IN THE HIGH COURT OF JUDICATURE AT MADRAS Dated:23.02.2011 Coram: THE HONOURABLE MRS. JUSTICE R. BANUMATHI and THE HONOURABLE MR. JUSTICE M.DURAISWAMY O.S.A.No.353 of 2006 & M.P.No. 1 of 2010 Vinod Kumar Agarwal ... Appellant v. Needle Industries (India) Private Ltd. Having its Registered Office At Nilgiris – 643 243, Tamil Nadu Having its Branch Office at A-3 "DBS Paxina" No.10, Bishop Wallers Avenue South Mylapore Chennai – 600 004 Rep. By its Divisional Incharge Mr.Peppin Machado – Power of Attorney .. Respondents This Appeal is preferred against the order of this Court dated 21.03.2006 made in O.A.No.699 of 2010 in C.S.No.687 of 2004. For Appellant : Mr.K.Rajasekaran For Respondent : Mr.Gladys Daniel JUDGMENT M.DURAISWAMY,J, The above Original Side Appeal arises against the order passed the learned single Judge made in O.A.No.699 of 2010 in C.S.No.687 of 2004. 2. The defendant, who was the respondent in O.A.No.699 of 2010 is the appellant and the plaintiff, who was the applicant in O.A.No.699 of 2010 is the respondent herein. https://hcservices.ecourts.gov.in/hcservices/ 3. The respondent/plaintiff filed C.S.NO.687 of 2004 for injunction restraining the appellant/defendant from infringing the registered trade mark and from passing off its goods by using the trade mark PONY. 4. The brief case of the respondent/plaintiff is as follows:- (i) According to the respondent/plaintiff, they commenced its manufacturing activity with the very simple gramophone needles and over the years has transformed into prime global source of finest wide variety of hand sewing and hardware needles, knitting needles, crocket hooks, knitting pins, snap fasteners, hooks, eyes, safety pins, plastic headed pins, peal headed pins etc., under its registered trade mark PONY. All of these products are manufactured in a large number of different shapes and sizes to cater to a wide variety of consumers. (ii) According to the respondent/plaintiff, they are one of the largest exporters of the aforesaid products in India. In order to meet the demand inside the country, the respondent/plaintiff has a large number of sales offices within the country which in turn cater to a huge number of dealers of the respondent/plaintiff's products primarily sold under the trade mark PONY. (iii) According to the respondent/plaintiff, they initially adopted the trade mark PONY and the device of a four legged PONY in the year 1966. The same is still in use thereafter. In and around 1990, the respondent/plaintiff improvised the four legged device mark to the two legged version. The respondent/plaintiff has been taking steps consistently to register and renew its trade mark PONY and device not only in India but in other countries of the world as well. In India, the trade mark PONY (Word mark along with the Device mark) is registered and/or applied for in class 2,4,6,7,8,9,10,16,17,20, 21,22,23,24 and 26 of the IV Schedule attached to the Trade Marks Act, 1999. Some of the other marks are also registered and/or applied for in India. The respondent/plaintiff has registered both the above mentioned marks/labels as artistic work under the Indian Copyright Act of 1957. The device of a four legged PONY was first published in the year 1966 and the new device of two legged PONY was first published in the year 1990 in India. (iv) According to the respondent/plaintiff, their product under the trade mark PONY are published regularly in foreign magazines with write-up of the products and also in Indian magazines and Souvenirs published by various organizations and institutions. The respondent/plaintiff, have raised reputation and capitalized the goodwill. While the matter stood thus, the defendnt, who is originally a sleeping partner in the Untied Traders in the year 1999 https://hcservices.ecourts.gov.in/hcservices/ has commenced the manufacture of plastic products including Combs with the trade name PONY. They also wanted to get the registration of PONY. However, the respondent/plaintiff raised objections. In these circumstances, the respondent/plaintiff filed the application for injunction. 5. The brief case of the appellant/defendant is as follows:- (i) According to the appellant/defendant, he filed the suit in R.S.NO.7 of 2000 on the file of District Court, Lucknow for declaration against the respondents for the alleged infringement of the trade Mark PONY and thereby passing off or unjustified and for perpetual injunction restraining the respondent/plaintiff from continuance of the threat. The said suit was pending. As a counter-blast to the said suit filed by the appellant/defendant, the respondent/plaintiff has filed the present suit. (ii) According to the appellant/defendant, he commenced the business in the year 1988 and applied for registration of the trade mark PONY on 5.10.1999. The respondent/plaintiff is well aware of this fact from the year 1999 onwards. The respondent/plaintiff did not care to initiate any proceedings immediately. By this inordinate delay, the respondent has allowed the appellant/defendant the expend the money over a considerable period of time in building up his business. (iii) According to the appellant/defendant, he was manufacturing plastic bottles, toys like balls and bats from the year 1998. He started manufacturing and sale of plastic combs from August 1999. The raw materials used for manufacture of goods are only plastic. There was no opposition for registrations of the trade mark from any body including the respondent/plaintiff. The mark for the combs manufactured by the appellant/defendant is limited and confined to the state of U.P. only. There is absolutely no similarity in the plastic combs manufactured by the appellant/defendant with the goods manufactured by the respondent/plaintiff. The respondent/plaintiff does not manufacture any item covered under class 21. In these circumstances, the appellant/defendant prayed for dismissal of O.A.No.699 of 2004. 6. The learned single judge after taking into consideration the materials available on record and the submissions made by both the counsels, relied upon a decision reported in 2002 (24) PTC 646 (Needle Industries (India) Limited v. Sanjay Jaiswal and others) and passed an order of interim injunction restraining the appellant/defendant from passing of its goods by using the trade mark PONY. https://hcservices.ecourts.gov.in/hcservices/ 7. Aggrieved over the order of the learned single Judge, the appellant/defendant has filed the above appeal. 8. Heard Mr.K.Rajasekaran learned counsel appearing for the appellant, Mr.Gladys Daniel, learned counsel appearing for the respondent. 9. On a careful consideration of the materials available on record and and on the submissions made by both the counsels, it could be seen that the respondent/plaintiff is a manufacturer of various types of needles under its trade mark PONY. The respondent/plaintiff initially adopted the trade mark PONY and the device of a four legged PONY in the year 1966. In India, the trade mark PONY (Word mark along with the Device mark) is registered under the IV Schedule attached to the Trade Marks Act, 1999. The respondent/plaintiff also registered both the said marks/labels as artistic work under the Indian Copyright Act of 1957 under registration Nos. A-34686/81 and A-51545/92. The respondent/plaintiff got copyright in the year 1981 and registered the trade mark in the year 2001. It is not in dispute that the respondent/plaintiff has been carrying on with the trade mark PONY by manufacturing needles. 10. The learned counsel appearing for the appellant contended that since the appellant/defendant is manufacturing plastic combs, the said products are not cognate to the products produced by the respondent/plaintiff. Therefore, both the products are different and therefore, prayed that the order of injunction granted against him is liable to be set aside. 11. Learned counsel for appellant further contended that the appellant has been doing business using the name "PONY" from 1999 and that the plaintiff filed suit only in 2004 and the plaintiff acquiesced in the acts of the defendant in using the name "PONY" and in view of the acquiescence in the use of the said name "PONY" by the appellant, plaintiff is not entitled to interim injunction. In support of his contention, learned counsel placed reliance upon the following judgments: (i) MIPR 2011(1) 0034 (EVERYDAY INDUSTRIES INDIA LTD. VS. SANAJAY CHANDHA AND ANOTHER), wherein the contention that plaintiff acquiesced in the act of defendant cannot be countenanced. The appellant filed suit R.S.No.7 of 2000 before the District Court, Lucknow and the respondent/plaintiff has entered appearance and is contesting the suit. Therefore, it cannot be contended that there was inaction on the part of the respondent/plaintiff. (ii) So far as acquiescence being one of the defence, in (1994) 2 SCC 44 (M/S.POWER CONTROL APPLIANCES VS. SUMEET MACHINES PVT.LTD.), wherein the Supreme Court observed that acquiescence https://hcservices.ecourts.gov.in/hcservices/ implies positive acts and not merely silence or inaction such as is involved in laches, and the acquiescence is one facet of delay. It was further held therein that acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendants. Therefore, it cannot be contended that the respondent/plaintiff has acquiesced in the act of the appellant. (iii) Learned counsel for appellant contended that respondents/plaintiffs' product is in respect of needles, hand sewing and hardware needles, knitting needles, knitting pins, whereas the appellant's goods is of plastics/combs, both the products are not cognate products and therefore there is no possibility of confusion or deception. In support of his contention, the learned counsel placed reliance upon 2007 (35) PTC 265 (DEL) (CANON KABUSHIKI KAISHA VS. B.MAHAJAN & OTHERS). In the said decision, the Delhi High Court was of the view that in a passing of action, similarity in the kind of goods and line of trade is an important consideration and what has to be assessed is whether there is likelihood of confusion. It was further observed that if there is dissimilarity in the kind of goods/ services, the possibility of confusion or deception would normally be less. (iv) The plaintiff has adopted the trade mark "PONY" for its products in issuing, hardware needs, knitting needles, crock hooks. In the plaint, the plaintiff has set out the huge amount spent on advertising its product and has also set out the sales in India as well as the global sales. Name "PONY" is associated with needles, hardware needles, sewing, knitting needles, etc., In view of the reputation of the mark, which the respondent/plaintiff has acquired, over the years, in our considered view, in a passing of action, it is not essential that common field of activity be established. The crux of passing of action is whether there is the possibility of deception. As pointed out earlier, the appellant's sister concern itself Universal Traders is a respondent's dealer. Therefore, as rightly contended by the learned counsel for respondent, the appellant is deemed to have knowledge of the nature and scope of respondent's business. (v) In CATERPILLER INC., ILLINOIS, USA VS. JORANGE AND ANOTHER, (1997 IPLR 326), the Division Bench of this Court injuncted the use of the mark caterpillar for garments. Even though that mark has been registered in respect of heavy machineries on the ground that the mark has worldwide reputation and use of that mark even in relation to garments would amount to passing of. Even though trade channels for the goods were different. (vi) In KAMAL TRADING CO., BOMBAY VS. GILLETTE U.K. LIMITED, (1988-PTC-1), the Division Bench of the Bombay High Court restrained the use of trade mark 7 O' CLOCK with respect to tooth brushes even though mark has been reistered in respect of blades as https://hcservices.ecourts.gov.in/hcservices/ the mark was well known in the market. In this regard, the learned cousnel for therespondent also relied upon the decisions of single judges of various High Courts in the cases viz, BATA INDIA LIMITD VS. M/S.PYARE LAL & CO., MEERUT CITY AND OTHERS (AIR 1985 ALLAHABAD 242), M/S.BANGA WATCH COMPANY, CHANDIGARH VS. M/S.N.V.PHILLIPHS, EINDHOVEN, HOLLAND AND ANOTHER, (AIR 1983 PUNJAB AND HARYANA 418),DAIMLER BENZ AKTIEGESELLSCHAFT AND ANOTHER VS. HYBO HINDUSTAN (AIR 1994 DELHI 239), which have been referred and discussed in paragraph No.14 of Needle Industries case ((2002 (24) PTC 646 (DB) (MADRAS)) discussed infra. (vii) Learned counsel for appellant placed reliance upon 2000 (20) PTC 191 (NEEDLE INDUSTRIES (I) LIMITED AND ANOTHER VS. VIRUMAL PARVEEN KUMAR). The facts and circumstances of the cases relied upon by the learned counsel for the appellant differs from the case on hand. Therefore, the said judgments are not applicable to the present case. The facts and circumstances of the cases relied upon by the learned counsel for the appellants differs from the case on hand. Therefore, the said judgments are not applicable to the present case. 12. Countering the submissions made by the learned counsel appearing for the appellant, the learned counsel for the respondent submitted that the appellant is a sister concern of the respondent and when the goods are sold using their trade name, it would create confusion, therefore, the learned single Judge has rightly granted injunction in their favour. Further, the learned counsel for the respondent also submitted that since the respondent had already obtained copy right and the same was also registered, the appellant has no right to infringe the trade mark PONY. In support of her contention,t he learned counsel for the respondent relied upon the following judgments:- (i) 2002 (24) PTC 646 (Needle Industries (India) Limited v. Sanjay Jaiswal and others), wherein, it has been held as follows: "The defendants have offered no explanation whatsoever for the adoption of this mark. It is evident that the second defendant having been the dealer of the plaintiff, being familiar with the Mark and being well aware of the enormous goodwill attached to that mark, had sought to ride piggyback on the good will at the cost of the plaintiff. The defendants' conduct is not one which can be regarded as bona fide. The adoption of that trade mark by the defendants was deliberately and consciously done with a view to profit from the goodwill earned by the plaintiff for the mark and label. The fact that the mark has been registered in favour of the first defendant for sewing threads recently https://hcservices.ecourts.gov.in/hcservices/ does not make any difference, as registration of the mark in a different class is not by itself a complete defence in an action for passing off. While such registration may be permissible, the registration does not confer immunity against an action for passing off." (ii) AIR 1988 BOM 167 (Bajaj Electrical Limited v. Metals & Allied Products, Bombay and another) wherein, a Division Bench of the Bombay High Court held that in a case where the defendants were using their family name and not as trading style but as trade mark or trade sign, such user is not permissible. There is no dispute with regard to the legal prepositions laid down in the above referred judgments relied upon by the learned counsel for the respondent. 13. In the present case, it is not in dispute that the appellant has been manufacturing plastic goods including combs and carrying on the business with the same trade mark PONY from the year 1999 and it has also been registered. The respondent is also producing needles under the trade mark PONY. Both the appellant and the respondent have registered the trade name PONY. 14. In 2002 (24) PTC 646 (referred supra) the Division Bench of Madras High Court held that the second defendant therein having been the dealer of the plaintiff therein, being familiar with the Mark and being well aware of the enormous goodwill attached to that mark, had sought to ride piggyback on the good-will at the cost of the plaintiff. The defendants' conduct is not one which can be regarded as bona fide. The said principle squarely applies to the facts and circumstances of the present case The adoption of the trade Mark PONY by the appellant was deliberately and consciously done with a view to gain profit from the goodwill earned by the respondent for the mark and label. 15. IN AIR 1988 BOM 167 (referred supra) the Division Bench of the Bombay High Court held that the plaintiff therein was entitled to the injunction sought for when the defendants were using their family name and not as trading style but as trade mark or trade sign, such user is not permissible. 16. The judgment reported in 1997 JPLR 326 (Caterpillar Inc. Illinois USA v. Jorange and another) also support the case of the respondent. 17. As pointed out earlier, the plaintiff has registered both marks/labels as artistic work under the Indian Copyright Act of 1957. The device of a four-legged PONY as well as the new device of two legged PONY was published and prima facie, the plaintiff is entitled to the protection of the artistic work in the said https://hcservices.ecourts.gov.in/hcservices/ device/labels. The plaintiff has shown a prima facie case. There appears to be no bonafide adoption of name "PONY" by the appellant/defendant. 18. Therefore, applying the principles laid down in the above referred judgments, we are of the considered view that the learned single Judge has rightly granted interim injunction restraining the appellant/defendant from passing of its goods by using the trade mark PONY. 19. In these circumstances, we find that the order of the learned single judge does not warrant any interference. The appeal is liable to be dismissed. Accordingly, the Original Side Appeal is dismissed. Consequently, connected miscellaneous petition is closed. However, there shall be no order as to costs. Sd/ Asst.Registrar /true copy/ Sub Asst.Registrar rj To The Sub-Assistant Registrar, Original Side, High Court, Madras-104. 1 cc To Mr.K.Rajasekaran, Advocate, SR.13074/11 1 cc To Mr.C.Daniel, Advocate, SR.13078/11 O.S.A.No.353 of 2006 tm(co) pmk.5.3.2011 https://hcservices.ecourts.gov.in/hcservices/