Case: Mahendra &amp; Mahendra Paper Mills Ltd Vs. Mahindra &amp; Mahindra Ltd

ra Ltd., the respondent herein, instituted a Suit No. 4007 of 1998 in the Bombay High Court seeking a decree of permanent injunction against MahendraMahendra Paper Mills Ltd., the appellant herein, restraining it from using in any manner as a part of its corporate name or trading style the words "MahendraMahendra" or any word which is deceptively similar to "Mahindra" and/or MahindraMahindra. In the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar termsThe case of the plaintiff, sans unnecessary details, is that it is a company incorporated and registered under the Indian Companies Act, 1913 and is an existing company under the Companies Act, 1956. It was incorporated in October 1945 with the name Mahendra and Mohammed Ltd., which was subsequently changed to Mahindra and Mahindra Ltd. on 13th January, 1948. It is the case of the plaintiff that the said company is a flagship company of Mahindra group of companies in which are included 15 other companies, namely :1. MahindraMahindra Financial Services Ltd2. Mahindra Exports Ltd3. Mahindra Steel Services Centre Ltd4. Mahindra Fort India Ltd5. Mahindra Applied Systems Technology Ltd6. Mahindra Sintered Products Ltd7. Mahindra EngineeringChemical Products Ltd8. Mahindra Network Services Ltd9. Mahindra Information Technology Systems Ltd10. Mahindra RealtyInfrastructure Developers LtdSA Inc. USA12. Mahindra Hellenic Auto Industries SA Greece13. Mahindra British Telecom Ltd14. Mahindra Holdings15. Mahindra Acres Consulting Engineerings LtdThe further case of the plaintiff is that the word Mahindra is its registered trade mark bearing Registration No. 338997, in respect of the goods in Class 12 of the TradeMerchandise Marks Act, 1958 (hereinafter referred to as the Act). According to the plaintiff, the word Mahindra is not only a registered trade mark but forms the dominant and significant part of the plaintiff and other companies of the group. The companies carrying the name Mahindra are engaged in industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors, motor spare parts, farming equipments, chemicals, hotels, real estate, exports, computer software and computer systems, etc. The annual turnover of the plaintiff and some of its group companies exceeds Rs. 3, 000 crore. The annual expenditure for advertisements and market development for sales promotion by the plaintiff and its group of companies is about Rs. 9 crore. The plaintiff has averred that the name and trade mark of Mahindra is extremely popular in India and is associated with the products and services of the plaintiff. It was further averred that the Mahindra group of companies have ae network of selling and distributing agents. The name and trade mark "Mahindra" is prominently used and displayed on all its products and also promotional materials. On account of high quality of the products manufactured and sold by the plaintiff, as also high quality of products and services of other group companies, the plaintiff asserts, that the name and trade mark of Mahindra have come to be known exclusively with the plaintiff and its group of companies and have acquired tremendous reputation and goodwill among members of public throughout the world including India. The further case pleaded by the plaintiff is that in or about August 1996, it came across a prospectus of the defendant in respect of its public issue and for the first time the plaintiff then came to know about the existence of the defendant and its corporate name. The name of the defendant is almost the same as that of the plaintiff with the only difference in spelling by substituting e for i in Mahindra. It is the contention of the plaintiff that the words are phonetically, visually and structurally almost identical and in any event deceptively similar. In the prospectus of the defendant the words "Mahendra and Mahendra" are more prominently written than the rest of the names. According to the plaintiff the defendant wishes and intends to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way connected with the plaintiff and to trade on the reputation of the plaintiff. The plaintiff apprehends that by the use of name/words deceptively similar to that of the plaintiffs name as its corporate name the intention of the defendant is tof or likely tof and to enable others tof its business and products as those of the plaintiff. It is the contention of the plaintiff that the defendant by use of the said words is trading on the goodwill and reputation of the plaintiff.The plaintiff in the notice issued on 28th August, 1996 had called upon the defendant to change its name. It had also moved the Securities and Exchange Board of India and various stock exchanges in the country drawing their attention to the fact that the defendant was using a deceptively similar corporate name as that of the plaintiff and to take appropriate action against the defendant. The defendant, in its reply to the said notice, took the plea that it has used the name of Mahendra honestly and the allegations made by the plaintiff that it has dishonestly adopted the said name and style is misconceived. Thereafter, the plaintiff filed the suitThe defendant, the appellant herein, contested the notice by filing a reply affidavit, filed by one Mulchand alias Mahendra G. Parwani in which it was stated, inter alia, that the deponent is better known as Mahendrabhai in the trade circle and he resides in Mahendra House named after him. He has been filing income returns in the name of Mahendra G. Parwani. In the year 1974 he started his sole proprietary business in Prantija District of Gujarat in the name of Mahendra Radio House. After about four years, he along with his two brothers started a partnership firm in the name of MahendraMahendra Seeds Company. According to the deponent, his nephews name is also Mahendra and that is how the partnership firm came to be named as MahendraMahendra Seeds Company. The defendant further averred that on 1st of January, 1982 the said partnership of MahendraMahendra Seeds Company was incorporated as Pvt. Ltd. company in the name of MahendraMahendra Seeds Pvt. Ltd. having its office at 7, Ellora Commercial Centre, Opposite GPO, Ahmedabad. Another proprietary firm by the name Mahendra MusicElectronics was started by the defendants family in the year 1983 and the same was registered under the Sales Tax Act also. It is the further case of the defendant that in the year 1994 the said Mulchand (alias Mahendrabhai G. Parwani) along with his brothers Trikambhai Parvani and Dayalbhai Parwani, incorporated a company by the name of MahendraMahendra Paper Mills Ltd.. According to the defendant, the words MahendraMahendra was a continuation of their business name which they have been using continuously for various businesses since the year 1974. That the public issue was opened on 25th July, 1996 and the same remained open till 6th August, 1996 and despite wide advertisement by the defendant and best efforts, the defendant could not even manage to get 100 per cent subscription and the allegation by the plaintiff that defendant has been using plaintiffs goodwill is wholly misconceived. The defendant also stated that the name Mahendra is a household name in Gujarat and there are several businesses being carried on in the said name throughout Gujarat. The defendant further stated that its products are, in no way similar to the products and businesses of the plaintiff. The business carried on by the defendant does not overlap with the business of any of the companies enlisted by the plaintiff. The defendant pleads that it has a reputation of its own in the name of MahendraMahendra and cannot derive any benefit by the name which is alleged to be similar to that of the plaintiff. The assertion of the plaintiff that the trade mark Mahindra and/or MahindraMahindra have come to be identified with the plaintiff or the plaintiffs group of companies in any manner, has been denied by the defendant. The defendant has also denied that the name of its company can be said to be deceptively similar to that of the plaintiff. The plea off or likelihood off of trade or business of the plaintiff has been denied. The defendant has also set up the plea that the balance of convenience is not in favour of the plaintiff nor the plaintiff would suffer irreparable loss in case the injunction is not granted.On consideration of the petition for interim injunction filed by the plaintiff, the learned Single Judge in para 14 of his order issued the following directions :Accordingly, during the pendency of the suit interim injunction in terms of prayers (a), (b) and (c) shall remain operative. Prayers (a), (b) and (c) read, thus :(a) That pending the hearing and final disposal of this suit, the defendant by itself, its servants, its agents or otherwise howsoever be restrained by an order of temporary injunction of this Honble Court from in any manner using as a part of its corporate name or trading style the words "Mahendra and Mahendra" or any word(s) which are deceptively similar to "Mahindra" and/or "Mahindra and Mahindra" so as tof or to enable others tof the business and/or services of the defendant as those of the plaintiffs or as emanating from or affiliated or in some way connected with the plaintiffs(b) That pending the hearing and final disposal of this suit, the defendant by itself, its servants, or otherwise howsoever be restrained by an order of temporary injunction of this Honble Court from in any manner using in relation to its products the words "Mahendra and Mahendra" or any word(s) which are deceptively similar to "Mahindra" and/or "Mahindra and Mahindra" so as tof or to enable others tof the business and/or services of the defendant as those of the plaintiffs or as emanating from or affiliated or in some way connected with the plaintiffs(c) That pending the hearing and final disposal of this suit, the defendant by itself, its servants, its agents or otherwise howsoever be restrained by an order of temporary injunction from in any manner infringing the plaintiffs registered trade mark "Mahindra" under Registration No. 338997 by using the impugned word/mark "Mahendra" and/or "Mahendra and Mahendra" or any word/s or mark deceptively similar to the plaintiffs registered trade mark.The appeal filed by the defendant against the said order, Appeal No. 1058 of 1998, was summarily dismissed by the Division Bench of the High Court vide its order dated 2nd December, 1998. The relevant portion of the order reads :"In our view, the impugned order passed by the learned Single Judge does not call for any interference. It is found that the respondents are having registered trade mark of MahindraMahindra Company. The appellants want to use the said trade mark by name MahendraMahendra Paper Mills Ltd., for which the company was incorporated in the year 1994. However, before the learned Single Judge, the appellants have failed to produce any material on record to show to what extent the appellants were doing businessFurther, considering the reasons recorded by the learned Single Judge, this appeal is dismissed. ..." *Hence, this appeal by the defendant.

Reasoning:
On analysis of the principles laid down in the decisions, certain recognised parameters relating to the matter have emerged. Without intending to be exhaustive some of the principles which are accepted as well settled may be stated, thus, that whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and othersudging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word Mahindra and MahindraMahindra in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name Mahindra with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs claim off action against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining they which is yet to commence its business from utilising the name of Mahendra or MahendraMahendra for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge.