G.R. Luthra, J:

1. Two application are being decided by this order I.A. 3149/83 is for issue of a temporary injunction restraining the defendant, its servants, agents, dealers and representatives from manufacturing, selling and offering for sale of stoves under the identical or similar design, shape or configuration of having similar features as belonging to the stoves manufacture by the plaintiff which are having trade-mark Perfect and Swastik Perfect and have also registered design under No. 147557. The present application is connected with Suit No. 1083/83.

I.A. 3500/83 is for consolidating an application, registered as C.O. 14/83 of the defendant for cancellation of the registration of the design of the stoves of the plaintiff, with the present suit.

2. The suit of the plaintiff is in respect of issue of four types of perpetual injunction. The first is for restraining the defendant from manufacturing, selling or otherwise dealing in stoves under the trade mark PERFECT and SWASTIK PERFECT and any other trade mark identical or deceptively similar to the aforesaid trade-mark. The second injunction is in respect of using of the cartons, which contains the stoves, having the name PERFECT and SWASTIK PERFECT. The third injunction is in respect of using the stoves having the same or similar type of registered design as that of the plaintiff. The fourth injunction is in respect o passing off of the stoves of the defendant as those of the plaintiff. The plaintiff also prays for rendition of accounts of profits earned by the defendants on the soles of stoves under the infringing design, trade mark and carton entitled PERFECT. The last prayer of the plaintiff is for delivery of all the offending, counterfeiting labels, cartons, wrappers, dies, blocks and finished and unfinished stoves bearing the impugned design.

3. The plaintiff is a partnership firm who is carrying on business of manufacturer and marketing of kerosene oil stoves. According to the plaintiffs, they have been continuously and regularly using the trade-mark PERFECT in respect of their stoves right from the inception of their business since April, 1, 1964. It is asserted by them that they have also using the word PERFECT on cartons in which their stoves are contained. However it was in the year 1976 that they got their trade-marks SWASTIK and SWASTICK PERFECT registered as under ;

Regd. No.DatedClassJ.N.UserTrade Mark

3218736-1-1977117231-4-1976SWASTIK

33370618-2-1978117261-4-1976SWASTIK PERFECT





4. The plaintiffs not only claim to be registered proprietors of the aforesaid trade-mark, they also claim to be proprietors of the design of the stove. They alleged that the design of the stove has been registered under No. 147557.

5. According to the assertion of the plaintiffs, even the cartons in which stove is contained has a distinctive and artistic colour scheme, get-up, layout and writing style and, therefore, a copyright of the same is registered under the provision of Copyright Act under Nos. A-34894/81 and A-34970/81.

6. On the basis of the above allegations, the case of the plaintiff is that none except them is entitled to use the design and trade-mark of the stove and the shape, configuration and get-up of the cartons. They complain that defendants who were their agents upto 1981 in respect of their stoves had started manufacturing of their stoves and they were passing off their said stoves by having a similar design, trade-mark as PERFECT and deceptively similar carton. They, therefore, brought the present suit.

7. The defendant contested the suit. It was denied that the word PERFECT was registered as trade-mark. The defendants stated that the plaintiffs had been guilty of suppression of material facts in as much as it was never disclosed that at the time of registration of the trade-mark SWASTIK PERFECT, there was a disclaimer by them in respect of word PERFECT. They contended that the word PERFECT pertained to quality of the article and that the same could not be registered as trade-mark at all. They also stated that the word PERFECT is being used by several manufacturers of stoves like SMI PERFECT, KHAS PERFECT, BUTTERFLY PERFECT, VIJAY PERFECT, TRISHUL PERFECT and so no. Their case is that they are not using the word SWASTIK on any of their stoves and that they are manufacturing and selling the stoves under the trade-mark TRISHUL PERFECT and VIJAY PERFECT. They admitted that they were stocking and selling the stoves manufactured by the plaintiffs upto the year 1981 and that they give up the said business in the said year.

8. They dined that they are having the same colour scheme, get-up and design of the cartons. According to them, their cartons are of violet color having different colour scheme, get-up and design and were being manufactured by M/s. Vijay International Products, Malka Ganj, Delhi, who had got copyright for the said cartons registered under copyright No. A-40188/83. They also deny that the stoves which they manufacturing and selling had the same design as the ones manufactured by the plaintiffs.

9. I heard the counsel for the parties at length. It is clear from the above that the rights claimed by the plaintiffs are on the basis of the trade mark PERFECT and SWASTIK PERFECT design of the stove and copyrights of the cartons which contain the stoves. All these three aspects are being dealt with separately.

10. First of all I take up with respect to the alleged right of use of the trade mark. Section 9(1)(d) of the Trade and Merchandise Mark Act, 1958, inter alia, lays down that trade-mark shall not be registered if it has direct reference to the character and quality of the goods. In the present case, there is no manner of doubt that the word PERFECT describes the quality of the goods. Thus word is an adjective or a laudatory epithet. Under these circumstances, trade-mark in respect of the word PERFECT cannot be registered. Actually also, there was no registration with respect to the word PERFECT. Section 17 of the said Act provides for disclaimer with respect to particular word at the time of registration of trade-mark. Disclaimer means that registration does not confer any right or exclusive use a particular word in the trade mark. In the present case, it is admitted a case of the plaintiffs (although not stated in the plaint but admitted in para 3 of the replication) that the registration of trade-mark SWASTIK PERFECT was subject to the disclaimer of the word PERFECT. The net result, therefore, is that the plaintiffs do not have the exclusive right to use the word PERFECT on the basis of registration of the trade-mark. This was conceded by the counsel for the plaintiff at the time of arguments. The plaintiffs however, laid great emphasis on the fact that on account of long user, the plaintiff became the proprietor of even the word PERFECT in the trade-mark and therefore, is entitled to restrain the defendant from passing off his goods as that of the plaintiffs by way of using the word PERFECT in the trade-mark of the latter.

11. Therefore, it is to be seen if the plaintiffs are entitled to restrain the defendant from using the word PERFECT on the principal of Passing Off. The contention of the learned counsel for the defendant Shri Anoop Singh, Advocate is that whenever there is disclaimer with respect to a particular word, no right to exclusive use with respect to that word can be acquired and no action on the basis of principal of passing off can be brought. However, I am of the opinion that disclaimer does not, in any way, debar acquiring of a right to exclusive use of a word in the trade-mark, otherwise then by registration and defendant can be restrained from passing off, his goods as that of the plaintiff. In this respect the proviso to section 17 of the Trade and Merchandise Marks Act, 1958 (which has already been mentioned deals with subject of disclaimer) is very important and the said proviso reads as under :

Proved that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

12. The right against passing off does not arise out of registration of a trade mark and is independent. This is clear from section 27 of the Trade and Merchandise Marks Act which reads as under :

27. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.

13. In The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd., (1955) 2 SCR 252 [LQ/SC/1955/41] , in that case a trade-mark containing the word Shree was first registered and there-after the registered owner was required to disclaim the word Shree. Following observation were made which occur at page 265 and 266 :

In view of the finding the present case the respondent company could well be left, as it was in fact left, to protect its rights by other proceedings, e.g., passing off actions or prosecutions which, by reason of the proviso, were open to be taken by it, if the necessary facts to support such proceedings which were not before the Registrar could be satisfactorily established.

It is clear from the aforesaid observation that notwithstanding disclaimer or refusal to register a particular word in a trade-mark, passing off action can be brought and a trader can protect his rights by way of such an action.

In Century Traders V. Roshan Lal Duggar & Co. and others, AIR 1978 Delhi 250, similar view was taken. It was held that notwithstanding that there could not be any registration, an action for passing off could be taken and in such an action in order in order to succeed in getting an interim injunction, the plaintiff has to establish user of the mark prior in point of time then the impugned user by the defendants.

14. Shri Anoop Singh, learned counsel for the defendant, however relied upon a number of authorities, which are as follows :

A judgement of High Court of justice-Kings Bench Division in Greers Ld. V. Pearman & Corder Ld. XXXIV (1922) RPC 406.

A judgment of High Court of Justice-Chancery Division in the matter of an application : Joseph Crosfield & Sons Ld. To register a trade mark (Perfection) XXVI (1909) RPC 561.

A judgment of the Supreme Court of Judicature-Court of Appeal in Mc Cain International Limited v. Country Fair Foods Limited and another, (1981) 5 RPC 69.

All those authorities are in respect of the right with respect to the registration of particular laudatory and qualifying word forming part of trade-mark and none of them is in respect of an action on the basis of passing off. They are, therefore, not applicable to facts of this case.

15. Now it is to be seen if the plaintiffs are entitled to an injunction on the basis of passing off. It is not disputed that the plaintiff has been using the word PERFECT as trade-mark both as such and coupled with SWASTIK, In para 7 of the plaint, it is stated by the plaintiffs that the trademark PERFECT is being used by them since the year 1964. This was not denied in the written statement and it is merely stated that the plaintiffs are not the owners of the trade-mark PERFECT as alleged, At the time of arguments, this fact was not controverted. It is further common ground between the parties that the defendant was stockiest and selling agent of the stoves manufactured by the plaintiffs and that the same continued upto 1981. There is further no dispute that is was in the year 1981 that the defendant started manufacturing his own stoves under the trade-mark TRISHUL PERFECT and VIJAY PERFECT. It is, therefore, clear that the user of the trade-mark PERFET by the plaintiff is much earlier than the user of the same by the defendant. It is also obvious that the defendant being stockiest and seller of the products of plaintiff can easily pass off his own product as those of the plaintiffs because of the same-trade-mark PERFECT. Therefore, it is necessary to stop the said passing off and deceit.

16. The balance of convenience clearly favours the plaintiffs. The suit may take lot of time for being disposed of. In the meantime the defendant will go on selling stoves manufactured by him which is bound to finish the market to the plaintiffs. Therefore, it is necessary that the use of the word PERFECT as a trade-mark by the defendant be stopped forthwith so as avert irreparable injury happening to the plaintiffs.

17. To me prima facie, without prejudice to the decision of the case on merits, it appears that there is hardly any infringement of the copyright of the shape, colour scheme etc. of the cartons used for packing the stoves of the plaintiffs. In para 4 of the plaint, description of the cartons which are being used by the plaintiffs is given. That says that the cartons have a light yellow background. On the other hand, the cartons being used by the defendant have a bluish or violet background. They were seen by me at the time of argument and there was sufficient difference. Counsel for the plaintiffs, however, contended that cartons with blue background were also being used. But this has not been stated in the plaint and, therefore, that contention cannot be accepted.

18. Lastly I take up the matter of design of the stoves. All stoves are generally of the same design and prima facie, without prejudice to the decision of the case on merits, I do not find anything extraordinary in the stoves manufactured by the plaintiffs. In fact, in my opinion, as soon as the word PERFECT is not used by the defendant on his products, stoves manufactured by the plaintiffs will be clearly distinguishable and there is no necessity of issuing any injunction in respect of design.

19. As already mentioned, I.A. 3500/83 is for consolidating the application registered as C.O. 14/83 with the present suit. The application was filed by the defendants for cancellation of the design of the stoves of the plaintiffs. However, in may opinion the consolidation will cause unnecessary confusion inasmuch as that application is confined to only on aspect of the present case and that aspect relates to the validity of the registration of the design of the stoves. That application has nothing to do with the trade-mark and the copyrights of the cartons which have much more importance for the purpose of disposing of the suit. I, therefore, dismiss the application (I.A. 3500/83). However, that application will be listed on the same day and before same bench before whom the present suit is listed.

20. On account of I.A. 3149/83, I issue temporary injunction restraining the defendant from using the word PERFECT as a trade-mark or in the words denoting his trade-mark in respect of the stoves manufactured by the defendant and from passing off his stoves as that manufactured by the plaintiff. This injunction will continue till the disposal of the suit.

21. I. A. Nos. 3149 and 3500 of 1983 stand disposed of.