w w w . L a w y e r S e r v i c e s . i n



M/s. Vijay Solvex Ltd. & Another v/s Shree Hari Agro Industries Ltd. & Another


Company & Directors' Information:- R K B AGRO INDUSTRIES LIMITED [Active] CIN = L17100KA1979PLC003492

Company & Directors' Information:- SHREE HARI AGRO INDUSTRIES LTD [Active] CIN = U15142WB1995PLC074698

Company & Directors' Information:- S D SOLVEX PRIVATE LIMITED [Active] CIN = U15143PB2013PTC037629

Company & Directors' Information:- VIJAY SOLVEX LIMITED [Active] CIN = L15142RJ1987PLC004232

Company & Directors' Information:- VIJAY AGRO INDUSTRIES PRIVATE LIMITED [Converted to LLP] CIN = U01403MH2012PTC226450

Company & Directors' Information:- J R AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15342UP1982PTC005792

Company & Directors' Information:- R. H. SOLVEX PRIVATE LIMITED [Active] CIN = U15143MP2010PTC024404

Company & Directors' Information:- SHREE INDUSTRIES LIMITED [Active] CIN = L74210DL1985PLC019851

Company & Directors' Information:- B M AGRO INDUSTRIES LIMITED [Active] CIN = U74899DL1992PLC049988

Company & Directors' Information:- R S AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15319DL1998PTC097025

Company & Directors' Information:- S N T AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U01122DL1997PTC086925

Company & Directors' Information:- K P SOLVEX PRIVATE LTD [Active] CIN = U15143MP1983PTC002131

Company & Directors' Information:- D D AGRO INDUSTRIES LIMITED [Active] CIN = U24219PB1999PLC022487

Company & Directors' Information:- K R SOLVEX PRIVATE LIMITED [Active] CIN = U74899DL1992PTC049403

Company & Directors' Information:- L D SOLVEX PRIVATE LIMITED [Active] CIN = U15143PB1997PTC019619

Company & Directors' Information:- K L SOLVEX PRIVATE LIMITED [Active] CIN = U15312PB1999PTC022114

Company & Directors' Information:- S S D AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15100MH1998PTC113744

Company & Directors' Information:- SHREE VIJAY INDUSTRIES LIMITED [Active] CIN = L45202PB1984PLC018009

Company & Directors' Information:- J J SOLVEX PRIVATE LIMITED [Active] CIN = U15141PB1993PTC013005

Company & Directors' Information:- S. A. B. INDIA AGRO INDUSTRIES LIMITED [Active] CIN = U01403UP2009PLC038365

Company & Directors' Information:- U K AGRO INDUSTRIES PRIVATE LIMITED [Strike Off] CIN = U15114UP2003PTC028107

Company & Directors' Information:- R. K. AGRO INDUSTRIES PRIVATE LIMITED [Under Process of Striking Off] CIN = U15410WB2012PTC180269

Company & Directors' Information:- R J AGRO INDUSTRIES PRIVATE LIMITED [Strike Off] CIN = U15311KA2005PTC035485

Company & Directors' Information:- S O I AGRO INDUSTRIES PRIVATE LIMITED [Strike Off] CIN = U15310GJ2010PTC059966

Company & Directors' Information:- SHREE G S AGRO PRIVATE LIMITED [Active] CIN = U01403BR2012PTC019690

Company & Directors' Information:- S S SOLVEX PRIVATE LIMITED [Active] CIN = U15143PB2004PTC026770

Company & Directors' Information:- S I P AGRO INDUSTRIES LIMITED [Strike Off] CIN = U01403WB2012PLC188362

Company & Directors' Information:- S. S. AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15490PN2013PTC146574

Company & Directors' Information:- J & K SOLVEX PRIVATE LIMITED [Strike Off] CIN = U24241JK1994PTC001412

Company & Directors' Information:- J J AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15130MH1980PTC023302

Company & Directors' Information:- A R AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U74899DL1992PTC050526

Company & Directors' Information:- G S AGRO INDUSTRIES PVT LTD [Active] CIN = U01132WB1990PTC049960

Company & Directors' Information:- D V AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U74899DL1993PTC051892

Company & Directors' Information:- VIJAY INDUSTRIES PVT LTD [Strike Off] CIN = U10101OR1987PTC001861

Company & Directors' Information:- SHREE VIJAY INDUSTRIES PRIVATE LTD [Not available for efiling] CIN = U99999AS1984PTC002269

Company & Directors' Information:- P AND G AGRO INDUSTRIES P LTD [Strike Off] CIN = U99999UP1985PTC007509

Company & Directors' Information:- R. K. G. S. AGRO INDUSTRIES PRIVATE LIMITED [Active] CIN = U15100UP2017PTC097391

Company & Directors' Information:- SOLVEX INDUSTRIES PRIVATE LIMITED [Active] CIN = U28999MP2020PTC053540

Company & Directors' Information:- V G AGRO INDUSTRIES LIMITED [Strike Off] CIN = U01400DL1993PLC051666

Company & Directors' Information:- T S AGRO INDUSTRIES PVT LTD [Strike Off] CIN = U15209UP1987PTC008974

Company & Directors' Information:- HARI SOLVEX PVT. LTD. [Strike Off] CIN = U15142RJ1989PTC005093

Company & Directors' Information:- B AND P AGRO INDUSTRIES PRIVATE LIMITED [Strike Off] CIN = U01110MH1972PTC015574

Company & Directors' Information:- P V R K AGRO INDUSTRIES PVT LTD [Strike Off] CIN = U01119AP1988PTC008395

Company & Directors' Information:- K R P AGRO INDUSTRIES PVT LTD [Active] CIN = U01110MH1991PTC062304

    S.B. Civil Misc. Appeal Nos. 199 & 293 of 2014

    Decided On, 31 March 2014

    At, High Court of Rajasthan

    By, THE HONOURABLE MR. JUSTICE R.S. CHAUHAN

    For the Appellants: Sudhanshu Kasliwal, Sr. Advocate with Sukriti Kasliwal, Suruchi Kasliwal, G.D. Bansal, Amol Vyas, Advocates. For the Respondents: Dinesh Yadav, Anuroop Singhi, Rajendra Bhansali, Saurabh Jain, O.P. Pareek, Kushagra Sharma, P. S. Gujar, Advocates.



Judgment Text

Per Court:

Aggrieved by the order dated 2-1-2014, passed by the Additional District Judge, No. 3, Jaipur Metropolitan, Jaipur whereby the learned Judge has partially granted a temporary injunction in favour of the appellant-plaintiff, M/s Vijay Solvex Ltd. (‘the plaintiff’, for short), both the plaintiff and the respondent No. 2, M/s Vijay Industries (‘the defendant No. 2’, for short) have filed these cross-appeals before this court. Although the case is listed for orders, but with the consent of both the parties, these two appeals are being decided finally by this common judgment.

The brief facts of the case are being taken from S. B. Civil Misc. Appeal No. 199/2014, M/s Vijay Solvex Ltd. v Shri Hari Agro Industries and Ano. According to the plaintiff, it has filed a civil suit for declaration, mandatory injunction and permanent injunction against respondent No. 1, M/s Hari Agro Industries Ltd (‘the defendant No. 1’, for short), and against the defendant No. 2 for infringement and for passing off under the Trade Mark Act, 1999 (‘the Act’, for short), and for infringement of copyright under the Copyright Act, 1957. Along with the civil suit, the plaintiff has also filed an application under Or. 39, Rule 1 and 2 CPC for temporary injunction.

Formed in 1987-88, according to the plaintiff, it is a company registered under the Company Act, 1956; its registered office is in Alwar, Rajasthan. Since its inception, it has been producing refined oil under the trade mark of SCOOTER. Moreover, since 1994-95 it has been producing vanaspati ghee known as SCOOTER VANASPATI. From 4-8-2010, it has also been producing a premium vanaspati under the trade mark of SCOOTER GOLD VANASPATI.

Furthermore, on 22-1-1996 it had applied for registration of SCOOTER VANASPATI as its trade mark under Class 29 of the Act. On 21-5-2007, the said trade mark was registered, under Certificate No. 633774. However, as the trade mark was valid only for ten years from 1996, it could not be renewed. Therefore, in 2010, it was removed from the register of trade mark. The plaintiff has applied for the renewal before the Registrar of Trade Mark; the application is still pending.

Moreover, initially the trade mark SCOOTER VANASPATI, registered by the plaintiff, had the word SCOOTER written at the top, with the word VANASPATI written underneath it. Below these two words, an image of a scooter was depicted in a circle. Subsequently, at the suggestion of the public, in 2000-2001, the plaintiff changed the said label. Henceforth, the label has a scooter shown in a circle, below it is the word SCOOTER written in a wavy manner with wavy lines underneath the word, and with the word VANASPATI written in straight font underneath the waves.

Moreover, the plaintiff had also applied for registration of SCOOTER as a trade mark for refined oil and pickles, which was granted to it. In 2006, the plaintiff had also applied for registration of SCOOTER as a trade mark for salt, flour and spices under Class 30 of the Act. The said trade mark was registered on 21-7-06, by Registration Certificate No. 541362. Further, in 2013 it has also applied for registration of SCOOTER GOLD VANASPATI as a trade mark. Presently, the said application is pending before the Registrar of Trade Mark.

Furthermore, according to the plaintiff from 1987 till 2012-2013, it has produced 71,089.722 Metric Tons of SCOOTER refined oil at the cost of Rs. 4, 28, 12, 03,399/-. From 1994-95, it has produced 41, 97, 43. 912 Metric Tons of SCOOTER VANASPATI GHEE at the cost of Rs. 18, 22, 41, 57,000/- According to the plaintiff it is only because of its efforts, its labour, its quality of product that the trade mark SCOOTER has acquired all India reputation for its Vanaspati, and Gold Vanaspati.

Further according to the plaintiff, on 7-10-2013, it heard rumors in the market that a company is about to launch a product similar to the plaintiff’s by using the same trade mark as SCOOTER. Therefore, immediately on 8-10-2013, the plaintiff issued a public notice that the plaintiff has been using the trade mark SCOOTER VANASPATI since 1995, and SCOOTER GOLD VANASPATI since 2010. However, notwithstanding the said notice, on 15-10-2013, an advertisement appeared in the daily newspaper 'Dainik Bhaskar' in which Defendant No. 1 advertised its product SCOOTER GOLD VANASPATI. The said trade mark was deceptively similar to both the products of the plaintiff company, namely SCOOTER VANASPATI and SCOOTER GOLD VANASPATI. According to the advertisement, the Defendant No. 1 was manufacturing the said product under a licence issued by Defendant No. 2. Therefore, the plaintiff filed the above mentioned civil suit along with an application for temporary injunction.

The Defendant Nos. 1 and 2 filed their replies to the temporary injunction application. In its reply, the Defendant No. 2 claimed that initially the partners of Defendant No. 2 and the Directors of the plaintiff company belonged to a Hindu Undivided Family. Around 1960, the family members had formed a partnership firm in the name and style of M/s Vijay Industries. Since 1960, the firm has been carrying out the business of manufacturing edible oil, oil cakes, ghee, and allied goods.

In 1978, the Defendant No. 2 had gotten the trade mark SCOOTER registered in its name, in Class 29 of the Act, with the Registrar of Trade Mark. On 9-6-1978, the trade mark SCOOTER was registered in favour of the Defendant No. 2, under Certificate No. 337359. Ever since then, the trade mark SCOOTER has been registered in its name.

Since the plaintiff was a sister concern of the Defendant No. 2, therefore on 2-3-1990 both had entered into an agreement. Under this agreement, the Defendant No. 2 had permitted the plaintiff to use its trade mark SCOOTER for the products manufactured by the plaintiff. Under the agreement certain conditions were imposed upon the plaintiff: from 1-4-1990 to 31-3-1995, the plaintiff was not required to pay any royalty to the defendant No. 2 for the use of its trade mark. For the next fifteen years, from 1995 till 2010, the plaintiff was required to pay a royalty of Rs. 1000 per month to the Defendant No. 2. After the said period, the further extension of the agreement was subject to mutual consent. However, the agreement was not renewed after 2010. Hence, the plaintiff was using the trade mark SCOOTER as a mere licensee from 1990-2010. Further, once the agreement came to an end in 2010, the plaintiff did not have the right to use the said trade mark for its products. In fact, in 2009, the Defendant No. 2 entered into an agreement with Defendant No. 1 and permitted the latter to use its trade mark SCOOTER for manufacturing and selling SCOOTER VANASPATI. Subsequently, on 30-9-10, the Defendant No. 2 has applied, before the Registrar of Trade mark, for registration of SCOOTER GOLD VANASPATI as its trade mark. The said application is still pending. Meanwhile, the plaintiff has also applied for registration of the trade mark SCOOTER GOLD VANASPATI on 5-10-13; the said application is also pending.

After hearing both the parties, the learned Judge partly granted the temporary injunction in favour of the plaintiff. While the learned Judge prohibited the Defendant Nos. 1 and 2 from manufacturing SCOOTER VANASPATI, the learned Judge did not grant an injunction in the plaintiff’s favour vis--vis the SCOOTER GOLD VANASPATI. Hence these cross-appeals before this court.

Reiterating the factual matrix of the case, Ms. Sukriti Kasliwal, the learned counsel for the plaintiff, has raised the following contentions before this court: firstly, although the plaintiff has filed the civil suit before the lower court for infringement and passing off under the Trade Mark Act, and for infringement under the Copyright Act, before this court, she is only arguing for passing off under the former Act and for infringement under the latter Act.

Secondly, even if the Defendant No. 2 had the trade mark SCOOTER registered under its name in 1978, it was registered only for mustard oil and not for vanaspati. There is a vast difference between mustard oil and vanaspati: the former is a vegetable oil, which is merely extracted from mustard seeds; it remains in liquid state at room temperature. The latter is manufactured by combining different vegetable oils; it is subjected to a lengthy process of refining and pre-bleaching, of hydrogenation, of post-refining, of deodorization, of blending and vitaminising, and of packing and refrigerating. It is in solid state at room temperature, and melts only upon application of heat. Thus, the two goods are different in their contents and nature.

Thirdly, the trade mark would have to be confined to the particular goods for which it is registered. It cannot be applied liberally so as to include other goods mentioned in a given Class in the Act. Besides other goods, Class 29 of the Act deals with ‘edible oils and fats’. But to extend the trade mark registered for mustard oil to the other goods mentioned in Class 29 of the Act would be to grant a monopoly to the Defendant No. 2. She has emphasized that the trade mark is always qua a particular commodity or goods, or qua a particular service. But it cannot be permitted to overreach the other goods mentioned in a given Class. In order to support this contention, the learned counsel has relied upon the case of Vishnudas Trading as Vishnudas Keshendas v Vazir Sultan Tobacco Co. Ltd., Hyderabad and Another [(1997) 4 SCC 201].

Fourthly, since the Defendant No. 2 had the trade marks for the mustard oil, since the plaintiff was also manufacturing mustard oil in 1994-95, it had no other option but to enter into an agreement with the Defendant No. 2 for the said commodity. Thus, the plaintiff was a licensee only for the mustard oil, and not for the vanaspati. Moreover, the Defendant No. 2 has never manufactured vanaspati. But the plaintiff has been manufacturing vanaspati ever since1994-95. Therefore, the plaintiff was not the licensee of Defendant No. 2 vis--vis vanaspati.

Fifthly, the plaintiff had applied for registration of the words SCOOTER VANASPATI in 1996; it was registered in its favour in 2007. The said registered trade mark was not removed till 2010. On the other hand, the Defendant No.2 has applied for the registration of SCOOTER VANASPATI only in 2010. The plaintiff has already raised objection to the said application. Thus presently, the Defendant No. 2 does not have any registered trade mark of SCOOTER VANASPATI in its favour.

Sixthly, a distinction has to be maintained between infringement and passing off under the Act. In passing off, the actual owner of the trade mark is immaterial. What is essential is, as to who is the prior user? In order to support this plea, the learned counsel has relied upon the case of Century Traders v Roshan Lal Duggar & Co. [AIR 1978 Delhi 250].The plaintiff has been manufacturing SCOOTER VANASPATI since 1994-95; it has been manufacturing SCOOTER GOLD VANASPATI since 4-8-2010. Meanwhile, the Defendant Nos. 1 and 2 have entered the market only in 2013. Thus, the plaintiff is the prior user of both the goods. Hence, the learned Judge is unjustified in not granting the temporary injunction for SCOOTER GOLD VANASPATI in the plaintiff’s favour.

Seventhly, the plaintiff had hired the services of Grafik Makros for designing the label for its SCOOTER VANASPATI and SCOOTER GOLD VANASPATI. The design consisted of an image of a SCOOTER in a circle at the top, followed by the word 'SCOOTER' in a bold wavy script, underlined with a wavy line, there under, and with the word 'VANASPATI' written in a straight script. Interestingly, the Defendant No. 1 has used a deceptively similar label for its SCOOTER VANASPATI and SCOOTER GOLD VANASPATI in order to confuse the consumer, and so as to pass off its product as that of the plaintiff.

Eighthly, the label used by the Defendant No. 1 is clearly in violation of the plaintiff’s copyright in the said label. Furthermore, the learned Judge has misapplied the Copyright Act while holding that before a violation can be made out under the Copyright Act, there has to be assignment of the label in writing. According to the learned counsel, Section 17 (c) of the Copyright Act is clear that an image created by an artist while under a contract of employment would not belong to the artist, but to the employer. In the present case, the plaintiff had hired the service of Grafik Makros. Therefore, the plaintiff is the owner of the image, or the label created by Grafik Makros, during the course of their employment. Since the plaintiff is the owner of the copyright, the question of assignment does not even arise. Hence, the learned Judge has erred in holding that there was no infringement of copyright.

On the other hand, Mr. Dinesh Yadav, Mr. Rajendra Bansali, and Mr. Anuroop Singhi, the learned counsel for Defendant Nos. 1 and 2 have raised the following contentions before this court: firstly, the plaintiff has approached neither this court, nor the learned trail court with clean hands. It has intentionally hidden certain cardinal facts from both the courts; it has projected a wrong picture before both the courts. It pretends to be the owner of the trade mark SCOOTER, while the fact is that the Defendant No. 2 has been its owner since 1978. In fact while issuing its prospectus for a public issue in 1995, the plaintiff had clearly admitted, in the said prospectus, that the Defendant No. 2 was the registered owner of the trade mark SCOOTER. Therefore, the plaintiff is unjustified in claiming that it is the owner of the said trade mark.

Secondly, even while applying for the trade mark SCOOTER VANASPATI, the plaintiff had claimed, before the Registrar of trade mark, that the trade mark SCOOTER was registered in the name of one of their own concerns, namely Defendant No.2. Therefore, the Registrar had registered the trade mark SCOOTER VANASPATI in association with the registered trade mark of the Defendant No. 2, namely SCOOTER.

Thirdly, the plaintiff is trying to mislead the court by falsely claiming that there is a difference between vegetable oils, such as mustard oil, and vanaspati. In fact, both of them are vegetable oils. Merely because vanaspati is produced by putting a vegetable oil through certain technical process does not change the nature of the commodity. In order to buttress this contention, the learned counsel have relied upon the case of Champak Lal H. Thakkar and Ors. v. State of Gujarat and Ano. [AIR 1980 SC 1889]. Since both of them are covered under Class 29 of the Act, the trade mark SCOOTER cannot be confined only to mustard oil.

Fourthly, the plaintiff is unjustified in claiming that a trade mark is restricted only to the commodity for which it is registered. In fact, the trade mark is a property which belongs to its owner; it refers to the products or goods manufactured by its owner, or to the services rendered by the owner. It need not be restricted to a single commodity, but may also be used for other ancillary or related products. Thus, it would cover an entire class of goods and not just single goods. In order to support this plea, the learned counsel have relied upon the cases of Mahendra & Mahendra Paper Mills Ltd. v. Mahendra & Mahendra Ltd. [(2002) 2 SCC 147], T.V. Venugopal v. Ushodaya Enterprises Ltd. [(2011) 4 SCC 85], Eaton Corporation & Anr. v. Bch Electric Ltd. [2013 (55) PTC 417 (Delhi)]. Hence, the trade mark SCOOTER, which is owned by the Defendant No. 2, cannot be restricted to only mustard oil. It would, ipso facto, include other vegetable oils, such as vanaspati, or fats-the two categories which are covered by Class 29 of the Act.

Fifthly, admittedly the plaintiff and the Defendant No. 2 had entered into an agreement on 2.3.1990 for permitting the plaintiff to use the trade mark SCOOTER for its products. Thus, the plaintiff was using the said trade mark only as a licensee of the Defendant No. 2. Hence, any reputation created by the plaintiff of the trade mark was created on behalf of the Defendant No. 2. Thus, the plaintiff cannot turn around and claim that the reputation and goodwill belongs to it, and not to the Defendant No. 2.

Sixthly, the agreement dated 2.3.1990 was not restricted to mustard oil, but was for production of vanaspati as well. The learned counsel have emphasised the fact that despite this court’s asking the plaintiff to produce the agreement dated 2.3.1990, before this court, the plaintiff have failed to do so. Therefore, the learned counsel have prayed that an adverse inference should be drawn against the plaintiff.

Seventhly, once the agreement came to end on 31-3-2010, the plaintiff could not have used the trade mark belonging to the Defendant No. 2 as its own trade mark. To do so, the plaintiff was using a stolen property for its own good. Such a usage of a trade mark is illegal. In order to advance this plea, the learned counsel have relied upon the case of Eaton Corporation & Anr. (supra). In fact, in order to prevent the illegal usage of its trade mark, the Defendant No. 2 had initiated a civil suit against the plaintiff in the court of Additional District and Sessions Judge, at Dimapur, Nagaland. The said Court at Dimapur had granted a temporary injunction in favour of the Defendant No.2. However, both the learned counsel for the parties are ad idem that the plaint was returned to Defendant No.2. Presently no suit is pending before the said Court at Dimapur. But an appeal has been filed against the order returning the plaint.

Eighthly, the learned Judge has erred in ignoring the fact that from 1994 to 2010 the plaintiff was acting as a licensee, or an agent of, Defendant No. 2. Therefore, it was producing the SCOOTER VANASPATI as a licensee. It could not have usurped the said trade mark in its own favour especially after the agreement had come to an end. Since it was using a stolen property, the learned Judge was unjustified in granting a temporary injunction in favour of the plaintiff qua the SCOOTER VANASPATI.

Ninthly, in 2009, the Defendant No. 2 had entered into an agreement with Defendant No. 1 whereby, the former had allowed the latter to use its trade mark SCOOTER for the latter’s products. Thereafter the Defendant No. 1 started producing SCOOTER VANASPATI and SCOOTER GOLD VANASPATI from 2009 itself. Hence, as far as SCOOTER VANASPATI is concerned, the plaintiff was producing it as a licensee of the Defendant No. 2; as far as the SCOOTER GOLD VANASPATI is concerned, the Defendant No. 1 began its production in 2009. Therefore, the Defendant No. 1 has been producing both the goods prior to the plaintiff. Hence, the question of passing off does not even arise.

Tenthly, the Defendant No. 2 had applied for the registration of trade mark SCOOTER GOLD VANASPATI on 30.9.2010; the plaintiff has applied for the registration of the said trade mark on 5.10.2013. Thus, the defendant No. 2 has applied for the said trade mark prior to the plaintiff. Since the grant of trade mark would relate back to the date of application, the learned Judge was justified in concluding that the Defendant No. 2 would be the prior user of the said trade mark. Hence, the learned Judge was justified in denying the temporary injunction to the plaintiff qua the SCOOTER GOLD VANASPATI.

Lastly, the labels created for the plaintiff are designed on the basis of the label used by the Defendant No. 1 on its products. Thus, if there is infringement of copyright, it is the plaintiff which is infringing the copyright of the Defendant No. 1. Hence, no case is made out against either Defendant No. 1, or Defendant No. 2 for infringement of copyright of the Plaintiff.

While the judgment was reserved, the plaintiff and the defendant No. 1 moved two different applications. Therefore, the case was again listed on these two applications. The plaintiff brought to the notice of this court the fact that it had filed a writ petition before the Hon’ble Gujarat High Court for getting its trade mark SCOOTER renewed with the Registrar of Trademarks. By order dated 19-4-2014, the Hon’ble Gujarat High Court has directed the Registrar to restore the said trade mark in favour of the Plaintiff and to treat the said trade mark as not cancelled.

Moreover, the defendant No. 1 has filed an application under Or. 41, Rule 27 CPC, for bringing on record the agreement dated 1-4-2009, entered between the defendant Nos. 1 and 2, and for bringing on record certain invoices proving the fact that the defendant No. 1 was selling SCOOTER GOLD VANASPATI in the year 2009. Therefore, they were the first user of the said trade mark in the market.

Arguing on her application, Ms. Kasliwal pleaded that since the Hon’ble Gujarat High Court has directed the restoration of the trade mark, naturally the trade mark would be restored from 2010. Thus, the trade mark stands in the name of the plaintiff. However, Mr. Anoop Singhi, has pleaded that the plaintiff had filed the writ petition without impleading the defendant No. 2 as a party defendant. When the order came to their knowledge, they have filed an application for recalling of the said order. For the said order could not be filed without hearing the defendant No. 2. Thus, according to the learned counsel, the said order has not reached finality as it is still under challenge.

In order to support the application under Or. 41, Rule 27 CPC, Mr. Yadav has submitted that these documents could not be submitted before the learned trial court at the time when the temporary injunction was granted by it. But these documents were submitted with their application for vacation of the stay order passed by this court. However, since this court did not wish to consider those documents which were not submitted before the learned trial court, therefore, now they are being submitted through an application under Or. 41, Rule 27 CPC. Moreover, now these documents have been submitted before the learned trial court along with the written statements submitted by the defendant Nos. 1 and 2. Thus, now they form part of the court record before the learned trial court. Relying on the cases of Sarada (Smt) and Ors. v Manikkoth Kombra Rajendran [(1996) 8 SCC 345], and Malayalam Plantations Ltd. v State of Kerala and Ano. [(2010) 13 SCC 487], the learned counsel has contended that the court should be liberal in taking additional evidence on record as the primary duty of the court is to do justice to the parties.

Per contra, Ms. Kasliwal has contended that an application under the said provision cannot be used as a means to fill up the lacunae left by the party. Since these documents were readily available with the defendant No. 1 at the time of filing the reply to the temporary injunction application, it should have filed these documents before the learned trail court while submitting its reply to the temporary injunction application. Moreover, the application could have been filed before this court when the case was being argued. However, the said application has been filed after the arguments have been heard finally by this court. For buttressing her arguments, she has relied upon the following cases: Union of India v Ibrahim Uddin and Ano. [(2012) 8 SCC 148], and Lekhraj Bansal v State of Rajasthan and Ano. ( Civil Appeal Nos. 2848-2849/2014 arising out of SLP (Civil) Nos. 14329-14330/2008, decided by the Hon’ble Supreme Court on 25-2-2014)].

In rejoinder, Mr. Yadav has pleaded that there was no need for the defendant No. 1 to submit these documents before the learned trial court as the learned Judge had not granted any injunction against the defendant Nos. 1 and 2 for manufacturing and selling SCOOTER GOLD VANASPATI. These documents are being submitted now as this court has passed an ex-parte stay order against the defendant No. 1, prohibiting it from manufacturing and selling the said brand. Moreover, as these documents are essential for doing substantive justice to the parties, as they throw light on the controversy in issue, they should be taken on record.

Heard the learned counsel for the parties, perused the impugned order, and considered the case law cited at the Bar.

Before this court enters into the contentions raised by the learned counsel, it would be beneficial to discuss the differences and similarities between infringement of trade mark, and passing off. Although both infringement of trade mark and passing off have different origins, they share the same genetic pool. In a series of judgments, the Hon’ble Supreme Court has noticed the differences and the similarities between the two.

In the case of Kaviraj Pandit Durga Dutt Sharma v Navaratna Pharmaceutical Laboratories [AIR 1965 SC 980] the Apex Court revealed the differences and similarities as under:-

While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of 'the exclusive right to the use of the trade mark in relation to those goods'. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

The Apex Court also noted these distinctions in the case of Gomzi Active v Reebok India Co. and Anr. [(2007) 10 SCC 256]

In the case of Rustom & Hornsby Ltd. v The Zamindara Engineering Co. [AIR 1970 SC 1649], the Apex Court again noticed the similarities and the differences between the two and opined as under:

The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v June Perfect Ltd. (1941) 58 R PC 147 at p.161:

'The Statute law relating to infringement of trademarks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive.'

In an action for infringement where the defendant’s trade mark is identical with the plaintiff’s mark, the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions.

While noticing the differences between the two, the Apex Court further opined in Rustom & Hornsby Ltd. (supra) as under:

The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:

'Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff’s goods?'

But in an infringement action the issue is as follows:

'Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff’s registered trade mark?'

Further in the case of Kaviraj Pandit Durga Dutt Sharma (supra) the Apex Court not only laid down the tests to be applied in the case of infringement, but also prescribed the burden of proof, and spelt out the function of the court, as under:

When once the use by the defendant of the mark which is claimed to infringe the plaintiff’s mark is shown to be 'in the course of trade', the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff’s registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide s. 21). A point has sometimes been raised as to whether the words 'or cause confusion' introduce any element which is not already covered by the words 'likely to deceive' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add var materially to the concept indicated by the earlier words 'likely to deceive'. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exit to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff’s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff’s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

In the case of Erven Warnink BV v J. Townend & Sons [(1979) 2 All ER 927] Lord Diplock held that 'the modern tort of passing off has five elements i.e. (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (or in a quia tiemt action) will probably do so'.

These principles of law would have to be kept in mind while deciding the present case.

The first issue before this court is with regard to the nature of mustard oil and vanaspati. While the plaintiff claims that the two commodities are different in their nature, the Defendant No. 1 and 2 claim that the two are same and fall within Class 29 of the Act. This point is hardly debatable after the opinion expressed by the Apex Court in the case of Champaklal H. Thakkar and Ors. (supra). This case dealt with the issue whether vanaspati is same as vegetable oil or not? The Apex Court observed as under:-

The most important point to be determined in the case, therefore, is whether employment in a vanaspati manufacturing concern..…is an employment in an oil mill or not. The only argument advanced on behalf of the appellants in this connection is, as it was before the two courts below, that vanaspati is a form of ghee which is not an oil; and this contention we find to be without force. Vanaspati, in our opinion, is essentially an oil although it is a different kind of oil than oil (be it rapeseed oil, cotton-seed oil, ground-nut oil, soya-bean oil or any other oil) which forms its basic ingredient. Oil will remain oil if it retains its essential properties and merely because it has been subjected to certain processes would not convert it into a different substance. In other words, although certain additions have been made to and operations carried out on oil, it will still be classified as oil unless its essential characteristics have undergone a change so that it would be a misnomer to call it oil as understood in ordinary parlance.

The Apex Court noted the definition of ‘oil’ as given in the Webster’s Third New International Dictionary (1966 Edition), which is as under:

Any of various substances that typically are unctuous viscous combustible liquids or solids easily liquefiable on warming and are not miscible with water but are soluble in ether, naphtha, and often alcohol and other organic solvents, that leave a greasy not necessarily permanent stain (as on paper or cloth), that may be of animal, vegetable, mineral, or synthetic origin, and that are used according to their types chiefly as lubricants, fuels and illuminants, as food, in soap and candles, and in perfumes and flavouring materials.

The Hon'ble Supreme Court concluded as follows:

All the ingredients of this meaning are fully satisfied in the case of hydrogenated vegetable oil. We may specially point out that even solids easily liquefiable on warming fall within the meaning given by Webster. Now the various processes, namely, neutralization, bleaching, deodorization, hardening and hydrogenation to which oil is subjected for being converted into vanaspati leave its basic characteristics untouched, i. e., it remains a cooking medium with vegetable fat as its main ingredients. Neutralisation, bleaching and deodorization are merely refining processes so that the colour, the odour and foreign substances are removed from it before it is hydrogenated and hardened and even the two processes last mentioned allow the oil to retain these characteristics. Even ghee, for that matter, is nothing but a form of oil although it is obtained from animal fat, being a derivative from milk. It may be of use to mention that in Persian language ghee is known as ‘raughan zard’, i.e., yellow oil, and it does not need an expert to point out that the viscosity of ghee depends upon the weather because with the rising temperature during summer months it turns into a liquid while the cold of December and January solidifies it. Nonetheless it remains an oil and it makes no difference that it is called ghee in ordinary parlance. The word is merely a different name for an oil which is not derived from vegetables. From that point of view the term ‘vegetable ghee’ is a contradiction in terms, ghee being essentially an animal fat. The reason why it has come to be called vegetable ghee appears to be that in its finished form it resembles ghee in appearance and viscosity and is also considered a more respectable form of cooking medium when so-called, thus catering to the psychological satisfaction of the consumer.

Therefore, according to the Apex Court vanaspati and vegetable oils are the same. Although vegetable oil is put through certain processes, in order to manufacture vanaspati, but even then vanaspati does not lose its essential characteristics or properties as being a vegetable oil. Although vanaspati may be called ghee, but it merely reflects the similarities in the physical properties of ghee and vanaspati. As pointed out, to call vanaspati as ghee is a contradiction in terms. But still it is called ghee more for the psychological satisfaction of the consumer. Therefore, the contention raised by the learned counsel for the plaintiff that vanaspati is different and distinct from vegetable oil is unacceptable, as vanaspati is a vegetable oil.

Much has been debated on the issue whether the trade mark relates to particular goods, or does it relate to other goods covered in the Class? According to the learned counsel for the plaintiff it relates to the particular goods for which it is registered. Ms. Sukriti Kasliwal has emphasised both the relevant provisions of the Act, and has relied upon the cases of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [AIR 2001 SC 1952], Vishnudas Trading as Vishnudas Kishandas (supra) and on Nestle’s Products Ltd & Ano v. Milkmade Corporation & Ano [AIR 1974 Delhi 40] in order to establish her plea.

However, according to the learned counsel for the defendant Nos. 1 and 2, it relates to the other goods mentioned in the Class. In fact, in the case of passing off, it may even relate to other goods not even mentioned in the Class. According to the learned counsel, the judicial thinking has changed over the said issue. In order to buttress this argument, the learned counsel have relied upon the cases of Mahendra & Mahendra Paper Mills Ltd. (supra), T. V. Venugopal (supra), Eaton Corporation & Ano. (supra), Sony Kabushiki Kaisha v Mahaluxmi Textile Mills [2009 (41) PTC 184 (Cal) (FB)], and on Dharampal Satyapal Ltd. v Suneel Kumar Rajput & Anr. [2013 (56) PTC 116 (Del)].

The Trade and Merchandise Mark Act, 1958 was repealed in 1999. In its place the Trade Marks Act, 1999 was brought into existence. It came into force on 15-9-2003. The Act was enacted 'in view of developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management systems and to give effect to important judicial decisions'. According to the objects and aim of the Act, 'it was to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.'

Certain definition clauses contained in Section 2 of the Act also reflect that a trade mark relates to goods and services. Section 2 (zb) defines the term 'trade mark' as under:

'trade mark' means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and-

(i) In relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be and some person having the right as proprietor to use the mark and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.

Section 2 (zg) defines 'well-known trade mark' as under:

2(zg). 'well-known trade mark', in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.

Chapter IV deals with the effect of registration. Section 28 prescribes the rights conferred by registration. Section 28 is as under:

28. Rights conferred by registration.-

(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

Section 27, on the other hand, prohibits action for infringement of unregistered trade mark as under:

27. No action for infringement of unregistered trade mark.-

(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

A bare perusal of these provisions does indicate that a trade mark relates to the goods or to the service for which it is registered. According to Section 28 of the Act, the registration of a trade mark bestows an exclusive right upon the registered proprietor to use the trade mark in relation to the goods in respect of which the trade mark is registered. The registered proprietor is further bestowed a right to obtain relief in respect of infringement of the trade mark in the manner provided by the Act.

The learned counsel for the plaintiff has relied on the case of Cadila Health Care Ltd. (supra) in order to further buttress her plea. However, the said case does not support the plea of the learned counsel. For, the said case dealt with two pharmaceutical companies which were manufacturing two different drugs for the same ailment, but with similar sounding names. It was, thus, a case of passing off. In the said decision there was no discussion with regard to the issue mentioned above.

In the case of Vishnudas Trading as Vishnudas Kishandas (supra) the Apex Court observed as under:

If a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. If rectification in such circumstance is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark.

However, this case does not rush to the plaintiff’s rescue. For, the said case dealt with rectification and not with infringement, and passing off. Needless to say, the parameters for these three concepts, i.e. rectification, infringement, and passing off, are quite different. Therefore, what has been observed qua rectification may not be applicable in case of infringement and passing off.

The case of Nestle’s Product Ltd. (supra) does seem to suggest that a trade mark would have to be confined to particular goods. In the said case, Their Lordships of the Delhi High Court have relied upon Dr. Venkateswaran’s book on Trade and Merchandise Marks (1963 edition) in order to conclude that 'the exclusive right conferred by registration is limited to the goods for which the mark is registered and does not extend to allied goods.'

However, with respect, the judicial thinking on this issue has undergone a vast change since the decision was rendered in the case of Nestle’s Product Ltd. (supra). Undoubtedly, the purpose of registering a trade mark is to protect the reputation of the product which it may earn in the market and to protect the goodwill of the business. Since in a case of passing off, a party tries to take undue advantage of the reputation and goodwill earned and generated by the other party, the trade mark cannot be restricted to the particular goods for which it is registered. Even in England, the law of passing off has undergone a substantial change. This is apparent from Halsbury’s Laws of England (volume 48, fourth edition, reissue 2004, p. 203):

318. Common field of activity and likelihood of deception: The presence or absence of a common field of activity in which the claimant and the defendant are engaged is a factor to be taken into account in considering whether it is likely that persons coming across the defendant’s use of the name, mark etc complained of will assume that he and the claimant are connected. Such a factor may also be significant in deciding even assuming that a misrepresentation is established, whether the claimant is likely to suffer any substantial damage as a result of the defendant’s activities.

In the case of Sony Kabushiki Kaisha (supra), a Full Bench of the Hon’ble Calcutta High Court has observed, 'Thus, where the defendant’s activities, although not in an area of business in which the claimant is engaged, are in an area of business which might be assumed to be a natural extension of the claimant’s business, likelihood of deception will readily be inferred. However, even where the fields of activity in which the claimant and the defendant are engaged are remote from each other, it is possible for deception to occur if the name or mark used is highly distinctive, or if the claimant’s mark or name is well known and is closely copied with regard to style, lettering etc.'

In fact, in the case of T. V. Venugopal (supra) the Hon’ble Supreme Court dealt with a case where the appellant manufactured incenses sticks in the name of 'Eenadu' in Karnataka. The appellant applied for registration of trade mark 'Eenadu'. The same was registered in the appellant’s name. However, on the other hand, the defendant company published a newspaper also called 'Eenadu' in Telugu language in Andhra Pradesh. It, too, had the word 'Eenadu' registered in its name as its trade mark. When the appellant started selling their incense sticks in Andhra Pradesh in the name of 'Eenadu', the defendant filed a suit for infringement and passing off against the appellant. Eventually the case reached the Apex Court. Hence the Hon’ble Supreme Court dealt with a case where the registration was of the same trade mark, but for two different goods in two different Classes. The Hon’ble Supreme Court observed as under:

Furthermore, the protection qua common field of activity has now been expanded and been interpreted to mean extending to other product lines than what is manufactured by the plaintiff and hence common field of activity is not restricted to same or similar products but extend to all other products. The test of common field of activity now accepted is that of 'common class of consumers'. The reason for this is the likelihood of such consumers identifying the defendant’s goods as originating from the same source as the plaintiff. The question therefore would be, whether from the factual situation, an inference can be drawn that a purchaser of the defendant’s product could assume such product as originating from the plaintiff.

Therefore, the modern judicial trend is not to confine the trade mark to the particular goods for which it is registered. In cases of passing off the question is no longer of 'common field of activity', but is of 'common class of consumers'. Hence, the learned counsel for the plaintiff is not justified in claiming that the trade mark of SCOOTER should be confined only to mustard oil, and cannot cover other goods in Class 29 of the Act.

But the present case is a unique one as it is not the registered proprietor, the Defendant No. 2 who has filed the case against the plaintiff. In fact, it is the former licensee, the plaintiff, who has filed a case of passing off against the registered proprietor, the Defendant No. 2, and against its present licensee, the Defendant No. 1. However, as far back as 1978, in the case of Century Traders (supra), the Hon’ble Delhi High Court had observed that 'In an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purpose of deciding the application for interim injunction unless evidence has been led or is available of user of the registered trade mark.' This view was firmly established by the Hon’ble Supreme Court in the case of Heinz Italia and Ano. v Dabur India Ltd. [(2007) 6 SCC 1]. Thus, even if the Defendant No. 2 has the trade mark registered in its name, it would not prevent the plaintiff from filing a suit for passing off against the Defendant Nos. 1 and 2.

The learned counsel for the Defendant Nos. 1 and 2 have over emphasised the fact that from, 1994-2010, the plaintiff was a licensee of Defendant No. 2. Therefore, the reputation earned by him for his SCOOTER VANASPATI during the said period was on behalf of the Defendant No. 2. There cannot be any issue on this point. However, the plaintiff has filed the present case in 2013 when it is no longer a licensee of the Defendant No. 2. Basically its case is that even during the period of 2010 to 2013 it has carved out a niche in the market for its SCOOTER VANASPATI and SCOOTER GOLD VANASPATI. Moreover, it has been producing and marketing SCOOTER GOLD VANASPATI since 4-8-2010. According to the plaintiff, the Defendant Nos. 1 and 2 are trying to ride on its reputation and goodwill by passing of deceptively similarly packed products into the market. Hence, they need to be prohibited from doing so through a temporary injunction. Thus, even if the plaintiff were a former licensee of the Defendant No. 2, it would not prevent the plaintiff from filing a suit for mandatory and permanent injunction against the Defendant Nos. 1 and 2 for passing off.

Moreover, even after 31-3-2010, the plaintiff continued to use the trade mark SCOOTER for its products. Thus, post-2010, the reputation and goodwill generated for the said trade mark was done by the plaintiff and for its own products. The said reputation and goodwill was neither for the Defendant No. 2, nor on its behalf. Of course, Defendant No. 2 has claimed that it had entered into an agreement with the Defendant No. 1 in 2009. According to Defendant No. 2, it had granted the latter the permission to use the trade mark SCOOTER for its products. However, by merely entering into an agreement, it does not lead to an inference that the Defendant No. 1 had started producing SCOOTER VANASPATI in 2009 itself. So far, there is no evidence to show that the Defendant Nos. 1 and 2 were producing SCOOTER VANASPATI from 2009 onwards. However, there is prima facie evidence to show that the plaintiff was producing SCOOTER VANASPATI in 2009, 2010 and onwards. Thus, to answer the question as to who go there first, prima facie the plaintiff was already in the market when the Defendant Nos. 1 and 2 started selling SCOOTER VANASPATI in the market. Thus, the learned Judge was justified in concluding that as far as SCOOTER VANASPATI is concerned the plaintiff does have a prima facie case in its favour.

As far as the SCOOTER GOLD VANASPATI is concerned the logic of the learned Judge is rather strange. According to the learned Judge since the Defendant No. 2 had applied for registration of SCOOTER GOLD VANASPATI prior to the plaintiff, therefore, the Defendant No. 2 would be deemed to be the prior user of the trade mark. However, the said logic is misplaced. In a case of passing off the material issue is who got to the market first? In the present case prima facie the plaintiff started the production of SCOOTER GOLD VANASPATI on 4-8-10. Therefore, the logic of the learned trial court is unsustainable.

Of course, Defendant No. 1 has filed an application under Or. 41, Rule 27 CPC for bringing on record the agreement entered between the defendants and for bringing on record the invoices which show that the Defendant No. 1 was manufacturing and selling SCOOTER GOLD VANASPATI in the year 2009 itself. Thus, it was manufacturing and selling the said brand even prior to the plaintiff having entered the marked with the said brand. Hence, it was the prior user of the said trade mark.

Or. 41, Rule 27 CPC is as under:

Rule 27.

(1) The parties to an appeal shall not be entitled to produce additional evidence, whether oral or documentary, in the Appellate Court. But if-

(a) the Court from whose decree the appeal is preferred has refused to admit evidence which ought to have been admitted, or

(aa) the party seeking to produce additional evidence, establishes that notwithstanding the exercise of due diligence, such evidence was not within his knowledge or could not, after the exercise of due diligence be produced by him at the time when the decree appealed against was passed, or

(b) the Appellate Court requires any document to be produced or any witness to be examined to enable it to pronounce judgment, or for any other substantial cause, the Appellate Court may allow such evidence or document to be produced or witness to be examined.

(2) Wherever, additional evidence is allowed to be produced by an Appellate Court, the court shall record the reason for its admission.

In the case of Ibrahim Uddin and Ano. (supra) the Hon’ble Supreme Court has dealt with the scope and ambit of Or. 41 R. 27 CPC as under:

'36.The general principle is that the Appellate Court should not travel outside the record of the lower court and cannot take any evidence in appeal. However, as an exception, Order 41 Rule 27 CPC enables the appellate Court to take additional evidence in exceptional circumstances. The appellate Court may permit additional evidence only and only if the conditions laid down in this Rule are found to exist. The parties are not entitled, as of right, to the admission of such evidence. Thus, the provision does not apply, when on the basis of evidence on record, the appellate Court can pronounce a satisfactory judgment. The matter is entirely within the discretion of the court and is to be used sparingly. Such a discretion is only a judicial discretion circumscribed by the limitation specified in the Rule itself. (Vide: K. Venkataramiah v. A. Seetharama Reddy and Ors.AIR 1963 SC 1526;The Municipal Corporation of Greater Bombay v. Lala Pancham and Ors. AIR 1965 SC 1008; Soonda Ram and Anr. v. Rameshwaralal and Anr. AIR 1975 SC 479; and Syed Abdul Khader v. Rami Reddy and Ors. AIR 1979 SC 553).

37. The appellate Court should not ordinarily allow new evidence to be adduced in order to enable a party to raise a new point in appeal. Similarly, where a party on whom the onus of proving a certain point lies fails to discharge the onus, he is not entitled to a fresh opportunity to produce evidence, as the Court can, in such a case, pronounce judgment against him and does not require any additional evidence to enable it to pronounce judgment. (Vide: Haji Mohammed Ishaq Wd. S.K. Mohammed and Ors. v. Mohamed Iqbal and Mohamed Ali and Company AIR 1978 SC 798).

38. Under Order 41, Rule 27 CPC, the appellate Court has the power to allow a document to be produced and a witness to be examined. But the requirement of the said Court must be limited to those cases where it found it necessary to obtain such evidence for enabling it to pronounce judgment. This provision does not entitle the appellate Court to let in fresh evidence at the appellate stage where even without such evidence it can pronounce judgment in a case. It does not entitle the appellate Court to let in fresh evidence only for the purpose of pronouncing judgment in a particular way. In other words, it is only for removing a lacuna in the evidence that the appellate Court is empowered to admit additional evidence. (Vide:The Municipal Corporation of Greater Bombay v. Lala Pancham and Ors. AIR 1965 SC 1008).

39. It is not the business of the appellate Court to supplement the evidence adduced by one party or the other in the lower Court. Hence, in the absence of satisfactory reasons for the non-production of the evidence in the trial court, additional evidence should not be admitted in appeal as a party guilty of remissness in the lower court is not entitled to the indulgence of being allowed to give further evidence under this Rule. So a party who had ample opportunity to produce certain evidence in the lower court but failed to do so or elected not to do so, cannot have it admitted in appeal. (Vide: State of U.P. v. Manbodhan Lal Srivastava AIR 1957 SC 912; and S. Rajagopal v. C.M. Armugam and Ors. AIR 1969 SC 101).

40. The inadvertence of the party or his inability to understand the legal issues involved or the wrong advice of a pleader or the negligence of a pleader or that the party did not realise the importance of a document does not constitute a "'substantial cause" within the meaning of this Rule. The mere fact that certain evidence is important, is not in itself a sufficient ground for admitting that evidence in appeal.

41. The words "'for any other substantial cause"'must be read with the word 'requires"'in the beginning of sentence, so that it is only where, for any other substantial cause, the appellate Court requires additional evidence that this Rule will apply, e.g. when evidence has been taken by the lower Court so imperfectly that the appellate Court cannot pass a satisfactory judgment.

48. To sum up on the issue, it may be held that an application for taking additional evidence on record at a belated stage cannot be filed as a matter of right. The court can consider such an application with circumspection, provided it is covered under either of the prerequisite condition incorporated in the statutory provisions itself. The discretion is to be exercised by the court judicially taking into consideration the relevance of the document in respect of the issues involved in the case and the circumstances under which such an evidence could not be led in the court below and as to whether the applicant had prosecuted his case before the court below diligently and as to whether such evidence is required to pronounce the judgment by the appellate court. In case the court comes to the conclusion that the application filed comes within the four corners of the statutory provisions itself, the evidence may be taken on record, however, the court must record reasons as on what basis such an application has been allowed. However, the application should not be moved at a belated stage.'

The defendant No.1 had ample opportunity to file both the agreement entered between it and defendant No. 2, and to file the invoices before the learned Judge while the application for temporary injunction was being pending. The explanation for the non-production of these documents is bit curious. According to the learned counsel, since the learned Judge did not pass any temporary injunction against the Defendant Nos. 1 and 2 qua the SCOOTER GOLD VANASPATI, there was no need for them to produce the said documents. However, such an explanation tantamount to counting one’s chicken before they are hatched. For prior to arguing the application for temporary injunction, the defendant Nos. 1 and 2 could not have the slightest inclining about the outcome of the application. In fact, they should have placed all the relevant documents before the learned trial court. If they chose not to do so, they have done it at their own peril. Although the documents were filed by the Defendant No. 1 while filing the application for vacation of the stay order passed by this court, but even then the Defendant No. 1 did not file a proper application under Or. 41 Rule 27 CPC for taking the documents on record before entering into arguments. Thus, they missed a second opportunity for filing the documents. They cannot be permitted to file these documents after the judgment has been reserved. To permit them to do so, at such a juncture, is to ignore the tenor of Or. 41, Rule 27 CPC. The right to file additional evidence at the appellate stage cannot be used to fill in the lacunae in one’s case. Of course, the defendant No. 1 has relied upon the cases of Sarda (Smt.) and Ors (supra) and Malayalam Plantations Ltd (supra) in order to plead that the power under Or. 41, Rule 27 CPC should be invoked liberally in order to do substantive justice with the parties. One cannot but agree with the principle of law annunciated by the Hon’ble Supreme Court in these cases. However, even justice would have to be done within the confines of the said provision. Since the case does not fall within the scope of the said provision, the application filed under Or. 41, Rule 27 CPC, by the defendant No. 1, is dismissed. However, simultaneously it is clarified that the dismissal of this application by this court would not preclude the learned trial court from considering the evidence brought on record by the defendant Nos. 1 and 2.

So far as the evidence is available on record, before this court, there is no evidence, that the Defendant Nos. 1 and 2 started the production of SCOOTER GOLD VANASPATI prior to the plaintiff. Therefore, obviously, prima facie the plaintiff is the prior user of the said trade mark in the market. Thus, the conclusion drawn by the learned Judge vis--vis SCOOTER GOLD VANASPATI is unsustainable.

Furthermore, in the case of passing off, the learned Judge should have compared the labels used, on the one hand, by the plaintiff, and on the other hand, by the Defendant No. 1 as a licensee of Defendant No. 2. The learned Judge has failed to do so. In the case of Cadila Health Care Ltd. (supra), the Hon’ble Supreme Court had prescribed the factors which need to be looked into while deciding a case of passing off as under:

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 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 care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods and

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

The Apex Court also cautioned that 'Weightage to be given to each of the aforesaid factors depending upon facts of each case and same Weightage cannot be given to each factor in every case.' The factors laid down by the Apex Court, mentioned above, are as much pertinent to registered trade mark as to the unregistered one.

During the course of arguments, the learned counsel for the plaintiff has produced not only the products (in polythene packets) produced by both the parties before this court, she has also produced photographs of both the products (shown in the tins sold in the market) as produced by both the parties. A bare perusal of the products reveals that the color schemes, the fonts used, the labels, the design used in the polythine packets used by the Defendant No. 1 is similar to the polythine packet used by the plaintiff in marketing its twin products of SCOOTER and SCOOTER GOLD VANASPATI. Similarly, in the tins used by the Defendant No. 1 in selling its SCOOTER VANASPATI and SCOOTER GOLD VANASPATI, the label, the font, the color scheme, the design is very much similar to the one used by the plaintiff. Thus, prima facie, both the products being marketed by Defendant No. 1 have deceptively similar labels and packaging as that of the plaintiff’s twin products of SCOOTER VANASPATI and SCOOTER GOLD VANASPATI.

Moreover, prima facie, both the products manufactured by the plaintiff and the Defendant No. 1 would have a common class of consumers, as they are engaged in the common field of activity. Thus, there is a strong possibility that the consumer is likely to be confused by the label, the font, the design, the color-scheme used by the Defendant No. 1. The consumer is likely to conclude that he/she is buying the products of the plaintiff. Hence, the plaintiff does have a strong prima facie case in its favour of passing off by the Defendant Nos. 1 and 2.

The plaintiff has been selling his goods in the market under the trade mark of SCOOTER VANASPATI and SCOOTER GOLD VANASPATI from 2010 to 2013. On the other hand, as per the evidence so far, the Defendant No. 1 is a recent entrant into the market. Hence, the balance of convenience is also in the plaintiff’s favour.

Furthermore, according to the plaintiff, it has generated a certain amount of reputation and goodwill with regard to the purity, the consistency, the fragrance, the quality of the vanaspati used in its twin products. In case the Defendant No. 1 were permitted to market its SCOOTER VANASPATI and SCOOTER GOLD VANASPATI, it may either dilute, or adversely affect the reputation and/or goodwill of the plaintiff. Such a move may cause irreparable loss to the plaintiff.

Of course, the learned counsel for the defendant Nos. 1 and 2 have argued that this court was not justified in granting a stay against the selling of their products in the market. For no such prayer was made in the stay application filed by the plaintiff before this court. However, in case of passing off the court has to be alive to fact that law of trade mark is not only for the benefit of the owner of the trade mark, but it is also for the protection of the consumers. In a consumer oriented society, the interest of the consumer is paramount. Therefore, if the consumer is likely to be confused by a deceptively similar labeling and packaging of a product, then the sale of the product should be stayed. Both in the interest of the society, and in the interest of justice, the court would have to travel beyond the prayer made by the plaintiff. Thus, the learned Judge should have stayed the sale of both the products by the Defendant No. 1. Not to do so, is to expose the innocent consumers to certain risks about the quality of the product he/she may be buying.

In the case of Cadila Health Care Ltd. (supra) the Apex Court opined that while dealing with cases of passing off the court cannot be oblivious to the harsh real

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ity of this country 'where there is no single common language, a large percentage of population is illiterate and small fraction of people know English…' The Hon’ble Supreme Court further observed that 'While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to dissimilarity of marks and other surrounding factors.' In the present case the labels and the designs are in English. Therefore, the above mentioned observations are also apt for the present case. In such a scenario, it is imperative for this court to protect the interest of the unwary consumers. The learned Judge has misapplied the Copyright Act while considering the issue with regard to infringement of copyright of the plaintiff. Section 17 of the Copyright Act is as under: 17. First owner of copyright.-Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein: Provided that- (a) in the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor shall, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author shall be the first owner of the copyright in the work; (b) subject to the provisions of clause (a), in the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein; (c) in the case of a work made in the course of the author's employment under a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein; [(cc) in the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person shall be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered;] (d) in the case of a Government work, Government shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein; [(dd) in the case of a work made or first published by or under the direction or control of any public undertaking, such public undertaking shall, in the absence of any agreement to the contrary, be the first owner of the copyright therein; Explanation.- For the purposes of this clause and section 28A, "'public undertaking' means- (i) an undertaking owned or controlled by Government; or (ii) a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956); or (iii) a body corporate established by or under any Central, Provincial or State Act;] (e) in the case of a work to which the provisions of section 41 apply, the international organisation concerned shall be the first owner of the copyright therein: Provided that in case of any work incorporated in a cinematograph work, nothing contained in clauses (b) and (c) shall affect the right of the author in the work referred to in clause (a) of sub-section (1) of section 13.' A bare perusal of the provision clearly reveals that ordinarily the author of the work is the first owner of the copyright. However, the said general rule is subject to certain exceptions made in the proviso. According to Proviso (c) in case a work is created in the course of employment or apprenticeship, then, in the absence of any agreement to the contrary, the first owner of the copyright shall be the employer and not the creator of the work. It is not the case of the defendant Nos. 1 or 2 that there was anything to the contrary in the agreement entered between the plaintiff and Grafik Makros. Thus, prima facie the plaintiff is the first owner of the label/ logo created by Grafik Makros. Hence, the learned Judge was unjustified in concluding that as there was no assignment of copyright in writing, no case is made out in favour of the plaintiff for the infringement of its copyright. Since the plaintiff was the owner, the question of assignment does not even arise. Since the registration of a copyright is not a requirement, since there is a deceptive similarity between the label, the artwork, used by the plaintiff and the Defendant No. 1, there is prima facie an infringement of plaintiff’s copyright in the said design. Moreover, as the plaintiff was using the logo for a few years, the balance of convenience is also in its favour. Likewise, if the defendant Nos. 1 and 2 were permitted to infringe the copyright vested in the plaintiff, an irreparable loss would be caused to the plaintiff. Therefore, the learned Judge should have issued a temporary injunction in favour of the plaintiff for infringement of its copyright. Such a denial of temporary injunction is legally unsustainable. For the reason stated above the appeal filed by the plaintiff, namely S.B. Civil Misc. Appeal No. 199/2014, is allowed. The order dated 2-1-2014 is, hereby, modified to the extent that the defendant Nos. 1 and 2 shall neither manufacture, nor sell their products known as SCOOTER VANASPATI and SCOOTER GOLD VANASPATI during the pendency of the trial. Moreover, the defendant Nos. 1 and 2 shall not use any design, label or logo which is deceptively similar to the design, label or logo being used by the plaintiff for its twin products of SCOOTER VANASPATI and SCOOTER GOLD VANASPATI during the pendency of the suit. The appeal filed by the Defendant No. 2, namely S. B. Civil Appeal No. 293/2014 is, hereby, dismissed. The application filed by defendant No.1 under Or. 41 Rule 27 CPC is also dismissed. By way of abundant caution it is, hereby, clarified that the observations made by this court are limited only to the grant of temporary injunction. Thus, the observations are merely prima facie in nature. They shall not influence the final decision of the learned trial court. Needless to say, the learned trial court shall decide the case on the basis of the evidence produced by the plaintiff and by the defendant Nos. 1 and 2. Moreover, as a prolonged trial is likely to adversely affect the financial interests of all the three parties to the suit, the learned Judge is directed to decide the suit within a period of three months from the date of the receipt of the certified copy of this judgment. The parties are directed to cooperate with the learned Trial Court for an early decision of the case.
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