Automatic Electric Limited v. R.k. Dhawan & Another

Dr. M.K. Sharma, J.

1. This order shall dispose of the applications registered as I.A. Nos. 8609/1994 and 10285/1994 under Order 39 of the Code of Civil Procedure connected with grant of temporary injunctions in favour of the plaintiff and against the defendants seeking to restrain the defendants from infringing and passing off the trade mark DIMMERSTAT of the plaintiff.

2. The plaintiff adopted the trade mark DIMMERSTAT in relation to variable voltage auto transformers of their manufacture and sale. The plaintiff is stated to have adopted the trademark DIMMERSTAT in the year 1945 and claims to have been using the said trade mark for the last fifty years. In support of the aforesaid contention, the plaintiff has placed on record sales invoices for the period from 1976-82 and then again from 1985-94. The plaintiff has also placed on record its advertisement and catalogues as also the correspondences exchanged inter se parties. The plaintiff has also placed on record the tread mark and certificate which appears at pages 29 and 30 of the plaintiff documents which indicates that the trade mark DIMMERSTAT of the plaintiff is registered in PART-A under Trade Mark Registration No. 178464 dated 14.2.1957 in Class 9 for variable auto transformers.

3. It is stated in the plaint that the plaintiffs goods under the trade mark DIMMERSTAT has been extensively advertised since 1945 and the same has acquired formidable goodwill and reputation which according to the plaintiff is evident from the sale figures set out in paragraph 3 of the plaint.

4. The plaintiff has alleged that the defendants adopted the trade mark DIMMER DOT in relation to variable voltage auto transformers of their manufacture and sale which is likely to cause confusion or deception amongst the members of the public which is deceptively similar with the trade mark DIMMERSTAT of the plaintiff. Accordingly, the present suit was filed by the plaintiff seeking for a decree of permanent injunction restraining the defendants from manufacturing, selling, advertising, directly or indirectly and/or dealing in voltage auto transformers under the impugned trade mark DIMMER DOT or any other trade mark as may be identical to or deceptively similar with the trade mark DIMMERSTAT amounting to infringement of the trade mark of the plaintiff as also for a decree of permanent injunction restraining the defendants from passing-off their goods as that of the plaintiff and also for rendition of account of profits, etc.

5. Along with the plaint an application under Order 39, Rules 1 and of the Code of Civil Procedure was filed which was registered as I.A. No. 8609/1994 on which an ad interim ex parte injunction was granted by this Court restraining the defendants from selling, offering for sale, advertising or dealing in voltage auto transformers under the trade mark DIMMER DOT or any other mark which is identical or deceptively similar with the trademark DIMMER DOT. The said order was passed on 9.11.1994. Immediately thereafter, the defendants entered appearance and filed an application registered under Order 39, Rule 4 of the Code of Civil Procedure which was registered as I.A. No. 10285/1994.

6. Mr. Hemant Singh, Counsel appearing for the plaintiff submitted that use of the trade mark DIMMER DOT by the defendants in relation to variable auto transformers amounts to infringement of the registered trade mark DIMMERSTAT of the plaintiff as the registration of the trade mark DIMMERSTAT was granted in favour of the plaintiff without any disclaimer to the word DIMMER and the said registration was done in respect of PART-A. He draw my attention to the provisions of Sections 28 and 29 of the Trade and Merchandise Marks Act and on the basis thereof submitted that the provisions of Section 28(1) of the Trade and Merchandise Marks Act confers right of exclusive use of the registered trade mark and such a user is in respect of the whole of trade mark unless there is a disclaimer imposed by the Registrar under Section 17 of the Act. He also submitted that Section 29(1) grants a right of exclusive user and such right is infringed when there is a user of identical or deceptively similar trade mark which is likely to deceive or cause confusion. He submitted that the trade mark DIMMERSTAT and DIMMER DOT have identical prefix, thereby leaving similar overall idea and impression on the consumers mind and the same is likely to mislead a consumer usually dealing with one to accept the other if offered by a retailer.

7. In support of his submissions, the learned Counsel relied upon the decisions in Kaviraj Pandit Durga Dutt Sharma v Navratna Pharmaceutical Laboratories,reported in AIR 1965 SC 980 [LQ/SC/1964/275] , and the decision in Amritdhara Pharmacyv. Satya Deo Gupta,reported in AIR 1963 SC 449 [LQ/SC/1962/200] . He also relied upon some other decisions such asAccurist v. Accutron reported in 1966 RPC 152; Alka Seltzer v.Alka Vescent,reported in (1950) 67 RPC 113, 209; Pillobond v. Plyopher, reported in (1951) 69 RPC 40; Starmistv.Stardust,reported in (1951) 69 RPC 40; Marie Elizabethv. Miria Lisette,reported in (1937) 54 RPC 193; Turbotorch v. Turbogaz,reported in 1978 RPC 206 and Univac v Unimac, reported in 1979 RPC 469 in order to support his contention that in case of similarity of prefix, trade marks should be held to be deceptively similar.

8. Mr. Sai Krishna, Counsel appearing on behalf of the defendants, on the other hand, submitted that the word DIMMER being a generic word is incapable of serving a trade mark function. According to him, the product in question is an Auto variable transformer which is also called in trade a DIMMER as it serves the function of dimming or regulating various parameters like heat, light, motor speed, etc. In order to support his contention that the word DIMMER is entirely generic and descriptive when used in relation to auto variable transformers, he relied upon the documents filed by the defendants on 30.11.1998. He submitted that since the word DIMMER signifies and connotes an auto variable transformer, therefore, no trader could monopolise the use of this word in relation to auto variable transformer and registration of such word having a direct reference to the character or quality of the goods is prohibited under Section 9(1)(d) of the Trade and Merchandise Marks Act. He refuted the contention of the Counsel for the plaintiff that auto variable transformers are not called DIMMERS.

9. In support of his submission, the learned Counsel relied upon the decision in Abercrombie & Fitch Companyv.Hunting World, Incorporated,reported in 189 USPQ 759; J.R. Kapoor v.M/s. Micronix India, reported in 1994 (3) SCALE 732. [LQ/SC/1994/732] He further submitted that the trade marks of the plaintiff and the defendants being dissimilar the present cannot because of infringement and at best it could be a case of passing off and DIMMERSTAT and DIMMER DOT being not deceptively similar could not create any confusion and deception. He further submitted that the products in question are extremely sophisticated electrical instruments which are applied in industrial projects and thus the buyers of these products are extremely discerning and would not be confused between the plaintiffs and defendants brand names.

10. He also submitted that the packing of the two products are also entirely different and that also ensures that there is no confusion or deception between the two products of the plaintiffs and the defendants. Mr. Sai Krishna further submitted that there is a honest concurrent user by the defendants of its trade mark DIMMER DOT which according to him is apparent from the fact that the defendants have been using the said trade mark from the year 1980 and in view of such honest concurrent use of the trade mark DIMMER DOT no injunction could be passed against the defendants. He also submitted that there is delay, laches and acquiescence on the part of the plaintiff in approaching this Court, inasmuch as the defendants adopted the trade mark in the year 1980 and that there has been extensive sales and advertising of the defendants of their trade mark DIMMER DOT which is established from the invoices and advertisement placed on record. He submitted that the plaintiff was aware of the defendants trade mark since their advertisements featured in the same trade magazines and, therefore, the plaintiff having sat by and allowing the defendants business to grow for about 15 years consequently acquiesced use of the trade mark DIMMER DOT by the defendants and thus the plaintiff is not entitled to any injunction as prayed for.

11. In the light of the aforesaid submissions and contentions raised, let me consider the issue as to whether the ad interim injunction granted in favour of the plaintiff by this Court should be made absolute oris required to be vacated.

12. There is no dispute to the fact that the trade mark DIMMERSTAT of the plaintiff is registered in PART-A, as is evident from the registration certificate dated 14.2.1957 in Class 9 for variable auto transformers. The said trade mark exists in the registration book from the year 1957. The sale invoices placed on record indicate that the plaintiff has been carrying on the business ofmanufacturing and marketing and selling variable voltage auto transformers of their manufacture and sale in the trade name DIMMERSTAT, immediately after obtaining registration thereto.

13. Section 28(1) ofthe Trade and Merchandise Marks Act provides that the registration of a trade mark in Part-A orPart-B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered. Section 29(1) provides that a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark ora registered user thereof uses in the course of a trade mark which is identical with ordeceptively similar to the trade mark in relation to any goods in respect ofwhich the trade mark is registered. Thus, the right ofexclusive use of the registered trade mark which is conferred under Section 28(1) of the Trade and Merchandise Marks Act shall stand infringed by use of an identical ordeceptively similar trade mark also.

14. The trade mark DIMMER DOT of the defendants is admittedly not a registered trade mark although the own documents of the defendants placed on record indicates that they are using the trade mark DIMMER DOT as a registered trade mark in advertisements, invoices and pamphlets. Such act on the part of the defendants of indicating that their product under the trade mark DIMMER DOT as registered amounts to commission of offence under Section 81 of the Act. No application has also been filed by the defendants before the Registrar for cancellation of the registration of the trade mark DIMMERSTAT adopted by the plaintiff and granted as far back as 1957. These two are very vital issues and speak volume against the defendants. Counsel for the defendants, however, tried to overcome the aforesaid shortcomings by submitting that the word DIMMER being a generic and descriptive word in the context of auto variable transformers, no trader could monopolise the use of the said word in relation to auto variable transformers. The aforesaid submission, therefore, is to be scrutinised in the context of the facts and circumstances of the case.

15. The trade mark DIMMERSTAT is registered without any disclaimer to the exclusive use of the word DIMMER which is part of the composite trademark DIMMERSTAT. The whole of the trade mark as registered including the word DIMMER is subject matter of monopolistic right of exclusive use conferred by the Statute upon the plaintiff under Section 28(1). The validity of the registration of DIMMERSTAT cannot be challenged by the defendants in a proceeding like this for the defendants have a remedy to file cancellation of the registration in an appropriate Forum. But, the said remedy has not been resorted to by the defendants till date. The object or the good involved herein is a variable auto transformer. The word DIMMER as is understood in the common parlance and as stated in dictionary is connected with an arrangement for regulating the supply of the electricity, but, the product here is not a DIMMER, but a variable transformer. Auto transformers have several applications including voltage and current control in experimental and development work in laboratories and R&D departments testing and calibration of indicating instruments, etc. Thus variable auto transformers cannot be strictly called a DIMMER and both are not interchangeable for auto transformer has many other functions. The decision of the Supreme Court in J.R. Kapoor (supra) is also thus distinguishable on facts, for in that case micro-chip technology was the base for both the products which is not the case of the goods in hand.

16. The defendants got their trade mark DIMMER DOT registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in DIMMER DOT, it does not lie in their mouth to say that the word DIMMER is a generic expression. User of the word DIMMER by others cannot be a defence available to the defendants, if it could be shown that the same is being used in violation of the statutory right of the plaintiff. In this connection, reference may be made to the decision of this Court in Prakash Roadline Ltd.v. Prakash Parcel Service (P) Ltd.,reported in 1992(2) ALR page 174=48 (1992) DLT 390. [LQ/DelHC/1992/171] Reference may also be made to the decision in P.M. Diesels Ltd. v. S.M. Diesels, reported in 53 (1994) DLT 742. [LQ/DelHC/1994/126] It was held in those decision that if the plaintiff is a proprietor of the registered trade mark, the same gives to the proprietor of the registered trade mark the exclusive right to use the trade mark with relation to goods in respect of which the trade mark is registered under the provisions of Section 28 of the Trade and Merchandise Marks Act. It was also held that such statutory right cannot be lost merely on the question of principles of delay, laches or acquiescence. It was also held that in general mere delay after knowledge of infringement does not deprive the registered proprietor of a trade mark of his statutory rights or of the appropriate remedy for the enforcement of those rights so long as the said delay is not an inordinate delay. In my considered opinion, the ratio of the aforesaid decisions are squarely applicable to the facts of the present case.

17. In the present case also the defendants had raised plea of delay, laches and acquiescence. The plaintiff has stated that it had knowledge about the infringement of the trade mark only in the month of April, 1994. The defendants have brought to my notice the document filed at pages l53 and 154 of the documents filed by the defendants on 30.11.1998 which is an advertisement of the defendants featured in the same trade magazine wherein advertisement of the plaintiff was also published. In the said magazine the defendants advertisement appears on the cover page of "Instruments and Electronics" while the plaintiffs advertisement appears inside the magazine and on the basis thereof the defendants submitted that it is inconceivable, that the plaintiff was not aware of the defendants use of the trade mark DIMMER DOT.

18. The plaintiff is a Bombay based company. Merely because in a particular magazine advertisement of the defendants was published on the cover page, cannot by itself be a case of deduction that the plaintiff was aware of the advertisement of the defendants trade mark in the said magazine. However, even if such a presumption could be made, the same cannot deprive the registered owner of a trade mark from getting his rights established in a Court of Law, particularly, when the same cannot amount to a case of inordinate delay. The plaintiff has definitely established a prima facie casein its favour to go to trial. The plaintiff has got its trade mark registered in the year 1957 and has been carrying on business on the said trade mark DIMMERSTAT almost from the same time whereas, the defendants admittedly came to the trade much later by adopting a trade mark prefix of which is common to the trade mark of the plaintiff.

19.It is undoubtedly true that the first syllable of a work mark is generally the most important and, thus, when the defendants are using a similar prefix with that of the plaintiff with a little variation in the suffix part of it, in my considered opinion, the trade marks are deceptively similar and cause of action forprima facie infringement is complete. The submission of the learned Counsel for the defendants that the word DIMMER is a generic and descriptive word also cannot be accepted for the trade mark is DIMMERSTAT and not DIMMER and the Court in a case of infringement of trade mark has to look into the whole of the trade mark as registered including the word DIMMER. Since the plaintiff has been using the said trade mark for a long period of time, user of deceptively similar trade mark by the defendants would necessarily cause irreparable loss and injury to the plaintiff. In my considered opinion, balance of convenience is also in favour of the plaintiff and against the defendants.

20. After this Court passed a restraint order on the defendants in the year 1994, the defendants have been using a different trade mark for their product by the name GREEN DOT and has been using the said trade mark GREEN DOT for the last four years and has achieved goodwill and reputation under the said trade mark and has been carrying on business under the said trade mark.

21. Taking note of the aforesaid factors into consideration, I am of the considered opinion, that the plaintiff has been able to make out a prima facie case for grant of temporary injunction in its favour and against the defendants pending disposal of the suit and accordingly the order dated 9.11.1994 passed by this Court granting ad interim temporary injunction is made absolute. Consequently the application registered as I.A. No. 8609/1994 stands allowed and the application registered as IA No. 10285/1994 stands dismissed.

Suit No. 2136/1994.

22. Let the suit be renotified before the Joint Registrar on 26.2.1999 for admission/denial of documents. The parties may file additional/original documents, if any, within four weeks from today.