Singer or Singer's machines, there is at least a case which calls upon the Defendant to show some reasons which would justify him in thus making a use of a name which is not his own, but which is the name, and is known to indicate the manufacture, of the plaintiffs. The Lord Chancellor, in view of the facts of the case, and from what had transpired in the Courts below said that he "has no option but to direct remitting of the case to the Chancery Division for receiving evidence and thereafter disposed the whole of the case upon evidence." In other words the lord Chancellor ordered the re-trial of the matter. The taw Lords agreed with the action proposed....
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.... to stop others, like Defendants Banham, from using the word 'Camel Hair with respect to the beltings manufactured by them. 48. This case was decided by the House of Lords on or about 26th March, 1896. The case was started on 3rd May, 1893 when Frank Reddaway and F. Reddaway & Co. Ltd., commenced the suit in the Manchester District Registry of the Queen's Bench Division against George Banham and George Banham & Co. Ltd., for an injunction to restrain the Defendants from infringing certain trade marks and from continuing to use the word 'Camel in such a manner as to pass off their goods as and for the plaintiff's goods. It was asserted that the plaintiffs had, during the course of trade, sold very large quantities of beltings as 'camel beltings' and that the word 'Camel' appeared upon, or was attached to their beltings as 'camel beltings'. In England and abroad the word 'camel', or the figure of a camel, was universally understood in all the places where their beltings was sold, to indicate goods to be of plaintiffs manufacture. It was also asserted that beltings was sold as 'camel' and 'camel hair beltings also. The act....
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....e 19, said that "words never in use before, and meaningless except as indicating by whom the goods in connection with which it is used were made, there could be no conceivable legitimate use of it by another person". Thus the "coined" "created", "Fancy", or "new" words which were not in use in any language before, and which did not have any meaning in the ordinary language, us evidenced by their absence in authoritative and standard language dictionaries, were the exclusive property of the person who first "coined", or created them and adopted them for use, and used it in connection with any article the only reason why a hitherto meaningless word would be used by another in connection with his activities would be to deceive the public, that the letters article, thing or goods or the articles, thing or goods of the former. He also observed that "he was unable to see why a man should be allowed in this way, more than in any other, to deceive purchasers into the belief that they are getting what they are not, and thus to filch the business of a rival". 52. Not only words can be used is connection with articles of manufacture and denote a connection in course of trade for the purpos....
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....e skill of the author less will be the time taken what would be relevant would be whether what has originated from the author is new, or distinctive, even a successful adaptation from another language. 54. As regards cases in which names of books have been protected, a reference can be made to Weldon v. Dicks (1878) 10 Ch. D 247, at 260 and 264; : W.H. Allen & Co. v. Brown Watson Ltd., 1965 RPC 191 at 194; Mathieson v. Sir Issac Pitman & Sons (1930) 47 RPC 541. Warner Brothers Pictures Corpn. v. Majestic Pictures Corpn, 70 Federal Reports (2nd)310. 55. In the Mathieson case (1930) 47 RPC 541, it was held at page 550 that secondary meaning in connection with names/titles of the books must connote that in the market where such books are purchased, and among the member of the public who were buyers of these books, the mere title "(How to Appeal Against Your Rites)" indicated the work of the author of it (Mr. Andrew Douglas Lawrie), and perhaps further indicated that it was published by a particular publisher. On the Principles given in (1930) 47 RPC 547 Books/Titles like "Godan"- is associated with Prem Chand, "Gitanjali" with Tagore, "Das Kapital" with Marx, "Mien Kampt" with H....
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....the name Bassin's Cut-Rate Stores. 58. The observations at page 149 establish that there was litigation between National Biscuit Company of America and Kellogg Company, not only in England and Canada but also in the United States of America. In the USA the National Biscuit Company had sought to restrain the Kellogg Company from using the word "Shredded Wheat" in connection with their goods. It is noted in 55 RPC 125 at 149 that initially the Company failed before the District Court of Delaware, and on appeal US Circuit Court of Appeals for the third circuit, the decree was affirmed, Subsequently on re-arguments before the same Judges of the Circuit Court of Appeals, that decision was reversed and decree was entered for National Biscuit Co., enjoining the Defendant Kellogg from the use of the name 'Shredded W heat' as its trade mark, and from advertising or offering for sale its product in the form and shape of the plaintiff's biscuit in violation of its trade mark. 59. The Privy Council were aware of the reheard case judgment Instead of relying upon the latter judgment of the Circuit Court of Appeals the Privy Council preferred the overruled earlier judgment o....
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....redded wheat biscuit. A shredded thing is not uniform or smooth. I filament is. A wire is a filament, not a shred. 64. To me it appears that there is conflict of judicial opinion on the matter of product of this patented process, between the Courts of America and the Courts in England. Lord Russel of Killowen himself recognised the process was one of mashing rather than shredding. I am, therefore, unable accept that what is mashed, in fact, can be regarded as shredded in law, and I would prefer to sty that filamented wheat biscuits would not be shredded wheat biscuit, that it was open to the inventor to give a "coined" name to the product being an entirely new product could be named anything by its inventor, as was done he called it shredded wheat. 65. There is another reason for my com(sic) to the conclusion that the shredded wheat was not an apt description for the patented biscuit as held by Lord Russel of Killowen. In my view, the new product could easily have been called Wheatabix, as it was a biscuit made from wheat. In fact, now there is an extensive advertised product in England, a biscuit, made out of wheat, which is sold by the name of Wheatabix, and it is used for ....
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....ngless word? 69. In order to come to a conclusion as to what is superflame one has to first know about flame. 70. A flame is that which comes into existence when any combustible material gets ignited due to self combustion, or is ignited by spark or a small flame. The type flame which comes into existence as a physical phenomenon upon any combustible matter being ignited, depends upon the combustible material that is ignited. Thus, the flames of burning wood, coal, coke, liquid paraffin (Kerosene oil), combustible gases are different in their characteristic coloration .As is apparent to all those who have" noted it, burning wood, burning coal, burning kerosene stoves, and burning gas (in a physical or chemical laboratory where Bunsen burners are of common use), the flames are of different colours. Thus, the reddish glow flame of coke, is different from the flames of charcoal which burn with slightly yellow colour, and the flames of the burning wood are usually yellow. As distinguished from any of the above is the flame of combustible material using Bunsen burner, which emits a blue flame. 71. The flames of various combustible materials have different temperatures, it is al....
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..... 75. In Encyclopedia Britannica, 1969 Edition, Vol. IX at page 415, it is mentioned that "in a flame of coal gas and air of optimum composition, the temperature may be as high as 2,000°c. 76. The Encyclopedia Britannica 1969 also shows the design of burners used in cookers/ cooking ranges. The explanation of the burner design, which is illustrated at page 415 in the said Volume of Encyclopedia Britannica, indicates that the burners illustrated is so designed that safety of the person using the burners is ensured. The illustration of the burner and the explanation of the illustration shows that immediately beyond the jet from which the combustible gas is emitted, a venturi is a "waisted hollow pipe". The function of the venturi is to accelerate the flow of gases. The gas released from the jet goes straight into the venturi, and its flow is accelerated automatically by the venturi. Because of this accelerated flow of gas, atmospheric air is sucked into the venturi from the opening provided therefore just before the venturi. The accelerated flow of air and the gas mixture flowing through the venturi ensure that no part of the inflammable gas is blown back through the openin....
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....loured flame having highest temperature. 79. Thus, existence of yellow flame, red flame or blue flame are matters of common knowledge. The characteristics and temperatures of different coloured flames can be found in any adequate illustrated scientific text or reference books. 80. Reference to the standard dictionaries of English language, like Chambers, Shorter Oxford, Webster International, etc., would show that there is no word superflame therein. It is not found either in that part of the dictionary where the word SUPER occurs or in that part of the dictionaries where the word FLAME is dealt with. Prima facie, therefore, it would appear that the word SUPERFLAME is not a common place word of English language nor has it been given any meaning in that language. The dictionaries of English language being silent on the meaning of superflame, the conclusion is inescapable that it is a "coined", or "fancy" word, and one may go so far as to say that in the circumstances, a "meaningless" word, it is a word which is not a use. In any case, it is not a word which is so common place as to be found in the authoritative language dictionaries. The word is made meaningful only when appli....
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....d his labour upon the creation of the word combination. Any person who is desirous of identifying himself with a particular word, which he has created, does so only for the purposes of establishing the sole connection with the article to which it is applied. The skill of the person who creates a new word lies in making the word so simple, that the simplest of those, who would be interested in procuring the articles to which that word is applied, or those interested in purchasing the book to which the word/name has-been given as a title would immediately register it in his mind for future reference. This is possible only when the word itself suggests a meaning which did not exist before and yet the word appears to be meaningful. It is not permissible to dissect the word and the word has to be seen as a whole. It must not be dissected, to see whether any of its component parts conveyed any meaning. It is noteworthy that for the purpose of comparison of two words, it was stated by Supreme Court in AIR 1970 SC 2062 that the whole word has to be seen. In my view, it makes no difference whether the Court is called upon to compare the similarity in two different words, or is" concerned wi....
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....m a judgment of the Bombay High Court reported as AIR 1965 Bom 35; Consolidated Foods Corporation v. Brandan & Co. Pvt Ltd. I may, however add that the length of the user is relevant only when it is to be seen whether secondary significance has been acquired by a common language word. 90. As to the duration of prior use, which is required to acquire the exclusive right to the same, Mr. Anand referred to 1967 RPC 589; Standar v. Reay. In that case, the matter in question was who used the words "Mr. CHIPPY" a coined combination, in connection with sale of fish & chips. The Plaintiff had commenced the business in Oct. 1966, and the Defendants in Nov. 1966. Justice Buckley held that there was evidence in the case that substantial takings by the business of plaintiffs were proved by the trade for about three weeks prior to the commencement of the trade of selling fish and chips by the Defendants under the name Mr. CHIPPY and that there was fall in the takings when the Defendants started to trade. The Court held that the business of the Plaintiff had been built up rapidly which was affected by the Defendants also trading under the name of Mr. Chippy, Notwithstanding, that the Defendan....
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....he word superflame in connection with the gas appliances. Defendant No. 1 also admitted that (sic) which have been got published the plaintiffs, highlight the word Superflame, (sic) that he has never seen the (sic) mark/word Superflame on any goods (sic) to any person other than the plaintiff. He also stated that if anybody wanted to buy the goods of the plaintiff, he would ask for Superflame. 94. P.W. 2 Akhil Kumar Sharma has deposed "On the products of Globe Super Parts the words "Superflame" are found. 95. P.W. 3 Dhiraj Kumar has stated that the goods purchased from Super Parts Pvt. Ltd. bear the trade mark Superflame. P.W. 5 has stated that "the Superflame is the brand of products of Globe Super Parts. 96. D.W. 2 Mohd. Abdulla Malik stated that no person other than Globe Super Parts makes stoves and names it as SUPERFLAME; Globe Super Parts exclusively used the name of SUPERFLAME on the stoves. He further stated that he had knowledge about the trade mark SUPERFLAME since he started business and that SUPERFLAME has been publicised in newspaper from time to time. 97. Evidence has been led by the plaintiffs, through PW4, their Chartered Accountant, Shri Rattan Lal Garg....
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....s being or not being descriptive. The law has never refused to recognise that this is the case, or to give protection to descriptive Trade Marks when once duly established in fact, although, except in the case of old marks they refused registration, and left the owners to obtain protection in another form of action. This is now changed, and under the provisions of the present Act the Court clearly has power to allow descriptive words to be registered, if a case on the merits is proved before it sufficiently strong to induce it to do so. (page 857 L. 40-47)" 102. In order to consider the contention of Mr. Aggarwal further, one has to see what is the nature of evidence in the case, produced by him, which establishes that the words SUPER and FLAME are incapable of being exclusively appropriated In this case, there is no evidence led by the Defendants to establish that the word FLAME is descriptive of gas cookers in which the heat is provided by a flame. In all types of cookers whether they are the wood burning "chulas" or the charcoal/coke burning "angithies" or whether they are electrically operated cooking ranges, it is the heat which is provided by the various fuels/source of en....
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.... any flame in case of burning coke, as is known to everyone, burning coke gives a hot red glow as coke burns without a flame. 106. In the facts and circumstances of this case, it is useless to contend that the word SUPER is superlative to the word-Flame, also, for the reason that SUPERFLAME may refer to the length or width or both, of a flame and not necessarily to the heat generated by it when a pile of wood is burnt, the flame, though yellow coloured, which does not burn with a higher temperature than a blue flame, because of its length and width, may be called SUPERFLAME or SUPERFLAMES. On the other hand the heat generated by the red glow of burning, coke, without a flame, may be higher than the heat generated by a tall and broad yellow flame of burning pile of wood, Similarly the small flame of the Bunsen Burner which burns with a blue colour may not be super in length and width but generates more heat as the blue coloured flame has a highest temperature. 107. The contention that Super is a laudatory word, flame is descriptive, therefore, SUPERFLAME cannot be exclusively appropriated, is based upon a misconception that it is permissible to dissect the word SUPERFLAME. The....
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.... with the gas burner that was made here was named "Planet". It was conceded by the Defendants and the counsel for the Defendants that it was so. It also cannot be disputed that there are gas cookers, which are being sold in the market, which do not have the word FLAME upon them. For example, gas cookers being sold with names like, Savloy, Nicky Tasha, Inalsa, etc., and there may be many others. In view of the existence of the gas cookers with names like Planet and Savloy, Nicky-Tasha, Inalsa, it cannot be said, in my view that the word is common to the trade. It may be that a number of manufacturers are using the word FLAME as a part of the name by which they wish to sell their gas cookers, but that is not the same thing as saying that flame is common to the trade. 113. In view of the above discussion, I. am of the view that the word SUPERFLAME is a coined or fancy word, that it has been, in the facts and circumstances of the case, exclusively appropriated by the plaintiffs, and that they are the owners of the mark SUPERFLAME in respect of gas cookers/appliances which are manufactured by them. The evidence in the case also establishes that in the market owing to the extensive pu....
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....ve thought that no claim to passing off of the gas stoves would arise. But a claim of passing off has been raised and needs-to be decided upon evidence. 119. It is interesting to read the deposition of the witnesses of the plaintiff. Much of the witnesses of the Plaintiff have specifically stated that if any customer of theirs asked for Blue Superflame then what he would be given by them would be a gas cooker/appliance made by plaintiffs, which has been painted blue in; colour. Deposition to this effect has been made by PW.2, PW3 and PW 5. These were witnesses produced by the plaintiffs, from the trade, and the market. Other witnesses produced was PW 1, a Director of the Plaintiff and PW 4 its chartered accountant. It is interesting that in this case, the market witnesses of the plaintiffs, have themselves stated that there is no likelihood of passing off of the gas cookers/appliances, manufactured by the Defendants as the gas cookers/appliances manufactured by the plaintiff. In view of this evidence, it is not possible to hold that the goods manufactured by the Defendants, are being passed off as goods manufactured by the plaintiffs. 120. There is yet another reason why ther....
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....s been stated earlier, regarding SUPERFLAME. It has been held by me that SUPERFLAME is an invented, coined word; that it has no meaning in the English language, and it has been proved on evidence that the word SUPERFLAME is not common to the trade; and that in the trade and in the market place, where gas appliances are marketed, sold Superflame has been exclusively identified with the products of the plaintiff. SUPERFLAME being a meaningless word having no meaning ascribed to it in the common language, what is to be seen is why is the word SUPERFLAME adopted as a part of the trading style of the Defendants. 125. It is proved by the evidence of PW 1 and also established by the evidence of DW 1 i.e. Defendant No. 1, in the case, that Defendant 2, the father of Defendant 1, was the painting contractor for a number of years, for Globe Super Parts, as also for Super Parts Pvt. Ltd. The painting contract, for painting gas cookers/appliances of the plaintiffs was terminated by the plaintiff. It is after the termination of the painting contract that the Defendant 1, who is a young man of 21 years, admittedly having no experience in the trade of manufacture of gas cookers/appliances, sta....
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....ptive words, then the same is not actionable, and for this proposition he relies upon 1946 RPC 39 Office Cleaning Service v. Westminster Window and General Cleaners. In that case, it was held that "When the name of the words consists of words descriptive of that business, and which have not acquired secondary meaning, a slight difference between the plaintiffs and the Defendants to the will, in the absence of fraud, be a sufficient distinction. That case relates to two business names which both business giving the same descriptive service. In this case, what is agitated, is the use of the words SUPERFLAME, a mark put on plaintiffs' cookers, has been incorporated in the trading style of the Defendants. I have held that the word SUPERFLAME is not descriptive word, that it is the fancy word, invented word or a coined word. This case, as it deals with descriptive words only, is of no help to Mr. Aggarwal. 128. Mr. Aggarwal next contends that the small variations are sufficient for making the matter non-actionable. In other words, what in is contended, is that according to the Plaintiff what is actionable is the use of the words SUPERFLAME. The Defendants having not used the word....
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....ttersley & Sons. In that case, it was found that the word 'Universal' was a descriptive word and that being the case; the relief was not granted. The word considered in that case being the descriptive word, and the word under consideration in the instant case, not being a descriptive word, that case has no application to the present case. 135. None of the cases relied' upon by Mr. Aggarwal apply to the present case, inasmuch as the word SUPERFLAME cannot be said to be a descriptive word. It is a coined, fancy, invented word. 136. The argument which has been advanced is that as far as the name of the Defendants' company is concerned matter has been added to the word SUPERFLAME namely, the words THE BLUE.... INDUSTRIES, and that with additions of these three words to the word SUPERFLAME, there is no likelihood of confusion between the name adopted for the product by the plaintiff, and the name adopted for the business by the Defendant No. 1 and, therefore, no injunction be issued. 137. It is also clear from the reading of the cases that in order to escape the injunction what is required is that the added matter must be "sufficient to distinguish". I also note....
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....example is PLANET, INALSA, SAVLOY, NIKY-TASHA etc. 142. Mr. N.K. Anand cited the judgment of this Court in MANU/DE/0174/1979MANU/DE/0174/1979 : AIR 1980 Delhi 254; Ellora Industries, Delhi v. Banarasi Dass Goela in support of his case for grant of injunction. In that case, what had happened, was that the Plaintiff was carrying on business in the name and style of Banarasi Dass Goela, and was registered proprietor of registered trade mark ELORA in respect of watches, time pieces, clocks and their parts. The plaintiffs sold clocks but intended to introduce time pieces also. What the Defendants did, was that they adopted the trading style of Elora Industries for carrying on the business of manufacturing time pieces. 143. It is clear that the business carried on by both the parties related to implements for measuring time; Elora was the registered trade mark of the plaintiffs who were not using the word as a part of their trading style. This Court held that the use of the registered trade mark Elora in the trading style of the Defendants, would cause harm to the plaintiffs. 144. It is clear from Section 27 of the Trade and Merchandise Marks Act, 1958 that a Mark can be a regis....