1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY O. O. C. J. Suit No.41 of 1980 The Atul Products Limited. .. .. Plaintiff v/s. V.P. Mehta, since deceased through his legal heirs & representatives : 1A. Shailesh Vinodrai Mehta & ors. .. .. Defendants Mr.S. Purohit with Ms.Shweta Katvi i/by Dhru & Co. for Plaintiff. Mr.N.B. Zaveri with Mr.M.J . Jhaveri i/by Nandlal Kothari & Sabir for Defendants. ------ CORAM : SMT.ROSHAN DALVI, J. Dated : 2 nd February 2009 JUDGMENT : 1. The Plaintiff carries on business in certain industrial chemicals. The Plaintiff adopted the word mark “Atul” as well as a trade mark “Atul” for its products since 1955. The Plaintiff applied for registration of the trade mark “Atul” on 8.11.1962 in Class- 1, Class- 2 and Class- 5 of Schedule- IV to the Trade Marks Act and Rules. The Suit is concerned with the Plaintiff's mark in Class- 1 relating to chemicals. The Plaintiff’s trade mark, copy of which is shown in the advertisement issued in the Trade Marks Journal, is a symbol in a circle showing the letter “v” in Hindi below which is the entire word “Atul” in Hindi and on the rim of the 2 circumference of the circle are the words “Atul” in Gujarati, English, Urdu and other regional languages separated by 3 dots. 2. The Plaintiff applied for and obtained registration of the word mark “Atul” on and from 1.12.1964 after the relevant inquiries being made by the Trade Marks Registry and the Plaintiff’s Affidavits in that behalf. The Plaintiff has not produced the certificate issued by the Trade Marks Registry. However these marks have been renewed from time to time. The Plaintiff has produced the certified copies of the renewal certificates issued by the Registrar. The last such renewal has been on 1.12.2006. This Suit would be concerned only with the date of the application for the trade mark as well as the word mark and the very first registrations for each of them which are in the years 1962 and 1964, respectively as reflected in the documents of the Trade Marks Registry produced by the Plaintiff. 3. The present Defendants are the heirs and legal representatives of the original Defendant who carried on business as a sole proprietor in the name of Atul Chemicals (original Defendant /Defendant). The Defendant has designed the name of his business Atul Chemicals as an artistic work and has obtained a copyright in respect of the 3 word “Atul” as an artistic work from the Copyrights Office. The Defendant has produced the certified copy of the true extract of the registered copyright dated 13.10.1977 and has produced his artistic work, a copy of which is relied upon by him. 4. It is the Plaintiff’s case that the Defendant has infringed its trade mark. It is the Plaintiff’s alternative case that the Defendant has sought to pass off the Plaintiff’s goods under the word and name “Atul”. The Plaintiff has accordingly sought an injunction against the Defendants, their servants and agents from using the Plaintiff’s trademark /word mark “Atul” in respect of the goods covered under Class- 1, Class- 2 and Class- 5 of Schedule IV to the Trade and Merchandise Act, 1958 (the Act) registered in favour of the Plaintiff in respect of the word “Atul” or the trade name “Atul Chemicals”. The Plaintiff has also sued for damages but that relief is not pressed. Since the Defendants deal in goods and products covered only under Class- 1, the relief of injunction required by the Plaintiff shall only be considered with regard to the products under Class- 1 traded by the Defendants under the trade name Atul Chemicals. 5. The Defendant claims that the word “Atul”, being the name of a person and commonly used as such is a generic term for 4 which a trade mark cannot be granted or enforced. The Defendant also contends that the word is in respect of a geographical place for which also the trade mark cannot be granted or enforced. The Defendant has not applied for cancellation of the Plaintiff’s trade mark either before the Trade Marks Registry or before this Court. It is the Defendant’s contention that whereas the Plaintiff deals in bulk products of industrial chemicals, the Defendant deals in what are called “laboratory chemicals” to be supplied to hospitals, laboratories, schools and the like in smaller quantities. It is also the Defendant’s contention that the Defendant deals in only 5 of the products in which the Plaintiff also deals amongst about 180 chemicals in the market. Since the use by the Defendant is in a different sector, for a different clientele and in a different quantity, the Defendant claims that the Defendant causes no confusion in the market with regard to the Plaintiff’s trade mark or word mark and hence cannot be injuncted. The Defendant has produced certain correspondence between the parties to show that the Defendant’s use of the trade mark Atul Chemicals has not caused any confusion with the Plaintiff's trade mark. The Defendant has contended that there are number of traders carrying on business in various products under the name “Atul” with regard to that industry. These relate to the use of the name “Atul” not only for 5 products under Class- 1 of Schedule- IV of the Act but for various other products for which the Plaintiff has not sued. The Defendant has also contended that the Plaintiff’s Suit is barred by limitation or suffers from gross delay in filing this action in law since the Defendant has been using the word “Atul” as a part of his trading style since the year 1968 till the filing of the Suit bonafide, lawfully and honestly and to the knowledge of the Plaintiff and the Plaintiff must be taken to have waived or abandoned any right to object to the Defendant’s trade name. The Defendant also claims that, in any event, the Defendant’s dealings are for different products of different size and have caused no confusion and that the Defendant does not even desire to cause any confusion in the market. It is also the Defendant’s case that the Defendant maintains high quality standard and has established good reputation in market and has caused no injury to the Plaintiff. 6. Based upon the aforesaid contentions of the parties, the following issues have been framed by Justice V.R. Datar (as he then was) which are answered as follows:- ISSUES (1) Whether the Plaintiff proves that the word “Atul” is not a common dictionary word and/or common personal name. - (REDRAFTED) 6 (2) Whether the Plaintiff proves that it has exclusive right to use the said word “Atul” as part of trade names. - YES SUBJECT TO 2 DEFENCES. (3) Whether the Plaintiff proves that it is the registered proprietor of the trade mark “Atul” and whether the same is valid and subsisting. - YES (4) Whether the Plaintiff proves that the Defendants' adoption of the trading style “Atul Chemicals” is dishonest. - NO (5)Whether the Plaintiff proves that use by the Defendants of the trade name “Atul Chemicals” has caused any confusion or deception. - NO (6)Whether the Plaintiff proves that use of the trade mark “Atul” by the Defendants has resulted in any confusion. -DOES NOT COME UP FOR CONSIDERATION. (7)Whether the Plaintiff proves that the Defendants are not entitled to use the trade name “Atul Chemicals”. - NO (8)Whether the Plaintiff proves that the Defendants are not entitled to use the word “Atul” as a trade mark. - NO (9)DELETED (10)Whether the Defendants prove that they have been openly and continuously doing their business under the trade name Atul Chemicals since the year 1968. - YES (11) Whether the Defendants prove that they have been openly and continuously using trade name “Atul” from the year 1968 till prevented by interim injunction order. - YES, BUT FROM 1977. 7 (12)Whether the Plaintiff is estopped, acquiesced from objecting to the use of the trading style “Atul Chemicals” or the trade mark “Atul” by the Defendants. - YES (13)Whether the Plaintiff is disentitled to reliefs on account of delay and laches in filing the Suit. - YES (14)What reliefs ? - AS PER FINAL ORDER 7. It is argued on behalf of the Plaintiff that Issue No.(1) needs to be amended. It is contended that the onus of proof on the Plaintiff in Issue No.(1) is incorrect. Hence the issue is redrafted and answered as follows:- “Whether the word “Atul” is a common dictionary word and/or a common personal name”. - YES 8. Both the parties have produced copies of the documents relied upon by them in separate compilations. Neither of the parties has objected to the production of any of the documents of other party. Both the parties have sought to rely upon and interpret the documents of itself and other party. The documents have not been considered for their admissibility separately. They are, therefore, not separately marked as Exhibits. They shall, therefore, be relied upon considering the description of the documents themselves. 8 9. The parties have led oral evidence. The Plaintiff has examined two witnesses who are its officers. The Defendant has examined himself. 10. The Plaintiff has essentially relied upon the applications made to the Trade Marks Registry for the issue of the trade mark as well as the word mark “Atul”, the affidavits filed by the officer of the Plaintiff on behalf of the Plaintiff and the registration certificates issued as renewed by the Trade Marks Registry from time to time. The material aspect is the dates of the applications for registration of the Plaintiff's word mark as well as trade mark. The Plaintiff has produced the correspondence exchanged between the parties with regard to the use of the trade mark prior to the filing of the Suit which forms a chain of correspondence admittedly exchanged between the parties. 11. It is the case of the Plaintiff that certain other parties had also tried to infringe the Plaintiff’s registered trade mark and hence the Plaintiff has instituted legal proceedings in Ahmedabad City Civil Court and Surat District Court being 2 Suits filed therein and an Appeal therefrom being Regular Civil Suit No.532 of 1977 in the Ahmedabad City Civil Court, Regular Civil Suit No.2950 of 1976 in the Ahmedabad City Civil Court, Regular Civil Suit No.6 of 1977 9 in Surat District Court and Appeal No.366 of 1978 therefrom. The Plaintiff has relied upon certified copies of those papers and proceedings being judicial records which carry a presumption as to their correctness. 12. The reliance by the Plaintiff upon its certificate of incorporation, Articles and Memorandum of Association of the Company and the annual reports is not required and has not been ultimately relied upon in the arguments in view of the admitted position of the Plaintiff being a limited Company so incorporated and having its own goodwill and sales as reflected in its annual reports. 13. The Defendant has relied upon the Birth Certificate of his second son who was born on 9.2.1962 and who was named Atul after whom the original Defendant had sought to name his business. The Defendant has relied upon the Certificates of Registration under the Bombay Sales Act and Shops and Establishments Act which are public documents issued by the said relevant authorities. The Defendant has also relied upon certain prices, extracts of telephone directories, advertisements in respect of the Defendant in certain trade journals, list of firms registered with the Registrar of Firms having the name Atul and dealing in various industries other than commercial products, two of which deal in chemicals 10 being M/s.Atul Chemical Industries and M/s.Atul Chemical Corporation. The Defendant has produced certified extracts from the Registrar of Firms in respect of several of these Companies. The Defendant has produced his own certificate of the Copyright Office showing “Atul” as an artistic work and the label showing the said artistic work. The Defendant has also relied upon and produced the directory of the Chemical and Alkali Merchants' Association showing, inter alia, the Defendant’s advertisements, the extract relating to certain Firms, inter alia, being of M/s.Atul Chemicals, M/s.Atul Paints and Chemical Company and Atul Traders. The Defendant has also produced extracts of Chemical Weekly showing, inter alia, the products in which the Defendant deals and various copies of advertisements in various magazines or souvenirs showing firms, inter alia, with the word “Atul”. Similarly the Defendant has produced the extract of dictionaries dyestuffs, inter alia, of the Plaintiff-Company along with particulars of its telephone number, telex and products that it deals in which relate to dyes. The Defendant has further relied upon certain correspondence between the Plaintiff and the Defendant as a part of its business relating to certain trade inquires made by the Plaintiff or its agro chemical divisions for certain goods being the chemicals in which the Defendant deals. 11 14. Though several documents of the Defendant are private documents and otherwise required to be proved by direct evidence being copies of certain private magazines, directories, trade journals, etc., the Plaintiff has not taken exception to his production and has cross- examined the Defendant upon the documents. 15. The interpretation of the documents of both the parties upon their acceptance would, therefore, be required. 16. Issue No.(1) : It is common knowledge and an admitted fact that the word “Atul” is a proper name of a person and is rather a common proper name. It is a Sanskrit term. Its meaning in English is known to all in this country. The word “Atul” means incomparable, unparalleled or unweighable. In fact, it is an aspect of which judicial notice is required to be taken. Hence under Section 56 of the Evidence Act such fact need not be proved. This aspect is not seriously contested or denied by either party in this Suit. Issue No.(1) is, therefore, answered in the affirmative. 17. Issue Nos.(2) & (3) : The Plaintiff has obtained registration of its trade mark “Atul” shown in a circle with the letter “v” in Hindi as well as the word “Atul” in various Indian languages therein. The Plaintiff has obtained separate 12 registration of its word mark “Atul”. There are 3 such separate trade registrations, each relating to Class- 1, Class- 2 and Class- 5 of Schedule- IV of the Act. It is the Plaintiff’s case that it commenced its use of the said trade mark and word mark since 1955. The averment in that regard is made in paragraph 7 of the Plaint. The Defendant has not admitted the said averment in paragraph 7 of the Written Statement. However there is not much contest between the parties on this score in their evidence. The averments in paragraphs 11 and 12 of the Plaint show the applications made by the Plaintiff for registration of the trade mark and the word mark “Atul” on 8.11.1962 and 1.12.1964. The trade mark and the word mark, which came to be ultimately issued by the Trade Marks Registrar, would be effective from the date of the applications. Hence the Plaintiff’s registration of the trade mark and the word mark relating to Class- 1 products, with which this Suit is concerned, is from 1962 and 1964. Upon registration, the Plaintiff would be entitled to use the said trade name, the Plaintiff being a registered proprietor of that mark. The Plaintiff would also be entitled to use the word mark “Atul” as a part of its trading name, only subject to the Defendant’s defences with regard to the user of the word as a common dictionary word or a common personal name by various parties, including the Defendant and the delay in the Plaintiff’s action by allowing the 13 Defendant to use the said word for a number of years until the filing of this Suit. Issue Nos.(2) and (3) are answered in the affirmative accordingly. 18.Issue No.(4) : Though the Plaintiff is the registered proprietor of the trade mark “Atul” and the word mark “Atul” and would be entitled to its exclusive use pursuant to its registration, it is the Defendant's case that the Plaintiff's application for registration of trade mark and word mark “Atul” itself is obtained by practising a fraud upon the Trade Marks Registry. Though the Defendant has not applied for rectification of the Plaintiff's trade mark or its cancellation, this aspect is required to be considered only in respect of the fact that the Plaintiff's application is for the trade mark “Atul” and for the word mark “Atul”. Judicial Notice of the fact that this is a very common personal name has been taken by the Trade Marks Registry. It was upon the Plaintiff's insistence that it was not a common personal name that the trade mark and the word mark have been allowed. The Plaintiff has, therefore, made itself fall within the mischief of Section 34 of the Act. The Plaintiff took the risk and chance of having other dealers of chemicals, dyes and pharmaceuticals to adopt the same trade mark or a word mark. The Plaintiff’s use is limited to and excepted by the exception contained in Section 34 of the Act. Section 34 14 runs thus:- “ 34. Saving for the use of name, address or description of goods. - Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods .” Therefore, the Plaintiff has to prove that the Defendant has used the Plaintiff’s trade mark or word mark “Atul” dishonestly and malafide. The dishonest and malafide use by a trader dealing in the said goods would only be shown if the trader has sought to impeach upon the profits or goodwill of registered trade mark holder. 19. It is contended on behalf of the Plaintiff that once the Plaintiff shows that it is the registered owner of the trade mark and the Plaintiff shows that the Defendant is dealing in the same goods under the same trade mark or word mark, the Plaintiff need show no more. That contention is true with regard to the use of an exclusive trade mark which no other trader can use. Consequently, the use of the name of a person or the place of his business is excepted. Since the Plaintiff’s trade mark as well as word mark is only “Atul”, 15 without more and since the said word is a very common personal name of males in this country, the bonafide use by the Defendant of such word mark would have to be seen by lack of malafides rather than by the mere use of such word which can be taken to be an infringement of the Plaintiff’s word mark. The Defendant’s Advocate put it rather succinctly when he gave the illustration of the word “Infosys” to Court to bring home the point that a trade mark so distinctive and unique, can be taken to be used dishonestly by a mere use without more, but a word mark such as “Atul” would not fall within the mischief of the said rule if it is shown to be used bonafide by a person as his own name or the name of the place of his business. In this case, it is the name of the original Defendant’s younger son, born on 9.2.1962 as evidenced by his birth certificate, produced by the Defendant. 20. The Plaintiff has averred about the use of the mark “Atul” since 1955. The Plaintiff has not produced any documentary evidence to substantiate that averment. The Plaintiff has applied for registration of the trade mark only in 1962 and of the word mark in 1964. The Defendant claims to have used the mark “Atul” as a part of the Defendant’s trade mark since 1968. The Defendant has also not produced any documents to show the commencement of the user of the 16 said trade name since 1968 or thereabouts. However the fact remains that since the word mark “Atul” is a common personal name of males and is the Defendant’s son’s personal name also, the use by the Defendant cannot be termed malafide. 21. The Plaintiff has simplicitor produced annual returns of the years 1988, 1999 and 2000 to show its sales. The user is since the 1960s by both the parties. Mere production of annual returns of the aforesaid years cannot show any malafide use by the Defendant. The Plaintiff has not even sought to show how the Plaintiff’s profits and sales have come to be affected by the Defendant’s use of the said word as a part of the Defendant’s trade name. Consequently, no malafides can be imputed and hence conversely the Defendant’s use is seen to be bonafide. 22. The Defendant has not sought to use the Plaintiff's trade mark. The Defendant cannot do so. The Plaintiff, who is the registered holder of the trade mark, in the form described above would be entitled to use it exclusively in such form. However the word mark “Atul” falls within the parameters of Section 34 and is exempted from the rigours of infringement by its use. Consequently, the Defendant’s adoption of the trading style “Atul Chemicals” cannot be taken to be 17 dishonest. 23. The Plaintiff has relied upon the judgments in cases which have the use of the trade marks of registered owners per se is held to be dishonest Ruston and Hornby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649 , Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 and Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & ors., AIR 2006 SC 3304 . 24. The case of Kirloskar Diesel Recon Pvt. Ltd. vs. Kirloskar Proprietary Ltd. & ors, AIR 1996 Bombay 149 must be considered if only for its non- application. In that case an employee of the Defendant- Company, which is famous, whose surname was Kirloskar, started another Company bearing the name Kirloskar as a part of its corporate name. It was held that the word “Kirloskar” had acquired a secondary meaning and had almost become household word. The Defendant was restrained from using his surname in its corporate name upon it being held by this Court that the saving under Section 34 of the Act which applied to the name of a person was held not applicable to the corporate name which was specifically given. 18 25. In the case of Poddar Tyres v. Bedrock Sales Corporation Ltd. & anr., AIR 1993 Bombay 237 , the question of bonafide use under Section 34 of the Act came up for consideration. The use of the Defendant's name was contended to be an exception to the general rule relating to the rights of registered owners of trade mark under Section 28 of the Act. In that case, it was held that the Defendant has not adopted the word “Bedrock” of which the Plaintiff was a registered owner bonafide as a part of the name of the Defendant’s Company. Though we are not concerned with the facts of that case which drove the Court to conclude the absence of bonafides, the Defendant, in this case, claims the use of the word “Atul” being the name of his younger son. The Defendant has taken upon himself to discharge the onus of proving the use pursuant to his son's birth by way of his personal name as shown in his birth certificate. The user of the trade name by the Defendant has been without any reference to the Plaintiff's word name and trade mark which were then in their infancy, they having been acquired but 4/6 years before the original Defendant