1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.3981 OF 2007 IN SUIT NO.2757 OF 2007 CIZER TIME INDUSTRIES ..PLAINTIFF VS. LIZER ..DEFENDANT Mr. Salil Shah with Mr. Ramesh Gajaria, Mr. M.R.Nair , Ms. Chitra Parasnis i/b M/s. Gajaria & Co. for Plaintiff Mr. Vallabh Sawana for Defendant CORAM: Smt. ROSHAN DALVI, J. DATED: 30 th March, 2009 P.C.: 1. The Plaintiffs are a registered firm. The Plaintiffs have been assigned the word mark CIZER by the proprietory of the said word mark one Dalichand Gomchand Seth under an Assignment dated 01.07.1995. Trade mark CIZER has been registered since 18.09.1981.The registration has been renewed. 2 2. This word mark is registered under class 14 of the Schedule to the Trade Mark Acts, interalia for watches. The Plaintiffs claim that the Defendant has been using a word mark which is deceptively similar to the Plaintiff's word mark and hence the Plaintiffs have applied for an injunction restraining the Defendant from using any deceptively similar Trade Mark so as to pass of the Plaintiff's goods. 3. The Defendant's Trade Mark is LIZER. The Defendant has registered the Trade Mark as late as on 15.12.2007. The Plaintiffs therefore press only prayer (b) which is for relief in respect of passing off their goods, which are watches, by the Defendant. 4. The Plaint has shown several watches of the Plaintiffs under their word mark CIZER as reflected in Exhibits B & C (Colly). The Plaintiffs have also shown the two watches of the Plaintiffs and the Defendant under their respective Trade Marks CIZER and LIZER in Exhibit B to the Plaint. The two watches are remarkably and unmistakably similar. Both are quartz watches. Both have round dials. The design around the circumference of the dial of the watches as well as the border are similar. The words CIZER and LIZER have been embossed on the face of the watch at the same place and in the same font of writing. The only difference is that the 3 Defendant's Trade Mark shows L.Z.LIZER. The letter Z is superimposed on the letter L. It is shown as a tiny anchor above the word LIZER. 5. The packing material of both the watches is also similar except for its colour. The watches are mounted on a display stand, the design of which is also similar for both of them. The words LIZER and CIZER are shown on the display stand. Except for the fact that the word quartz is also shown on the display stand of the Defendant making the font of the word LIZER slightly smaller than the word CIZER on the Plaintiffs display stand, there is no difference in the packing material. The cover of the display stand is also of a similar shape including a groove on the top of the cover. The letter C in a cursive capital alphabet is the only additional engraving in the Plaintiffs display stand. 6. The Defendant contends that the word LIZER is derived from the word LI which is a traditional measuring unit used in China. 7. The Defendant's Advocate himself has produced three watches before the court one CIZER, one LIZER and one TITAN watch. He contends that the design of the watches are different and the watch straps are different. The Plaintiff has 4 not taken exception to the designs of the watches and watch straps. The fact remains that each of these watches are rectangular and both the rectangular watches show the words LIZER and CIZER in similar font. In these watches produced by the Defendant's Advocate the cursive letter C appears above the word CIZER in the Plaintiffs watch and the letters L, Z with the letter Z superimposing the letter L appears in the Defendant's watch. 8. The Plaintiffs' Advocate stated that since the Plaintiffs came to learn that the Defendant's Trade Mark has been registered only after filing of this suit, the Plaintiffs have applied for cancellation of that registration. 9. A look at the watches and the packing the material of the watches of both the parties show that the prima facie case of passing of the goods of the Plaintiffs is made out. 10. The Defendant's Advocate contended that the partner of the Plaintiffs who has filed the plaint as such partner is not shown in the certificate of registration of the firm as such partner and hence cannot sue. The Plaintiffs firm is admittedly registered. The registration certificate is produced by the Defendant itself. The Plaintiff has produced the Partnership Deed showing the said partner as partner of the 5 firm. Only the name of the partner is not shown as such in the registration certificate. It is contended on behalf of the Defendant that under the provisions of section 69 (1) & (2) of the Partnership Act, the person suing are required to be shown in the register of firms as partner of the firm failing which they cannot sue. However section 69 deals with suits filed by such partner for enforcing their right under a contract or enforcing the right conferred by the Partnership Act. This is not one such case. A passing off action is under common law or the Trade Marks Act, 1999. It does not arise under any contract. It is therefore, not covered under section 69 of the Partnership Act. Besides the partner himself who has signed the plaint or any other partner of the Plaintiffs firm has not sued himself or herself. The suit is filed by the registered firm against the third party under Section 27(2) of the Trade Marks Act, 1999. The suit is therefore not barred u/s 69 of the Partnership Act. 11. Upon the prima facie case having been made out the relief of injunction as prayed for requires to be granted. The Defendant shall not use the word mark LIZER in respect of their watches sold in the market. (Smt. Roshan Dalvi, J)