IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No 528 of 1999 with Civil Application No. 12384 of 1999 with Appeal from Order No. 529 of 1999 with Civil Application No. 12386 of 1999 and Appeal from Order No. 531 of 1999 with Civil Application No. 12406 of 1999 For Approval and Signature: Hon'ble MR.JUSTICE A.M.KAPADIA ============================================================ 1. Whether Reporters of Local Papers may be allowed : NO to see the judgements? 2. To be referred to the Reporter or not? : NO 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? 4. Whether this case involves a substantial question : NO of law as to the interpretation of the Constitution of India, 1950 of any Order made thereunder? 5. Whether it is to be circulated to the Civil Judge? : NO @ MAHENDRA AND MAHENDRA SEEDS PVT.LTD. Versus MAHINDRA & MAHINDRA LTD. -------------------------------------------------------------- Appearance: MR YJ TRIVEDI for appellant in all AOs MR RR SHAH for Respondent in all AOs -------------------------------------------------------------- CORAM : MR.JUSTICE A.M.KAPADIA Date of decision: 10/05/2002 COMMON ORAL JUDGEMENT 1. What is challenged in these three Appeals from Orders which are filed under Order 43 Rule 1 (r) of the Code of Civil Procedure ('the Code' for short), are three separate orders all dated September 15, 1999 recorded below application Ex.6, notice of motion, in Civil Suit No. 5319 of 1996, 5321 of 1996 and 5320 of 1996 by the learned Judge of the City Civil Court, Court No.25, Ahmedabad, by which application Ex. 6, notice of motion, in all the aforementioned suits seeking ad-interim injunction under the provisions of Order 39 Rule 1 and 2 of the Code in terms of para 18 (a), (b) and (c) of the application till disposal of the suits moved by the respondent against the appellant came to be allowed and temporary injunction in terms of para 18 (a), (b) and (c) of the application is granted till final disposal of the suits on merits. 2. As these three AOs involve determination of common question of law and facts, by the consent of the learned advocates appearing for the parties, the matters are heard at length at admission stage and decided by way of final hearing by this common judgment. 3. In order to appreciate the controversy between the parties, it would be advantageous to refer to the facts stated in AO No. 528 of 1999 which is arising out of Civil Suit No. 5319 of 1999. 4. Appellant is the defendant whereas respondent is the plaintiff and for the sake of convenience and brevity, they are referred to in this judgment hereinafter as 'plaintiff' and 'defendant'. 5. Plaintiff is a company incorporated and registered under the Companies Act, 1913 and an existing company under the Companies Act, 1956. The plaintiff carries on business inter alia of manufacturing two and four drive utility vehicles, tractors, farm equipments and parts and accessories thereof. The plaintiff was incorporated on October 2, 1945 with the name "Mahindra and Mohammed Limited". The subscribers to the Memorandum and Articles of Association of "Mahindra and Mohammed Limited" were Mr. K.C. Mahindra and Mr. Inam Mohammed who were the Promoters of the Company. The name was subsequently changed to "Mahindra and Mahindra Limited" on January 13, 1948. The name of the plaintiff was adopted after its promoter, Mr. K.C. Mahindra. 6. The word "Mahindra" forms a prominent part and feature of the plaintiff's corporate name. It is also a registered trade mark of the plaintiff being registered under Registration No. 338997 in respect of goods in class 12 of the 4th Schedule to the Trade & Merchandise Marks Act, 1958 ('the Act' for short). 7. The plaintiff is a flagship company of the "Mahindra Group of Companies" in which 15 companies are included, namely: (i) Mahindra and Mahindra Financial Services Limited; (ii) Mahindra Exports Limited; (iii) Mahindra Steel Services Centre Limited; (iv) Mahindra Fort India Limited; (v) Mahindra Applied Systems Technology Limited; (vi) Mahindra Sintered Products Limited; (vii) Mahindra Engineering & Chemical Products Limited; (viii) Mahindra Network Services Limited; (ix) Mahindra Information Technology Systems Limited; (x) Mahindra Realty and Infrastructure Developers Ltd; (xi) Mahindra USA Inc. USA; (xii) Mahindra Hellenic Auto Industries S.A. Greece; (xiii) Mahindra British Telecom Limited; (xiv) Mahindra Holdings and Finance Limited; (xv) Mahindra Acres Consulting Engineerings Limited. 8. According to the plaintiff, the word "Mahindra" is a registered trade mark owned by the plaintiff. The plaintiff carries on diverse activities and are engaged in industries and trade, manufacturing of car, jeep, tractor, motor spare parts, farming equipments, chemicals, hotels, real estate, exporter, computer software and computer system, etc. The annual turnover of the plaintiff and some of its group companies exceeds Rs.3,000 crores. The money spent by the plaintiff on advertising and market development for the last ten years is about Rs.900 crores. 9. On account of high quality of products manufactured and sold by the plaintiff as also high quality of products and services of other group companies, the name and trade mark of "Mahindra" used singularly as also "Mahindra and Mahindra" have acquired tremendous reputation and goodwill among members of public throughout the world including India. The name and trade mark "Mahindra" and/or "Mahindra and Mahindra" have come to be identified exclusively with the plaintiff and the plaintiff's Group Companies and their businesses, products and services by members of all trade and of the public. Any reference to "Mahindra" or to "Mahindra and Mahindra" immediately connotes reference to the plaintiff and/or the plaintiff's Group Companies by the trade and public. According to the plaintiff, as a result of the reputation and goodwill acquired by the name "Mahindra" as also "Mahindra and Mahindra", use of the said name or any other deceptively similar word/s by any other person or entity as a part of its corporate name or as a trade mark or in respect of the products offered by it, would inevitably convey and is bound to suggest to the members of the public that the businesses or products of such other person/s are those of the plaintiff or are associated or connected with those of the plaintiff or emanates from the plaintiff. 10. In or about August 1996, the plaintiff came across a prospectus of one 'Mahendra and Mahendra Paper Mills Limited' which is a sister concern of the defendant. In the said prospectus a list of the names of sister concerns of the said Mahendra and Mahendra Paper Mills Limited has been given. From the said prospectus, for the first time, the plaintiff came to know about the existence of the defendant and its name. The name of the defendant is almost the same as that of the plaintiff. The only difference is that the spelling of "Mahindra" is changed to "Mahendra" by substituting "e" for "i". The words are however phonetically and visually and structurally almost identical and in any event descriptively similar. In the prospectus, the words "Mahendra and Mahendra" are written more prominently than the rest of the name. The names of the directors of the defendant mentioned in the prospectus reveal that the surname of all its directors is Parwani but that is not adopted as the corporate name of the company. The first name of the junior most director of Mahendra & Mahendra Paper Mills Limited is 'Mahendra' and he is the only director with the name 'Mahendra'. Hence there is no reason for the company to be named "Mahendra and Mahendra" except that the defendant wishes and intends to fraudulently and wrongfully deceive the members of public into believing that the defendant is an associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff. The Directors of the defendant are likely to be the same and the family members of the Directors of Mahendra and Mahendra Paper Mills Limited. According to the plaintiff, the defendant adopted its name and style dishonestly with full knowledge of the plaintiff's existing name and style and with intent to trade on the plaintiff's reputation. 11. According to the plaintiff, defendant by the use of the name/word(s) deceptively similar to that of the plaintiff's name as its corporate name and in respect of its products as well as passing off and is intending and/or likely to pass off and/or is enabling or will enable others to pass off the business and products of the defendant as those of the plaintiff. The defendant by the use of the said word/s is/are trading on the goodwill and reputation of the plaintiff. By the use of the said word/s, the defendant is creating confusion and deception in the minds of members of public and the defendant and/or its products are in some way associated or/affiliated with or authorized or licensed by the plaintiff or emanate from the plaintiff when that is not the case. A newspaper report appeared in the Times of India dated July 21, 1996 in this regard is relevant. It is also the case of the plaintiff that by using the deceptively similar word "Mahendra" used by the defendant as a part of its trading name/style also constitutes use thereof as a trade mark and is an infringement of the plaintiff's registered trade mark. From the said prospectus the plaintiff has also discovered that the defendant has several concerns which also have "Mahendra" as a part of their corporate names. 12. The plaintiff by its advocate's letter dated August 29, 1996 addressed to the defendant recorded some of the aforesaid facts and called upon the defendant inter alia to change its name. The defendant through its advocate's letter dated September 9, 1996, has raised frivolous and baseless contentions which are not tenable at law. The defendant has wrongfully alleged "honesty" in adopting, basis of adoption, approval by Registrar of Companies as a right to use the impugned name and difference in goods and refused to comply with the requisition made by the plaintiff. It is the say of the plaintiff that one Director having "Mahendra" as his first name or even otherwise did not entitle the defendant to adopt a deceptively similar name/style. The plaintiff called upon the defendant to immediately desist from using the impugned name/trading style. However, the defendant wrongfully continues to use the words "Mahendra and Mahendra" as a part of its corporate name and in relation to products to be sold by it. The defendant has thus continued to pass off and/or enabling others to pass off its business and products as and for those of the plaintiff. 13. The plaintiff, therefore, filed three different suits in the City Civil Court, Ahmedabad as under: (i) Civil Suit No. 5319 of 1996, Civil Suit No.5321 of 1996 and Civil Suit No. 5320 of 1996 against three different companies owned by Mahendra and Mahendra which are as under: AO Civil Defendant's Products Date of No. Suit name use No. -------------------------------------------------------- 528/99 5319/96 Mahendra & Seeds includ- 1978 Mahendra ed in Class-31 Partner- Seeds Pvt. ship is Ltd. convert- ed in limited Co. in 1982 529/99 5321/96 Mahendra Electronic 1983 Electronics goods incl- uded in Class-09. 531/99 5320/96 Mahendra Textile 1995 Denims piece goods (India) included in Limited Class-17. -------------------------------------------------------- 14. The plaintiff filed three separate suits as referred to above against three companies of the defendant claiming relief of permanent injunction with regard to passing off action, from in any manner using as a part of its corporate name or trading style the word "Mahendra" and/or words "Mahendra and Mahendra" or any other word/s which is/are deceptively similar to "Mahindra and Mahindra" so as to pass off or to enable others to pass off the business and/or services of the defendant as those of the plaintiff or as emanating from or affiliated or in some way connected with the plaintiff and also permanent injunction with regard to passing off action from in any manner using in relation to its goods or products the word "Mahendra" and/or words "Mahendra and Mahendra" or any other word/s which is/are deceptively similar to "Mahindra" and/or "Mahindra and Mahindra" so as to pass off or to enable others to pass off the business and/or goods or products of the defendant as those of the plaintiff or as emanating from or affiliated or in some way connected with the plaintiff and also permanent injunction from in any manner infringing the plaintiff's registered trade mark "Mahindra" registered under No.338997 by using the impugned word/mark "Mahendra" and/or "Mahendra and Mahendra" or any other word/s or mark deceptively similar to the plaintiff's registered trade mark and also claimed other ancillary reliefs. 15. Alongwith the suit, the plaintiff also moved three separate applications Ex.6, notice of motion, in each suit against the defendant claiming ad-interim injunction during the pendency of the suits wherein the reliefs claimed are as under: "(a) that pending the hearing and final disposal of the suit the defendant by itself, its servants, its agents or otherwise howsoever be restrained by an order of permanent injunction of this Hon'ble Court from in any manner using as a part of its corporate name or trading style the word "Mahendra" and/or words "Mahendra and Mahendra" or any other word/s which is/are deceptively similar to "Mahindra and Mahindra" so as to pass off or to enable others to pass off the business and/or services of the defendant as those of the plaintiff or as emanating from or affiliated or in some way connected with the plaintiff; (b) that pending the hearing and final disposal of the suit defendant by itself, its servants or otherwise howsoever be restrained by an order of permanent injunction of this Hon'ble Court from in any manner using in relation to its goods or products the word "Mahendra" and/or the words "Mahendra and Mahendra" or any other word/s which is/are deceptively similar to "Mahindra" and/or "Mahindra and Mahindra" so as to pass off or to enable others to pass off the business and/or goods or products of the defendant as those of the plaintiff or as emanating from or affiliated or in some way connected with the plaintiff; (c) that pending the hearing and final disposal of the suit the defendant by itself, its servants or otherwise howsoever be restrained by an order of permanent injunction from in any manner infringing the plaintiff's registered trade mark 'Mahindra' registered under No.338997 by using the impugned word/mark "Mahendra" and/or Mahendra and Mahendra" or any other word/s or mark deceptively similar to the plaintiff's registered trade mark; (d) interim and ad-interim reliefs in terms of prayers (a), (b) and (c) hereinabove; (e) for the costs of and incidental to the application, and (f) for such further and other reliefs as the nature and circumstances of the case may require." 16. In the said application, prima facie case and balance of convenience both are also pleaded and it is also claimed that if the ad-interim injunction as prayed for is not granted, it would cause irreparable loss and damage to the reputation and goodwill of the plaintiff and has also the loss to its products and if such relief is granted, no prejudice will be caused to the defendant and therefore prayed to grant the relief as prayed for. 17. The defendant on filing appearance in all the aforementioned three suits, contested the application Ex.6 notice of motion in all the three suits by filing separate written objections inter alia contending that the defendant is not using the word "Mahendra" as a trademark and in relation to the goods covered under the registration and also denied the allegation of infringement of trademark. It is further contended that the trade channel, the goods, the customer, the price, the get up, colour scheme of arrangement of packing material or plaintiff's product and product of the defendant are different and distinct and, therefore, there is no common field of activities and hence no chance of confusion and deception. It is contended that the defendant's products are sold by different trade mark and therefore traders, consumers and purchasing public are not likely to purchase defendant's product believing that it is a plaintiff's product and therefore there is no question of confusion or deception nor there is any possibility of passing off the defendant's goods as those of the plaintiff's goods. It is further contended that there are number of companies, firms, industries in India bearing the name 'Mahendra' in their trading style and therefore word "Mahindra" is not indicative of origin of plaintiff's business, trade or goods. It is further contended that the word "Mahindra" is not a coin invented and first used by the plaintiff even prior to the adopting of their trade name or trading style bearing the words by the plaintiff and, therefore, plaintiff's company is not the origin inventor and first adopter of the name "Mahindra" and, therefore, the plaintiff is not entitled to claim exclusive right over the word "Mahindra". 18. It is further contended by the defendant that in the year 1978 one Mulchand alias Mahendra started a firm 'Mahendra and Mahendra Seeds Company' as a partnership firm and it started manufacturing and marketing hybrid and vegetable seeds. Before that, in 1974, Mahendrabhai was engaged in the business of electronic lines under the name and style of Mahendra Radio House and in the year 1983 he handed over the said business to his younger brother who continued the said business in the name and style of Mahendra Music and Electronics, and the reasons for adopting the same name as Mulchandbhai is also known as Mahendra and whenever the purchaser, consumer and merchants asked or ordered the product of Mahendra and Mahendra Seeds then and then purchaser, consumer and merchants were identifying that the said business 'Mahendra and Mahendra Seeds' is of defendant's predecessor only and none else. It is also contended that the business of the plaintiff and defendant is quite different and distinct. The goods manufactured and marketed by both the parties are also quite different and distinct, the logo adopted by the parties are quite distinct and therefore there are no chances of confusion or deception in the mind of purchasing public. It is denied that the name/word used by the defendant is deceptively similar to the name of the plaintiff and thereby likely to pass off the business and the product of the defendant as those of the plaintiff. Lastly it is contended that the Notice of Motion is not maintainable as it suffers from the ground of delay and latches. It is also claimed that there is no prima facie case in favour of the plaintiff nor balance of convenience tilts in its favour and if injunction is granted as prayed for irreparable injury or loss would be caused to the defendant rather than the plaintiff and urged to dismiss the notice of motion. 19. Having heard the learned advocates for the plaintiff and the defendant and on analysis, appreciation and evaluation of the pleadings of the parties and documents annexed therewith and considering the judgments cited at the bar, the learned Judge of the City Civil Court, Ahmedabad, came to the conclusions: Findings on Facts: (i) That the plaintiff has established reputation and that the words "Mahindra and Mahindra" has become a household name; (ii) The use of the word 'Mahendra and Mahendra' by the defendant is deceptively similar to the plaintiff's name and is likely to cause confusion and suggest connection or association of the defendant with the plaintiff; (iii) That the defendant when incorporated has not taken over the business carried on by the promoters of the Mahendra and Mahendra Seeds; (iv) The promoters of the defendant can be assumed to be well aware about the business reputation of the plaintiff; (v) No material is placed on record by the defendant about its extent of business; (vi) Considering the totality of facts and circumstances, the balance of convenience is in favour of the plaintiff and greater mischief would occur unless injunction is granted. Findings on law: (a) That common field of activity is not required to be established in a passing off action; (b) The plaintiff in a passing off action does not have to establish fraudulent intention; (c) The plaintiff does not have to establish in a passing off action actual confusion and likelihood of probability or possibility of confusion or deception is sufficient; (d) Deceptive words can become distinctive or acquire secondary meaning; (e) The defence under section 34 of the Act does not apply to an artificial person; (f) The new company does not get the natural rights of a new born individual with that name; (g) An individual not at transferring his business and goodwill to a Company cannot confer upon a company a title to use his name. 20. The learned Judge of the City Civil Court, Ahmedabad has come to further conclusion that the plaintiff has been able to satisfy all the necessary ingredients for grant of temporary injunction, namely prima facie case, balance of convenience and irreparable loss and has held that the plaintiff would suffer irreparable loss if the defendant is continued to use name 'Mahendra and Mahendra' which would be passing off as if and it is associated with or affiliated or connected or concerned with the plaintiff company and the said loss of reputation in mind of the public cannot be compensated in terms of money. 21. On aforesaid view of the matter, the learned Judge of the City Civil Court, Ahmedabad has allowed the notice of motion and thereby granted the injunction in terms of para 18 (a) (b) and (c) to which reference is made in earlier paragraphs of this judgment till disposal of the suit on merits which has given rise to these three separate AOs at the instance of the defendant of the said suits (of the same group of companies). 22. Mr. Y.J. Trivedi, learned counsel for the defendant contended that the plaintiff's trade mark "Mahindra" is registered under class 12 - Automobile vehicle and for the purpose of infringement provisions of Section 28 and 29 of the Act are required to be considered. As per sections 28 and 29 of the Act, right of the registered proprietor is limited to the specific goods in relation to the goods in respect of which trade mark is registered and therefore in view of the provisions contained in sections 28 and 29 no infringement action is maintainable for the goods which are not registered. It is further contended by the learned counsel that Section 27 of the Act clarifies that no suit for infringement is tenable for unregistered mark and the mark is not registered in respect of the goods covered in Class other than Class 12 "automobile vehicles". The learned counsel also asserted that in this regard schedule IV of the Trade and Merchandise Marks Rules 1959 ("the Rules" for short) and states that there are about 34 classes and the application for registration is required to be filed for each class, which means that in respect of goods for each class an application is required and one application does not cover all classes, that is, for each class separate application is required to be filed and the registration of each application grants right to one class of goods and one application is required to be confined to one class as per Rule 26 (1) of the Rules. What is asserted by the learned counsel is that the purpose of the Act is to provide right in respect of which the mark is used and it is not extended to other goods in which the mark is not used. The registered proprietor cannot enjoy monopoly in the article getting registered the mark in respect of goods falling in one class without using the same. Such monopoly is not permissible. The main thrust of the submissions of the learned counsel in this regard is that the present group of the cases is not