Case: Centron Industrial Alliance Limited Vs. Gillette U.K. Limited

Oral Judgment (per Desai, J.):This appeal is preferred by the original Defendants against the order of the single Judge making the Plaintiffs Notice of Motion absolute in terms of prayers (a),(b) and (c) except the bracketed portions in respect of prayer (c). When we peruse the Motion, we find that prayer (a) of the Motion relates to purported infringement by the Defendants of the Plaintiffs trade mark "7 OCLOCK". Prayer (b) of the Motion proceeds on the footing of an attempt by the Defendants to pass off the Defendants goods as the goods of the Plaintiffs. Prayer (c) of the Motion pertains to infringement of the Plaintiffs copyright in certain artistic work as indicated in the pleadings. In order to appreciate the controversy between the parties, a few facts may be stated.The Plaintiffs are a well-known English Company and claim to be the owners of the trade mark "7 OCLOCK" under various trade marks more particularly described in paragraph 3 of the Plaint and pertaining to safety razor blades. The Plaintiffs have claimed extensive user in India of the said trade mark prior to 1958 and also claim to have incurred substantial expenditure in connection with advertising the said goods prior to the said date. However, it would appear that after the year 1958 the Plaintiffs could not or were not able to use the said trade mark on an extensive commercial scale due to the restrictions imposed by the Government of India. Despite this, the Plaintiffs have given particulars of the shipments made to India during the years 1982 to 1985 and in one of the affidavits indicated that the aggregate quantity for these three years in which also there were restrictions on the import of the Plaintiffs goods came to over 16,00,000 blades.It would appear that in 1982 due to change of certain policies, collaboration between Indian parties and foreign parties in respect of blade manufacture came to be allowed and a Company named as Indian Shaving Products Ltd. entered into a collaboration agreement with the Plaintiffs and was desirous of introducing 7 oclock blades in India. Ultimately this has been permitted, but on Governments insistence the Indian Company was required to make a slight alteration and have called the blades to be marketed "7 OCLOCK EJTEK".According to the Plaintiffs, in November 1985 the Plaintiffs came to know that the 1st Defendant Company had started selling safety razor blades in wrappers and tucks having the figure and the word "7-Up" together with a device of a clock face with the clock hands at 7. Now, it may be mentioned in this connection that initially, i.e. prior to 1963, the Plaintiffs goods were sold in green wrappers with the O in "7 OCLOCK" being represented in the style of a sun or star with rays emitting from the circumference. However, in 1963 the Plaintiffs adopted a new get-up and in this get-up the figure and the words "7 OCLOCK" which are the material words for our purpose appear on a white background with the numeral 7 being in red and the other words "OCLOCK" being in black. Below this is to be found an indication of the number of blades contained in the tuck which can be five or ten blades. The numeral and the words are in black on a green background. The Plaintiffs found that the 1st Defendants were marketing 7-Up blades where the numeral 7 is extremely similar to the numeral 7 in the Plaintiffs get-up after 1963 and also in red but instead of the word "clock" with the letters in black we have a pictorial representation of a clock with the hands at 7 oclock. To continue with the similarity further, the word "blade" or "blades" is also to be found in black on a green background and all these- the red numeral 7, the black word UP and the clock and the word "blade" or "blades" in black on a green background are on an over-all white background. The Plaintiffs also claim to have discovered round about that very period that the 2nd Defendants had started selling blades with the numeral 7 (in red) and almost identical to the numeral 7 on the Plaintiffs get-up after 1963. This was followed by a large circle, but instead of the circle being blank and, therefore, capable of being considered either a zero or O, the circle in the get-up of the 2nd Defendants represented a clock again with the hands at 7. This was followed by the Hindi word "Baje". The other colour combination and the backgrounds were identical to the get-up of the Plaintiffs tuck after 1963. According to the Plaintiffs, these get-ups and names were adopted by the Defendants deliberately in order to cash in the goodwill of the Plaintiffs products. Accordingly, the Plaintiffs have claimed relief on the three differing footings indicated above in the Notice of Motion.Before considering certain defences which were presumably urged before the Single Judge and which were urged before us, we will have to consider whether there is substance in the Plaintiffs complaint that there is such deceptive similarity between the Plaintiffs trade mark and get-up as would entitle the Plaintiffs to claim, ignoring for the time being certain factors which will be indicated later on, that there was an attempt to pass off the Defendants goods as the Plaintiffs and to trade in on the Plaintiffs reputation and goodwill and to commit a breach of the Plaintiffs property in the goods viz., the trade mark. On any consideration it is impossible at least at the prima facie stage to reject the Plaintiffs complaint. There is a flagrant and blatant attempt to imitate the Plaintiffs goods and the adoption of the red numeral 7 and the clock at 7 in the 7-Up blades with the identical colour get-up cannot be allowed merely because the word "Up" has been put instead of the O. We have for the 7-Up blades the red numeral 7 and the clock at 7. In other words, 7 and the clock and the word Up only carry forward the identical idea, viz., to get up at 7 in the morning and shave with the blade. The other blade, viz. "7 Baje", is still more a blatant imitation both of the Plaintiffs mark and a clearer attempt to pass off the blade presumably as the Hindi version of the famous 7 OCLOCK mark.Thus, the words used as well as the manner of depiction and the colour combination leave no doubt about the intention of the Defendants and their deeds. However, it has been submitted by the Defendants - and these submissions will have to be stated and gone into - that, despite this, the Plaintiffs would not be entitled to interim relief on various considerations. One of the arguments submitted was that the Defendants at all material places clearly indicated that their blades were manufactured either by the 1st Defendant Company (7-Up) for M/s. Goodluck International or in respect of 7 Baje blades by the 2nd Defendant Company and that purchasers would immediately know that these could not be the 7 Oclock blades made in England by the Plaintiff Company. We find very little substance in such a contention. When we consider such complaints, we must bear in mind the nature of the product, the market at which it is aimed, the type of consumers likely to purchase the goods and the outlets for the same. On these considerations it is not possible to accept the submission which was canvassed for, viz., that as the name of the manufacturer and the place of manufacture were clearly indicated on the reverse side, the purchasers attention was clearly directed to the fact that these were Indian goods. To us it appears that it was the usual small print device put only as a defence to meet possible claims as those of the Plaintiffs which were quite likely to arise in the instant case.The second contention was based upon the argument on delay. According to the Appellants Counsel, although the Plaintiffs came to be aware of the products of the Defendants some time towards the end of November 1985, they waited till the end of February 1986 before filing the suit and took out a Notice of Motion only in March 1986. During this time or at least by the time the order was passed by the Chamber Judge the 1st Defendants claim to have made very large sales. We do not find any substantial delay in this case or any laches which would preclude the Court from granting interim relief to the Plaintiffs. We will consider the aspect of alleged sales of blades by the Defendants later on whilst considering a different head of argument based upon principles of balance of convenience and principles on which injunctions ought or ought not to be granted.A very substantial argument which was advanced pertained to the alleged non-user by the plaintiffs of their mark in India after 1958 and it was submitted that whether this was by reason of economic policies of the Government of India or not would make no difference. According to the learned Counsel for the Appellants, on the Plaintiffs own showing, the trade mark "7 OCLOCK" or the blades having the mark and the get-up or at least the blades with the new post-1963 get-up did not enjoy an extensive commercial user in India and were not at all advertised or at least not advertised on a large scale. Our attention was drawn to observations in certain decisions, to which we will briefly advert, to submit that the Plaintiffs reputation and goodwill on the trade mark "7 OCLOCK" followed by "BLADES" must be deemed to have been lost by the time the Defendants blades were put in the market. Now, a number of answers can be given to such argument. In the first place, the Plaintiffs themselves had indicated the supply of 7 oclock blades made by them in India over the three years 1982 to 1985 although on a very restricted scale. This would be presumably to ship-chandlers and foreign embassies and consulates. Despite this, as indicated earlier, over 16,00,000 blades have been supplied to India bearing this name and having the post-1963 get-up. In addition, it has to be remembered that in respect of a consumer article such as a safety razor blade publicity does not take place merely by advertisements in India. Such items are advertised in foreign newspapers and magazines and these newspapers and magazines are circulated in India and are freely imported and presumably read. Apart from this, judicial notice may be taken of a large number of Indians who go out temporarily to other countries, mainly to the Middle-East countries, and who, therefore, had the opportunity to use the Plaintiffs blades. These persons do not permanently settle down abroad and return to India after their two year or three year stay. Even if we ignore for the time being the extra-legal channels by which such items are circulated and in fact found circulated in several large cities, particularly coastal ones or ones having airports, it will not be proper to hold that gradually after 1958 the Plaintiffs have been losing their reputation and goodwill in the name or trade mark and that, therefore, by November 1935 had no goodwill or reputation that could be violated or attempted to be violated by the Defendants by their adopting the names, devices, get-ups and the colour combinations already indicated.Now, in this connection, we may briefly refer to two judgments on which reliance was placed by the learned Advocate for the Appellants.The first of these judgments was Alain Bernardin Et Companies v. Pavilion Properties Limited. (1967). Reports of Patent Cases 581. This judgment dealt with the Crazy Horse Saloon case. The Plaintiffs before the Court were operating a place of entertainment at 12 Avenue George V, Paria known as the Crazy Horse Saloon, which establishment comprised a bar and dancing facilities and a cabaret of high quality and repute. The Defendant owned an establishment near Baker Street Station in London which was subsequently conducted under the name Crazy Horse Saloon.Although the Plaintiffs establishment was maintained in Paris its brochures were available with travel agents in England and was advertised in French papers which found their way to England, the Court declined to grant relief to the Plaintiffs on the basis that the Plaintiffs had not acquired any goodwill or reputation in England although it came to the conclusion that the Defendant had adopted the name Crazy Horse Saloon with the sole purpose of cashing in on the reputation, in the wider sense, of the Plaintiff Company and had deliberately copied the same, not only in name but also in decoration and advertisement. Despite this and the possibility of confusion on which evidence was attempted to be given, the Court refused relief to the Plaintiffs.In our opinion, the decision of the Court in the Crazy Horse Saloon case obviously turned on the nature of the establishment and the physical situation and the approach of the Court or the ultimate conclusion in that case cannot be applied to the type of product which we are considering, viz., shaving razor blade.We were also referred to by the Counsel for the Appellants to a passage to be found on page 102 in Erven Warnink B.V. And Another v. J.Townend & Sons (Hull) Ltd. And Another. (1980) Reports of Patent Cases 31. The passage pertains to observations of Lord Diplock in Star Industrial Co. Ltd. v. Yap Kwee Kor, (1976) F.S.R. 256 at 269 and this passage reads :"Whatever doubts there may have previously been as to the legal nature of the rights which were entitled to protection by an action for passing off in courts of law or equity, these were laid to rest more than 60 years ago by the speech of Lord Parker of Waddington in A.G.Spalding & Bros. v. A.W.Gamage Ltd. with which the other members of the House of Lords agreed. A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up " improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one persons goods as the goods of another. Goodwill as the subject of proprietary right is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill the goodwill in that country perishes with it although the business may continue to be carried on in other countries.It is not possible for us at this stage at least to accept the submission that there was no user at all in India or not sufficient user as to amount to destruction or abandonment of the Plaintiffs goodwill and reputation. It is now equally not possible to accept the submission that the goods of the plaintiffs had lost their distinctiveness and had ceased to be associated in the minds of possible consumers with the goods of the Plaintiffs on account of the policies of the Government of India as a result whereof the commercial user in India had become restricted. It is needless to refer to some other cases to which our attention was drawn at the Bar on this point since we have already held that each case will depend upon individual facts and the type of product (in the wider sense) in respect of which relief is claimed.We were also informed that in India the Plaintiffs collaborators, the said Indian Shaving Products Company Ltd., were required on account of Government decision to adopt a get-up slightly different from the Plaintiffs post-1963 get-up and to add the word "EJTEK" (whatever it may mean) after 7 OCLOCK. It was therefore submitted that in view of this there could be little chance of any confusion between the goods manufactured under licence in India by the Plaintiffs collaborator, viz., the said Indian Shaving Products Company Ltd. and the goods produced by the Defendants. We find no substance in this plea as the essential name still remains 7 OCLOCK. In any case, we are not dealing with the claim by the Indian Company in this Appeal but with the claim for interim relief by the English Company, the owner of the trade mark, and, therefore, will have to consider principally the get-up in which the goods are sold by the Plaintiff Company.It was then submitted that the trial Court was in error in granting injunctions on the Notice of Motion and that the injunctions had been granted in violation of the principles on which interim relief ought or ought not to be granted and the balance of convenience was entirely in favour of the Defendants. It was submitted that the proper order would have been to require the Defendants to maintain accounts and that appropriate relief could have been given to the Plaintiffs at the stage of final decision of the suit had they succeeded.In this connection, we were referred to certain observations of Lord Diplock in American Gvanamid Co. v.Ethicon Ltd.,(1975) 1 All E.R. 504 at 510-511. It is not necessary to set down the passage. Indeed, Lord Diplock very carefully and clearly stated that where interim relief is to be granted, the extent and the nature of relief must very from case to case. At the stage of considering interim relief the Court must consider the prima facie strength of the Plaintiffs case, the nature of the defence and whether ultimately the Plaintiff could be compensated for at the stage of the trial of the suit. The Court will also have to consider the probabilities of success in the defence and also apply its mind to the factor whether the damages likely to be sustained by the successful Defendant ultimately if injunction is earlier granted against them cannot be compensated for.A mere order directing keeping of the accounts does not appear to us to be warranted in this case bearing in mind the fact that this is a clear and deliberate attempt on the part of the Defendants (Appellants before us) to cash in on the Plaintiffs goodwill and reputation and to trap the unwary customer into buying their goods in the belief caused by this deliberate attempt of confusion that the goods are the well known goods of the Plaintiffs. The Defendants are recent entrants as far as these two blade names are concerned and the 1st Defendants at least claim to be makers of blades under other names having extensive reputation and goodwill. It that be so, it cannot be said that the Defendants would be so hurt by the injunctions sought for that on principles on which Courts grant injunctions the injunctions ought not to have been granted against them. Indeed, it appears to us that there will be very little damage to the Defendants. In any case, we would like to observe that this is one of the cases in which, irrespective of considerations of damage, the plaintiffs were entitled to the injunction granted by the lower Court at least both in respect of prayers (a) and (b) of the Notice of Motion.To a certain extent, we are not sure of the claim of the Plaintiffs to be given interim relief on the footing of copyright in an artistic work. We do not wish to express a firm opinion one way or the other since confirmation of the injunction in terms of prayers (a) and (b) would be sufficient at this stage to protect the interest of the Plaintiffs. We may add that the Defendants were permitted by the Court to sell off the existing stock of blades with the names 7-Up and 7 Baje and we were told a few days ago that those tucks have been almost exhaust. (The precise statement was that about 5,000 packets were left about four days ago.) In the circumstances, we cannot find fault with the Single Judge for granting interim relief to the Plaintiffs in terms of prayers (a) and (b) of the Motion.

Decision:
0[ds]In our opinion, the decision of the Court in the Crazy Horse Saloon case obviously turned on the nature of the establishment and the physical situation and the approach of the Court or the ultimate conclusion in that case cannot be applied to the type of product which we are considering, viz., shaving razoris not possible for us at this stage at least to accept the submission that there was no user at all in India or not sufficient user as to amount to destruction or abandonment of the Plaintiffs goodwill and reputation. It is now equally not possible to accept the submission that the goods of the plaintiffs had lost their distinctiveness and had ceased to be associated in the minds of possible consumers with the goods of the Plaintiffs on account of the policies of the Government of India as a result whereof the commercial user in India had become restricted. It is needless to refer to some other cases to which our attention was drawn at the Bar on this point since we have already held that each case will depend upon individual facts and the type of product (in the wider sense) in respect of which relief is claimed.We were also informed that in India the Plaintiffs collaborators, the said Indian Shaving Products Company Ltd., were required on account of Government decision to adopt aslightly different from the Plaintiffsp and to add the word "EJTEK" (whatever it may mean) after 7 OCLOCK. It was therefore submitted that in view of this there could be little chance of any confusion between the goods manufactured under licence in India by the Plaintiffs collaborator, viz., the said Indian Shaving Products Company Ltd. and the goods produced by the Defendants. We find no substance in this plea as the essential name still remains 7 OCLOCK. In any case, we are not dealing with the claim by the Indian Company in this Appeal but with the claim for interim relief by the English Company, the owner of the trade mark, and, therefore, will have to consider principally thein which the goods are sold by the Plaintiff Company.It was then submitted that the trial Court was in error in granting injunctions on the Notice of Motion and that the injunctions had been granted in violation of the principles on which interim relief ought or ought not to be granted and the balance of convenience was entirely in favour of the Defendants. It was submitted that the proper order would have been to require the Defendants to maintain accounts and that appropriate relief could have been given to the Plaintiffs at the stage of final decision of the suit had they succeeded.In this connection, we were referred to certain observations of Lord Diplock in American Gvanamid Co. v.Ethicon Ltd.,(1975) 1 All E.R. 504 atIt is not necessary to set down the passage. Indeed, Lord Diplock very carefully and clearly stated that where interim relief is to be granted, the extent and the nature of relief must very from case to case. At the stage of considering interim relief the Court must consider the prima facie strength of the Plaintiffs case, the nature of the defence and whether ultimately the Plaintiff could be compensated for at the stage of the trial of the suit. The Court will also have to consider the probabilities of success in the defence and also apply its mind to the factor whether the damages likely to be sustained by the successful Defendant ultimately if injunction is earlier granted against them cannot be compensated for.A mere order directing keeping of the accounts does not appear to us to be warranted in this case bearing in mind the fact that this is a clear and deliberate attempt on the part of the Defendants (Appellants before us) to cash in on the Plaintiffs goodwill and reputation and to trap the unwary customer into buying their goods in the belief caused by this deliberate attempt of confusion that the goods are the well known goods of the Plaintiffs. The Defendants are recent entrants as far as these two blade names are concerned and the 1st Defendants at least claim to be makers of blades under other names having extensive reputation and goodwill. It that be so, it cannot be said that the Defendants would be so hurt by the injunctions sought for that on principles on which Courts grant injunctions the injunctions ought not to have been granted against them. Indeed, it appears to us that there will be very little damage to the Defendants. In any case, we would like to observe that this is one of the cases in which, irrespective of considerations of damage, the plaintiffs were entitled to the injunction granted by the lower Court at least both in respect of prayers (a) and (b) of the Notice of Motion.To a certain extent, we are not sure of the claim of the Plaintiffs to be given interim relief on the footing of copyright in an artistic work. We do not wish to express a firm opinion one way or the other since confirmation of the injunction in terms of prayers (a) and (b) would be sufficient at this stage to protect the interest of the Plaintiffs. We may add that the Defendants were permitted by the Court to sell off the existing stock of blades with the namesand 7 Baje and we were told a few days ago that those tucks have been almost exhaust. (The precise statement was that about 5,000 packets were left about four days ago.) In the circumstances, we cannot find fault with the Single Judge for granting interim relief to the Plaintiffs in terms of prayers (a) and (b) of the Motion.