*THE HON’BLE SRI JUSTICE N. V. RAMANA AND THE HON’BLE SRI JUSTICE B. CHANDRA KUMAR +CIVIL MISCELLANEOUS APPEAL No.531 of 2010 % 18-02-2011 # M/s. Trinethra Super Retail Private Limited, Having its registered office at 4th Floor, No. 6-3-569/2, Rockdale, Somajiguda, Hyderabad-500082, represented by its Company Secretary Mr. Vinod K Saraf, son of Sri S. Anjaiah, vide resolution dated 2nd Nov, 2007 … Appellant/ Plaintiff Vs. $ Mee Trinetra Trading Private Limited, Registered Office Plot No. 28, Road No. 5, Jubilee Hills, Hyderabad, Pin: 500033, Represented by its Director Mr. Pilli Guru Prasad Anand, S/o. P. Ananda Rao and others. … Respondents/Defendants ! Counsel for the Appellant: Sri M.V. Durga Prasad Counsel for the Respondents: Sri V. Hari Haran < Gist: > Head Note: ? Cases referred: 1. 2005 (3) ALT 789 2. AIR 1965 SC 980 3. AIR 1970 SC 1649 4. (1972) 1 SCC 618 5. 2004 (28) PTC 121 (SC) 6. 2008 (36) PTC 193 (Del) 7. 2008 (36) PTC 255 (Del) 8. 2009 (39) PTC 347 (Del) 9. 2009 (41) PTC 741 (Del) 10. AIR 1970 SC 1649 11. AIR 2009 SC 1443 12. (2010) 2 SCC 142 13. 2005 (3) ALT 789 14. (1999) 7 SCC 1 15. 1975 (1) AII ER 504 16. 1990 (Supp.) SCC 727 17. AIR 1989 (Del) 157 18. 2001(5) SCC 73 19. 2000(5) SCC 573 THE HON’BLE SRI JUSTICE N.V. RAMANA AND THE HON’BLE SRI JUSTICE B. CHANDRA KUMAR C.M.A. No. 531 of 2010 Judgment: (Per N.V. Ramana, J.) This C.M.A. is directed against the order dated 16.04.2010, passed by the III Additional Chief Judge, City Civil Court, Hyderabad, dismissing the application in I.A. No. 1277 of 2010 in O.S. No. 164 of 2010 filed by the appellant seeking to grand ex parte ad interim injunction against the respondent. The appellant, namely M/s. TRINETRA Super Retail Private Limited, is a company registered under the Companies Act, 1956, and claims to be engaged in the business of providing goods and services. The appellant among others claims to be running a successful and a well known chain of retail stores under the brand name “TRINETRA Super Retail Private Limited” for more than two decades. That they honestly and bona fidely coined the brand name “TRINETRA” and adopted the same in the year 1987 with respect to their products and services and by use of the said trade mark, extensively and continuously, they have made huge sales turnover and profits. The appellant further claims that they are the owner and proprietor of various trademarks numbering about 50, which were registered with the Registrar of Trade Marks on the applications made by their predecessors firm. As the trademark “TRINETRA” is registered in favour of the appellant under various classes and categories of goods, the appellant contends that except they, no other person has any right to use the said trade mark, which is similar or deceptively similar, phonetically or confusingly similar to their trade mark. Any such adoption of their trade mark, by any person or entity or business house or institution, which is deceptively, phonetically or confusingly similar, the appellant contends would amount to infringement of their trade mark, and therefore, illegal. The appellant further contends that the respondent herein has displayed a banner at their business premises in Kukatpally which declared Opening Shortly – “MEE TRINETRA Supermarket”, and they were shocked to note that the trade mark of the respondent was similar to that of the registered trade mark of the appellant in all aspects i.e. sound and get up. The adoption of the word “TRINETRA” by the respondent in their business name “MEE TRINETRA”, the appellant contends infringed their registered trade mark. The appellant further states that on enquiries made by them, they further learned that the respondent has (a) gone ahead and registered a private limited company by name – MEE TRINETRA Trading Private Ltd – with the Registrar of Companies under the Companies Act, 1956; (b) already started the process of indenting stocks from various suppliers, obtained relevant permissions, store licenses, approvals from various authorities; (c) opened a retail store at the premises in Kukatpally where the banner was displayed and also at other places in the city and; (d) planning to open further such stores in the city. The acts of the respondent, the appellant contends, are completely illegal, unlawful etc., and violative of their trade mark rights. The impugned trade mark, “MEE TRINETRA” of the respondent, the appellant claims, is identical and exactly similar to that of the registered trade mark “TRINETRA” of the appellant, which is exclusively identified and related to the appellant, and therefore, contends that if the respondent is allowed to continue to use the word “TRINETRA, it would amount to infringement and passing off of their trade mark, resulting in irreparable loss to them in their business. Contending so, the appellant filed the present suit for permanent injunction restraining the respondents, their directors, partners, servants and agents, distributors, stockists etc., from either directly or indirectly using the registered trade mark “TRINETRA” or any other trade mark identical to or deceptively similar to their registered trade mark with regard to the respondents goods and services, which amounts to infringement of passing off of the appellant’s registered trade marks “TRINETRA”, “TRINETRA Quality First”, “TRINETRA 110%” and “TRINETRA Quick Shop” bearing numbers, as detailed in the petition as prayed for. Pending disposal of the suit, the appellant, by the present application, sought ex parte ad interim injunction against the respondent and their agents etc., from the use of the word “TRINETRA” in their business. The respondent contested the present application by filing counter inter alia contending that the application is not maintainable in law. They contended that the name “TRINETRA”, initially had been adopted by a proprietary firm in the year 1987, later it was converted into a partnership firm and as a private limited company. The name “TRINETRA”, the respondent contends is a common name found in South India, and therefore, the appellant cannot claim any right exclusive or proprietary right over use of the said name. That the appellant by the use of the name “TRINETRA”, is not dealing in any exclusive products either by way of manufacture or rendering of services, and therefore, they cannot claim to have exclusive right over the alleged registered trade mark or of its usage. The respondent further contended that the appellant by their own admission, is selling brands of other manufacturers, and therefore, has no claim to any of those products. The respondent denied that appellant is manufacturing its own household consumable private labels, including grains, pulses, sugar, rice, etc., as claimed. The registration, if any, without prejudice could only pertain to styles, logos, designs, marks and not that of the common name. The particular style adopted by the appellant is only registered and not otherwise. The respondent further contended that the appellant is no more using the brand name “TRINETRA” in their business, and they are doing business in the name of “MORE”, and as a matter of fact, in the twin cities, the name “TRINETRA” is conspicuously absent and only the name “MORE” is visible. The respondent further contended that they are registered as a private limited company under the name and style of “MEE TRINETRA TRADING PVT LTD” and not as “MEE TRINETRA TRADING PVT LTD.”, as claimed by the appellant. They got their trade name registered with the Registrar of Companies on 13.01.2010. The appellant is engaged in sale of products of various manufacturers and suppliers by putting their logo, and there being no prohibition in law, to deal with similar products of various manufacturers and suppliers and do business in the name or to store them and sell them with the approval of said authorities, the appellant cannot have any objection to the use of the word “TRINETRA”, which is dissimilar and not deceptively similar. The respondent further denied that they displayed the banner, as claimed by the appellant, at Kukatpally or at any other place in the city. The respondent further contended that to the legal notice dated 16.01.2010 got issued by the appellant, they issued replied notice on 27.01.2010 clarifying the entire gamut of the claims of appellant in proper perspective and denied their rights. That the rejoinder dated 16.02.2010 got issued by the appellant was not only frivolous, but repetitive of what has been stated by the appellant in the legal notice dated 16.01.2010. So contending, the respondent prayed for dismissal of the present application. Before the Court below, the appellant and respondent did not adduce any oral evidence, but they marked documents – the appellant marked Exs. P1 to P10, while the respondent marked Exs. R1 to R16. However, the Court below, having considered the rival contentions of the parties in the light the material placed, by order dated16.04.2010, dismissed the present application, and refused to grant ex parte ad interim injunction in favour of the appellant holding that there is no deceptive similarity between the logo of the appellant and the respondent and that the word “TRINETRA” is a generic name of Lord Shiva. Questioning this order of the Court below, the appellant, as stated above, filed the present appeal. The learned counsel for the appellant submitted that the appellant is a company registered under the Companies Act, 1956. The appellant got the trademark “TRINETRA” registered under Section 18 of the Trade Marks Act with the Registrar of Companies on 21.04.2006, with prior usage status w.e.f. 01.01.1987. He submits that since the appellant has been using the trade mark “TRINETRA” in their business since 1987 and got the same registered with prior status, they alone have the exclusive right to use the word “TRINETRA” in respect of the business being carried on by them, and none else. He submitted that since the respondent sought to start and started his business in which the appellant is also dealing by prefixing the word “MEE” to “TRINETRA”, there resulted a deceptive similarity between the trade mark of the appellant and the respondent, and as such, the respondent should be restrained from the use of the deceptive trade mark “TRINETRA” as it infringed their trade mark, but the Court below committed a grave error in refusing to grant ad interim injunction restraining the respondent from using the word “TRINETRA”, relying on a judgment of this Court in Chennai Hotel Saravana Bhavan v. Hotel Saravana Bhavan[1], which relates to a case of passing off and not infringement of trade mark, by holding that the word “TRINETRA” is a generic name of Lord Shiva, and that there is no deceptive similarity between the logo of the appellant and the respondent. The learned counsel for the appellant further having taken us through the definitions of the words “deceptively similar”, “mark”, “trade mark” and “registered” and various other provisions of the Trade Marks Act, contended that if there is similarity or deceptive similarity between the trade marks of the contesting parties, either visually, phonetically or by way of colourable imitation or otherwise, the Court should restrain the opposite side from using the said trade mark of the other party, as it infringes the trade mark of the other party. In support of this argument, and various other propositions of law, he relied upon the judgments of the apex Court in Kaviraj Pandit Durga Dutta Sharma v. Navaratha Pharmaceutical Laboratories[2], Ruston & Hornby Ltd. v. Zamindara Engineering Co.[3], Parle Products Private Limited v. J.P. & Co., Mysore[4] and Midas Hygiene Industries Private Limited v. Sudhir Bhatia[5], and of the Delhi High Court in Ahmed Oomerbhoy v. Gautam Tank[6], Cable News Network LP v. Cam News Network Limited[7], Sun Pharmaceuticals Industries Limited v. Cipla Limited[8] and Bihar Tubes Limited v. Garg Ispat Limited[9]. He thus contended that the Court below committed an error in refusing to grant ad interim injunction as sought for by the appellant and prayed that the order under appeal be set aside and the C.M.A. be allowed. The learned counsel for the respondent submitted that the word “TRINETRA”, which is the name of Lord Shiva, is a generic name and used most commonly in Southern part of India. The appellant having not coined the said word “TRINETRA”, cannot contend that they have exclusive right to use the said word merely because they have got the same registered as a trademark with the Registrar of Trade Marks. To demonstrate that the word “TRINETRA” is generic in nature, the learned counsel for the respondent produced a list of firms registered with the name “TRINETRA” with other prefixes and suffixes. He submitted that if at all the appellant had any objection to the use of the word “TRINETRA” by the respondent, they ought to taken objection at the time of registration with the Registrar of Trade Marks, and the appellant having not done so, cannot claim exclusive right of the use of the word “TRINETRA”, particularly when the name, style and entity of the respondent, is graphically entirely different from that of the appellant. The learned counsel for the respondent further having taken us through the definition of the word “trade mark” as defined in Section 2(zb) of the Trade Marks Act, 1999, submitted that unless and until the appellant demonstrates that the trade mark, got registered by him, is graphically similar and not capable of being distinguished, thereby creating deceptive similarity, cannot claim exclusive right to the use of the word “TRINETRA”. He further submitted that the right of the appellant to use the trade mark “TRINETRA” under the Trade Marks Act, is confined only to the products manufactured or services rendered by the appellant, which they can sell by affixing their logo or trademark or symbol or emblem, the appellant being neither a manufacturer nor a provider of services, and the style and colour of the trade mark, logo and entity of the respondent being dissimilar to that of the appellant and capable of being distinguished and there being no deceptive similarity, the appellant cannot contend that by the use of the word “TRINETRA”, the respondent has infringed their trade mark “TRINETRA”, merely because the respondent is also dealing with the sale of goods in which the appellant is also dealing. He further submitted that the appellant, is no more using the name “TRINETRA”, and as are carrying on their business in the name and style of “MORE”, they cannot take any objection to the use of the word “TRINETRA”, which is graphically different, and having regard to the provision of Section 35 of the Trade Marks Act, the appellant cannot prevent the respondent from using the trade mark “MEE TRINETRA”, on the ground that by the use of the word “TRINETRA” in their trade mark, the trade mark of the appellant “TRINETRA” is infringed. In support of his arguments, he placed reliance on the judgments of the apex Court in Ruston & Hornby Ltd. v. Z. Engineering Co.[10], Thukral Mechanical Works v. P.M. Diesels Pvt. Ltd.[11] and Skyline Education Institute (India) Private Limited v. S.L. Vaswani[12] and of this Court in Chennai Hotel Saravana Bhavan v. Hotel Sarvana Bhavan.[13] He submitted that since the word “TRINETRA” is generic and there being no deceptive similarity between the logo of the appellant and the respondent, the Court below has rightly refused to grant ex parte ad interim injunction prayed for by the appellant, and no interference is called for therewith. Hence, he submitted that the appeal be dismissed. Having heard the learned counsel for the appellant and learned counsel for respondent, the only question that arises for consideration in this C.M.A. is whether the appellant has made out any prima facie case, balance of convenience and irreparable injury, for grant of interim injunction, restraining the respondent and their agents from using the name “MEE TRINETHRA” as according to the plaintiff, the use of the word “MEE TRINETHRA’” by the respondent has infringed their trademark. It is the contention of the appellant that the respondent in the guise that the name “TRINETRA” is generic in nature, cannot take a defence to infringe the registered trade mark of the appellant which they are making use of since 1987. This contention of the appellant, may be considered in the light of the judgments relied on by the appellant. I n Kaviraj Pandit Durga Datta Sharma v. Navaratna Pharmaceutical Laboratories, on which the counsel for the appellant, placed heavy reliance to contend that length of user will be a material factor for the mark to become distinctive, the apex Court, discussed the difference between action for passing off and action for infringement of trade mark, and held 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 marks. Where the two marks are identical no further question 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… The facts of the case on hand can be distinguished from the facts of the above-referred case. In that case, the parties were manufacturing the goods i.e., medicines. After full-fledged trial, basing on the appreciation of evidence, it was held by the apex Court that the mark or trade name ‘Navaratna Pharmaceutical Laboratories’ had by user acquired distinctiveness in the sense of indicating the respondent and the respondent alone as the manufacturer of goods bearing that mark and that finding has been affirmed by the learned Judges of the High Court. It was also further held by the apex Court that there was also indubitable evidence regarding the recognition of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for consumption. Thus, the finding was that by reputation the mark had come to denote the goods of the respondent. Of course, it was also held that the essential features of the trademark of the plaintiff have been adopted by the defendant. May be, the appellant is using the word “TRINETRA” since 1987, but it is the specific case of the respondent, that the name “TRINETRA” was used by the appellant, when it was a proprietary firm, that later it was converted into a private limited company, and that now the appellant, is no more using the name “TRINETRA” in their business outlets, and that they are using the word “MORE”. The appellant did not dispute the fact that the appellant is presently carrying on their business through the outlets, which are styled as “MORE”. That being so, we fail to understand how the name, “MEE TRINETRA” is deceptively similar to that of the trade name under which the appellant is carrying on i.e. “MORE”, so as to affect their business adversely. There is no doubt that in an action for infringement where the defendant’s trade mark is identical to that of the plaintiff’s mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion, as held by the apex Court in Ruston and Hornby Ltd. v. Zaimdara Engineering Co., on which the counsel for the appellant placed reliance, but the ratio laid down therein, cannot be made applicable to the facts of the present case, because the findings arrived therein, were based on the evidence adduced by the parties, and the finding of the High Court that there is a deceptive resemblance between the word “RUSTON” and the word “RUSTAM” and therefore the use of the bare word “RUSTAM” constituted infringement of the plaintiff’s trade mark “RUSTON” was not challenged by the other side. It is in such circumstances, the apex Court, held as follows: 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 decide 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 the 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. But in the instant case, it is not the complaint of the appellant that the respondent is using the exact mark of the plaintiff, but contends it is similar. Therefore, the test in this case, is also as to likelihood of confusion or deception. The learned counsel for the appellant has also placed reliance on the decision reported in Parle Products (P) Ltd., v. J.P. and Co., Mysore, in support of his argument that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. In the said case, considering the facts appearing therein, the apex Court found that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same, the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. Having found so, the apex Court observed that if one was not careful enough to note the peculiar features of the wrapper on the plaintiffs’ goods, he might easily mistake the defendants’ wrapper for the plaintiffs’ if shown to him some time after he had seen the plaintiffs’. It is in such circumstances, the apex Court held that the defendants’ wrapper is deceptively similar to the wrapper of the plaintiffs’ that was registered. But such facts, do not appear in the present case, so as place reliance on it. In Midas Hygiene Industries Pvt. Ltd., and another v. Sudhir Bhatia and others, on which the counsel for the appellant placed reliance to contend that when infringement is complained of, the Court should grant injunction, the apex Court observed that mere delay in bringing action is not sufficient to defeat grant of injunction in cases of infringement. On facts, the apex Court found that the carton of the defendant was changed to look almost identical to that of the appellant at a subsequent stage and this prima facie indicated the dishonest intention to pass off his goods as those of the appellants. But that is not the case on hand, because the labels used in the packing of the respondent are said to be different from that of the labels used in the packing by the appellant of their goods. Reliance is also placed by the appellant on the judgment of the Delhi High Court in Ahmed Oomerbhoy v. Gautam Tank. In that case both the parties were manufacturing and selling edible ground nut oils and plaintiff No.1 was doing business under its various trade marks including “Postman”, “Tilola” etc. The marks were registered under the Trade and Merchandise Act, 1958. Thus, they were selling goods since 1949 under the brand name ‘Postman’ and the defendants started selling edible ground nut oils using the trade mark “Super Postman”. The High Court of Delhi observed that the Court will have to go by the principle of ‘balance of inconvenience’ which will be as to who will be more inconvenienced in case the injunction as prayed for by the plaintiff is granted or not granted and who will suffer irreparable loss. It was further observed that the Court must weigh plaintiffs’ need against the defendants’ and determine where the ‘balance of convenience lies and preserve the status quo in respect of rights of the parties which will appear on a prima facie case. In this case, admittedly,