IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED : 29.01.2008 CORAM : THE HON’BLE MR. JUSTICE S.TAMILVANAN A.S.No.76 of 1997 M/s. Ganga Foundry Rep. by its Managing Partner K.Sama Naidu 9/103, Pillaiyar Koil Street, Peelamedu, Coimbatore 641 004. .... Appellant/ Plaintiff. vs. 1. M/s. Ganga Engineering Works Rep. by its Proprietor V.P.Gangaswamy[Died] 2. V.P.Gangaswamy [Died] 3. G.Dhanapal .... Respondents/ Defendants. (The 3rd respondent G.Dhanapal was brought as LR of the deceased R.1 and R.2 as per the order of Court, dated 08.04.2004 made in C.M.P.Nos.19917 and 19918 of 1999 Appeal filed under Section 96 CPC against the Judgment and Decree, dated 08.10.1996 made in O.S.No.93 of 1991 on the file of the First Additional District Judge cum Chief Judicial Magistrate, Coimbatore. For Appellant : Mr. N.Varadarajan For Respondents : No appearance JUDGMENT This appeal has been preferred against the Judgment and Decree, dated 08.10.1996 made in O.S.No.93 of 1991 on the file of the First Additional District Judge cum Chief Judicial Magistrate, Coimbatore. https://hcservices.ecourts.gov.in/hcservices/ 2. The plaintiff, M/s.Ganga Foundry represented by its Managing Partner had filed the suit against M/s.Ganga Engineering Works, by its proprietor, the first defendant. According to the plaintiff, M/s.Ganga Foundry is a registered partnership concern, dealing in the manufacture and selling of electric motors and pump sets, power driven pump sets mono block pump sets and borewell submersible pump sets for about 25 years and also got registered trade mark consist of two letters 'GF' within a circle and the word "GANGA" in capital letters below as the registered trade mark and got exclusive rights to use the trade mark and also obtained ISI quality certificate for its products. According to the plaintiff during February 1990, it was brought to the notice of the plaintiff that the defendants are also manufacturing pumps, electric motors, electric pump sets and submersible pumps and also selling them under the trade mark and name 'GANGA' within a hexagon box. The aforesaid plaintiff filed the suit seeking a decree of permanent injunction restraining the defendants to use the registered trade mark "GANGA" in any manner and also for damages and other consequential relief from the defendant. 3. Per contra, the defendant herein has stated that he had started his business in the name of "GANGA" in the year 1959 and was dealing with textile business and from 1987, in addition to the same, produced motor pump sets and pumps in the trade name of "GANGA". In the additional written statement, it has been stated by the defendants that the registration of trade mark by the plaintiff does not cover submersible pump sets under Section 12 of the Trade and Merchandise Marks Act, 1958. 4. The trial court, considering the pleadings of both parties, has framed the following issues : 1. Whether the plaintiff Messers Ganga Foundry is a registered partnership firm ? 2. Whether the plaintiff firm has registered the trade mark consisting of two letters ' GF ' within a circle and the word "GANGA" in capital letters, as shown in the speciman, with regard to the electric motors, pump sets, power driven pump sets mono block pump sets and borewell submersible pump sets with the Registry to Trade Marks, Government of India, under Trade and Merchandise Marks Act of 1958 ? 3. Whether the Defendants M/s. Ganga Engg. Works has infringed the exclusive right of the plaintiff's trade mark by using the word "GANGA" in Hexagon box, with regard to electric motors, pump sets, power driven pump sets, mono block pump sets and borewell submersible pump sets ? 4. Whether the Defendants are entitled to use the word, "GANGA" to their manufacturing goods, though the plaintiff has registered the trade mark consisting of two letters 'GF' within a circle and a word "GANGA" in capital letters below it ? https://hcservices.ecourts.gov.in/hcservices/ 5. Whether the plaintiff is entitled to a permanent injunction restraining the Defendants from using the word "GANGA" to their manufacturing goods ? 6. Whether the Defendants are liable to produce the lables and name plates, containing the word "GANGA" into court ? 7. Whether the plaintiff is entitled to damages, and if so to what quantum? 8. To what relief the plaintiff is entitled to ? 5. In support of the case of the plaintiff, apart from examining P.W.1, Exs.A.1 to A.37 were also marked. On the side of the defendants, D.Ws.1 and 2 were examined and Exs.B.1 to B.30 were marked. Considering the oral and documentary evidence and also the arguments advanced by both sides, the Court below partly decreed the suit by granting permanent injunction restraining the defendants from using the word "GANGA" either with or without hexagon, with regard to the manufacture of electric motors, power driven pump sets mono block pump sets only with costs and the suit regarding to other relief is concerned was dismissed. Aggrieved by which, the plaintiff in the suit has preferred this appeal. 6. In this appeal, the Court has to decide the following points for determination : 1) Whether the defendants are entitled to use the registered trade mark "GANGA" for their manufactured motors, pumps, power driven pump sets mono block pump sets and submersible pump sets ? 2) Whether the appeal preferred by the appellant has to be allowed ? 7. It is not in dispute in the appeal that the appellant / plaintiff is a registered partnership firm in the name and style "GANGA" Foundry. As held by the court below, the evidence of P.W.1 and Ex.B.1, dated 08.06.1966, certified copy of acknowledgment of registration of firms of the plaintiff "GANGA" Foundry is sufficient to establish that the plaintiff is a registered firm. 8. The trial court, considering the oral and documentary evidence, has held that the plaintiff has a registered trade mark consisting of the 2 letters 'GF' within a circle and the word "GANGA" in capital letters, on 26.09.1980 with regard to electric motors, pump sets, power driven pump sets mono block pump sets, under the Registry of Trade Marks, as per the Trade and Merchandise Marks Act, 1958. Though the defendants had no registered trade mark, as found by the court below, the appellant / plaintiff has established that the firm has got registered trade mark on 26.09.1980, for a period of seven years and the same was also renewed for another seven years from 26.07.1994. https://hcservices.ecourts.gov.in/hcservices/ 9. The supporting documents for the same have been marked as Exs.A.2, A.3 and A.13. It is seen that the certified copy of the registration of trade mark, marked as Ex.A.2 in the suit consisting of two letters 'GF' and a word "GANGA" below it. As per Ex.A.2, the plaintiff has got his trade mark registered for seven years on 26.09.1980, in respect of electric motors, pump sets, power driven pump sets mono block pump sets for a period of seven years. Ex.A.3 is the certified copy of the trade mark, dated, 12.01.1987, whereby under Section 4(2) of the Trade and Merchandise Marks Act, 1958, the registration has been renewed by the appellant / plaintiff. 10. After the registration of the trade mark in favour of the plaintiff, notice to public was given by L.R.Swami Co., Trade Mark Attorneys, Chennai, under Ex.A.5, that the trade mark has been registered in favour of the plaintiff and also informed that the trade name should not be used by any other person, except the plaintiff. As per this trade mark warning, it has been duly informed that the plaintiff has got registered in Trade Mark No.366696 on 26.09.1980 with two letters 'GF' and the word 'GANGA" in respect of electric motors, pump sets, power driven pump sets mono block pump sets. 11. Under the original of Ex.A.6, the renewal of trade mark in favour of the plaintiff was also advertised by L.R.Swami Co., Trade Mark Attorneys. Ex.A.7 is the certified copy of the notice given by L.R.Swami Co., Trade Mark Attorneys preventing other persons from using the said trade mark. Ex.A.8 is the certified copy of the decree in O.S.No.197 of 1988, whereby the appellant herein, as plaintiff therein had obtained decree against one Santhosh Kumar Industries and another, whereby obtained permanent injunction not to use trade mark GF GANGA. The certified copy of the Judgment has been marked as Ex.A.9. Ex.A.10 is the proceedings of the Deputy Registrar of Trade Marks Registry, Chennai, under Trade and Merchandise Marks Act, 1958, in the matter of one opposition by Kirloskar Brothers Ltd. Ex.A.11 is the copy of the notice, dated 11.02.1990 sent by the plaintiff to the defendant. The reply notice, date 08.03.1990 has been marked as Ex.A.13. The said documents show that the appellant / plaintiff has been the registered trade mark holder for the aforesaid trade mark. 12. The second defendant proprietor of the first defendant has admitted in his evidence that the plaintiff had sent legal notice to him, informing him that the defendant should not use the trade mark "GANGA", since the same has already been registered by the plaintiff. According to the second defendant, he was using the trade name "GANGA" for the machines and pump sets manufactured by him. Admittedly, as per the evidence of the second defendant, as proprietor of the first defendant concern, he has not registered any trade mark in the name of "GANGA". The trial court has also given the finding with regard to the same. https://hcservices.ecourts.gov.in/hcservices/ 13. The trial court has also hold that the plaintiff's trade name and the defendants trade name are identical with or deceptively similar with each other and thereby defendants have infringed the exclusive right of the plaintiff's trade mark. It is not in dispute that the plaintiff, as per his registered trade mark is entitled to manufacture and sell electric motors, power driven pump sets, mono block pump sets in the trade name "GANGA" and the defendants have no right to use the trade name "GANGA" for their electric motors, power driven pump sets mono block pump sets. 14. For issue number 5, the trial court has held that the plaintiff is entitled to permanent injunction restraining the defendants from using the word "GANGA" either with or without Hexagon with regard to their manufacturing of electric motors, power driven pump sets and mono block pump sets only and not for the borewell submersible pump sets. 15. Mr. N.Varadharajan, learned counsel appearing for the appellant submitted that the registered trade mark of the appellant / plaintiff would also include borewell submersible pump sets. According to him, the definition of electric motors, power driven pump sets and monoblock pump sets would cover submersible pump sets also. It is not in dispute that the motor pump sets, which are placed below the ground level or at the water level is known as submersible pump set and therefore, the trial court could have granted permanent injunction, as prayed for in the plaint, including borewell submersible pump sets. 16. Learned counsel for the appellant drew the attention of this Court to the dictionary meaning of the word "Pump". As per the new Oxford Dictionary of English, pump means a mechanical device using suction or pressure to rise liquids etc. It is not in dispute that electric motors, power driven pump sets, monoblock pump sets and borewell submersible pump sets are being used for similar purposed under different circumstances. In fact, the pump sets are bring operated by way of using electric power, mechanical power or solar power. As there is similarity in the manufacture of electric motors, power driven pump sets, monoblock pump sets and borewell submersible pump sets, the same were manufactured by the plaintiff as well as the defendants, due to the similarity in the mechanical device. In such circumstances, as contended by the learned counsel for the plaintiff, the interpretation would be just and proper, if it covers all similar mechanical devices, such as electric motors, power driven pump sets, monoblock pump sets and borewell submersible pump sets. 17. As per Section 2 (1) (h) of the trade mark Act, 1999, "deceptively similar" means a trade mark which is deemed to be deceptively similar to another mark, if it so nearly resembles the other trade mark or which may likely to deceive or cause confusion https://hcservices.ecourts.gov.in/hcservices/ in the minds of the public. As per Section 2 (1) (j) "goods" means anything which is the subject of trade or manufacture. In the instant case, as contended by the learned counsel for the appellant, it is seen that the plaintiff has got registered trade mark to manufacture and sell electric motors, power driven pump sets and monoblock pump sets in the trade name of "GANGA" having trade mark 'GF' within a circle and the word "GANGA" in capital letters below it and registered under the Trade and Merchandise Marks Act, 1958. 18. As per Section 29 (2) (c) of the Trade Mark Act, 1999, a registered trade mark is infringed by a person, if the goods or service covered by such registered trade mark is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark. In the instant case, it is seen that the defendant's proprietary concern has been using the trade mark "GANGA", for which no trade mark had been registered by the defendants. Further, as the trade mark was already registered by the appellant / plaintiff, the respondents / defendants cannot register a deceptively similar trade mark, since it may likely to cause confusion on the part of the public and therefore, considering the above facts and circumstances, the trial court has rightly held that the plaintiff is entitled to get permanent injunction against the defendants restraining them from using the word "GANGA" either with or without Hexagon with regard to its manufacturing of electric motors, power driven pump sets and monoblock pump sets. However, the trial court has not extended the permanent injunction, so far as submersible pump sets is concerned. The aforesaid manufactured goods are similar motors and mechanical devices used as pump sets. The only difference for submersible pump set is that it can be placed below the ground level or at the water level for pumping water and therefore, it could be within the purview of electric motors, power driven pump sets and monoblock pump sets, so far as it relates to the registered trade mark is concerned. 19. It is not in dispute that the first defendant, sole trading concern is also dealing in manufacture of aforesaid electric motors and pump sets and therefore, so as to avoid the confusion in the trade mark, they could have obtained some other registered trade mark for their manufacturing goods, for a healthy trend in the manufacturing of electric motors and pump sets. It cannot be disputed that for each category of similar manufacturing goods, separate registered trade mark is not required and deceptively similar unregistered trade mark would certainly confuse the public in the identity of such manufactured goods and therefore, the trial court could have granted permanent injunction against the respondents herein, with regard to manufacture and selling of electric motors, power driven pump sets and monoblock pump sets, including borewell submersible pump sets. So far as the prayer seeking damages is concerned, considering the available evidence, this Court is of the view that there is no error in dismissing the said claim. https://hcservices.ecourts.gov.in/hcservices/ 20. Considering the above facts and circumstances, this Court is of the view to hold all the points for determination in favour of the appellant and accordingly, he is entitled to get injunction restraining the respondents / defendants from using the trade mark 'GF' and "GANGA" for manufacturing and selling his electric motors, power driven pump sets, monoblock pump sets and borewell submersible pump sets. However, it is held that the claim of the appellant / plaintiff with regard to damages has not been established. 21. In the result, the appeal is partly allowed and thereby, granted permanent injunction, restraining the respondents / defendants in the suit, from using the word "GANGA" either with or without Hexagon with regard to manufacturing or selling of their electric motors, power driven pump sets, monoblock pump sets and bore well submersible pump sets. So far as the prayer for damages is concerned, the decision of the trial court is confirmed. However, there is no order as to costs. Sd/- Asst. Registrar. /true copy/ Sub Asst. Registrar. tsvn To The First Additional District Judge cum Chief Judicial Magistrate, Coimbatore. Copy To: The Section Officer, VR Section, High Court, Madras. A.S.No.76 of 1997 vsv[co] sky/11.3. https://hcservices.ecourts.gov.in/hcservices/