The Court : This is an interim application in aid of a suit complaining of passing off.
Both the plaintiff and the defendants are manufacturers of sprayers used by farmers to spray fertilizers in the field. They are called knapsack sprayers. It has a tube attached to it through which liquid fertilizer is sprinkled on the field. The plaintiff says that the defendants are passing off their goods as those of the plaintiff.
Two boxes, one of the plaintiff’s product and the other of the defendants’ product were displayed in Court. The colour combinations in the two boxes are different. But the display of colour, the depiction of the appliance on the box itself together with the writing ATC SHAKTI SUPER thereon, prima facie, create an impression in my mind that both the boxes would be identified by an ordinary and prudent buyer to belong to the same manufacturer or brand. ATC SHAKTI SUPER is written across each of the boxes in similar font, but in different colours. They, in my prima facie opinion, reassemble each other. Both the marks are unregistered. The plaintiff applied for registration of the mark on 25th May, 2011 whereas the defendant applied for registration on 5th August, 2011, to the Trade Marks Registry. Now, if both the marks are unregistered, the person making an established prior user of the mark has a right to stop other persons from using the mark. The authorities on the subject are sell settled.
According to the plaintiff he is engaged in the manufacture and sale of this sprayer from 1991. Furthermore, he is using the mark ATC SHAKTI SUPER from 1990. The plaintiff issued a cease and desist notice to the defendant on 1st April, 2008.
The learned counsel for the defendants Mr. Sayantan Basu states that the defendants are using the mark from 1st June, 2008.
Their learned counsel challenges the claim of the plaintiff. He refers me to several invoices annexed to the petition, e.g. the invoice dated 9th December, 1998, at page 72 of the petition to argue that the plaintiff was only manufacturing and selling spray pumps without any specification or reference to any trade mark. He shows me the invoice dated 26th May, 2011 at page 113 of the petition to argue that only from or about 26th May, 2011 the mark or name ATC SHAKTI SUPER appears in the description of the plaintiff’s goods. Mr. Bose, learned counsel for the defendants also refers me to the additional representation made by the plaintiff before the Trade Mark Registry from pages 30 to 33 of the petition and points out that in two such representations, the first date of user is stated to be 4th April, 1990 whereas in the other two it is 13th January, 2009.
It is not clear to me for which mark or name or part of it user is claimed from a particular date.
On the other hand, Mr. Roy Chowdhury learned Advocate for the plaintiff shows me a document being FORM-16 filled in by the defendants and submitted to the Trade Mark Registry that they would like to correct their date of user in the application for registration of the mark from 1st January, 1991 to 1st June, 2008. From the available evidence it appears to me quite undisputed that the defendants have been using the trademark or name from 1st June, 2008. If the plaintiff is able to establish that they have been using the exact trademark or name ATC SHAKTI SUPER from 1990, they will be able to establish clear prior user and the right to restrain the defendant from using the mark.
But from the above evidence on record it is not quite clear as to which user of the plaintiff is from 1990 and which user from 13th January, 2009. If the rectification claimed by the plaintiff at page 33 of the petition is with regard to ATC SHAKTI SUPER then the plaintiff cannot assert his right as their user would only be from 13th January, 2009. Moreover both the applications for registration are pending and the above dates regarding the first date of use can only be taken as assertions by the respective parties. Such user has to be established. Before I proceed further a point taken by Mr. Basu learned Counsel for the defendant regarding jurisdiction of the Court has to be disposed of. He submits that jurisdiction is invoked on the basis of a pleading in the plaint which is identical to paragraph 19 of the petition. It is pleaded that the defendant’s goods are being sold in Kolkata. He refers to the documents annexed being Annexure ‘O’. He argues that those documents do not suggest that the defendant’s goods are being sold in Kolkata to support the said averments made in the plaint. At this stage the Court has to go by the averments made in the plaint which is to be taken to be true. Therefore, it is to be assumed that the goods of the defendants are being sold within the jurisdiction of this Court. Therefore, prima facie I hold that this Court has jurisdiction to entertain this application. However, I keep the question of jurisdiction of this Court to try this suit open, to be tried on evidence.
As I have said earlier, on the available evidence it is not possible for the Court to come to an opinion at this stage as to who is the prior user of the subject mark or name.
Moreover the time from which user is claimed by either party is relatively so close to each other that it is difficult for this Court to come to an opinion at this stage as to which party has been able to establish prior user of the mark or name. Unless this user which includes reputation is established it is difficult for the Court to assess whether the public is deceived by the sale of the goods of one party so as to believe that it represents the goods of the other party. Therefore, such determination has to await consideration on affidavits or trial.
At this stage, I direct the defendants to scrupulously keep accounts of their sale of
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sprayers under the subject trademark or name from 1st June, 2008. Such accounts have to be maintained on a quarterly basis. The arrear accounts up to 31st December, 2011 may be completed by 30th June, 2012. These quarterly accounts are to be filed in this Court with a copy circulated to the advocate on record for the plaintiff for their record and use within two weeks of the end of the quarter. Affidavit in opposition be filed by 12th April, 2012. List this application on 25th April, 2012. Affidavit in reply may be filed in the meantime. All parties concerned are to act on a signed photocopy of this order on the usual undertakings.