Mahinder Narain, J:

1. This case related to SUPERFLAME. What would be required to be determined in this case, whether any proprietary rights can, or have been acquired in the word/name TUPERFLAME.

2. A Trade Mark is defined in S. 2(v) of the Trade and Merchandise Marks Act, 1958 thus (v) trade mark means-

(i) in relation to Chap. X (other than S. 81), a registered trade mark or mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark ; and

(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chap. VIII;

A mark is also defined in the Act in S. 2 (j) which reads as under :-

(j) mark includes a device, brand, heading, lable, ticket, name, signature, word, letter of numeral or any combination thereof;

A name is defined in S. 2 (k) which reads as under :-

(k) name includes any abbreviation of a name.

3. It is not asserted by the plaintiff in this suit that SUPERFLAME is a registered trade mark. SUPERFLAME not being a registered trade mark, the instant suit cannot be an infringement action, and it is conceded to be a passing off action.

4. A distinction between an infringement action and a passing off action is statutory by virtue of the provisions of S. 27 of the Act. Section 27 (1) of the Act prohibits institution of any proceedings to prevent or to recover damages for infringement of an unregistered trade mark.

Sub-section (2) of S. 27 declares that nothing in the Act shall be deemed to affect the rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.

Infringement proceedings are controlled by the provisions of Ss. 29 and 30 of the Act. Section 29 deals with the nature of an infringement action and S. 30 state what does not constitute an infringement. (S.30)

Section 105 of the Act lays down that a suit for infringement of registered trade mark, or a passing off action cannot be instituted in any Court inferior to District Court having jurisdiction to try the suit.

5. This passing off action is somewhat unusually instituted and the plaintiff is stated to be GLOBE SUPER PARTS (sole proprietor Super Parts Pvt. Ltd.) 17/1, Mathura Road, Faridabad (Haryana). This peculiar intituling of the plaintiff has also led to considerable arguments.

The plaintiff has sued two persons as defendant, the first defendant is Blue Super Flame Industries, 5D/8E Railway Road, Faridabad (Haryana) ; and the second defendant is Ganga Ram Verma, 5J/18, NIT Faridabad (Haryana).

6. The plaint, in the suit, recites in para 1, inter alia, that Rahul H. Rai, who is a Director of Super Parts Pvt. Ltd. is duly authorised and competent to sign and verify the plaint and institute the suit. It is stated in the plaint that the plaintiff has been manufacturing gas appliances since the year 1968. These gas appliances are set out in Annexure A and a number of them are categorised as gas stoves, while some are stated to be Grill and yet another is stated to be a Cooking range. It is said that the goods manufactured by the plaintiff are manufactured and marketed under the trade mark SUPERFLAME and as the word SUPERFLAME appears in all the products of the plaintiff, the same has acquired the status of house mark, which is stated to have been in continuous use since the year 1976 and on account of extensive advertising and publicity and sales promotional schemes and on account of the alleged high quality of the plaintiffs products has acquired a unique and enviable reputation amongst the purchasing public and the trade. It is also stated that SUPERFLAME has become distinctive and that is has a considerable reputation and goods will in relation to gas appliance and that SUPERFLAME connotes the products of the plaintiff exclusively. It is also stated that SUPERFLAME has acquired a secondary signification in the trade and amongst the parties with the public and that there is extensive advertisement of SUPERFLAME in various media such as radio, television, newspapers, magazines, public hoardings etc. It is also asserted in the plaint that the use of SUPERFLAME by any rival trader as a part of its name or in relation to its goods is likely to lead to confusion and deception and result in passing off such traders business and goods as the business and goods of the plaintiff.

7. It is asserted that Blue Superflame Industries, the defendant 1 and Ganga Qam defendant 2, who is alleged to be a partner of defendant 1/and/or a sole proprietor have recently started manufacturing and selling gas appliances under the trade mark and/or house mark SUPERFLAME and that they have also kept Blue Superflame Industries as their trading style of which the word SUPERFLAME is an essential key and conspicuous portion and has also placed SUPERFLAME at various places upon its goods and/are advertising such goods under their trade name/trade mark SUPERFLAME. It is asserted in the plaint that defendant 2 was earlier working as a Contractor for the plaintiff from the years 1971 to 1983 as a painting contractor and as a result thereof came to acquire knowledge of manufacturing gas appliances, and that h was aware of vast reputation and goodwill of the plaintiff companys products and the goodwill attached to the trade mark/house mark, SUPERFLAME and that the defendant 2 started the business of defendant 1 when the contract, that he had with defendant 1, was terminated. The plaintiff alleged that the reason why SUPERFLAME is used by the defendant as a part of its trade name and upon the defendants goods is to trade upon the good will and reputation of the plaintiff and its use is mala fide and fraudulent assure illegal profits for itself by encashing upon the reputation and goodwill of the plaintiff. It is also asserted that the action of the defendant is illegal and improper act of piracy seeking to make quick money from its plagiarism; and that inferior quality goods are sold by the defendants . It is also asserted that there is a confusion and deception and goods of the defendants are being passed off as those of the plaintiff. These assertions are concluded by the usual prayer for a decree for permanent injunction and rendition of accounts and delivering up all the infringing goods.

8. The suit is contested by the defendant. In the preliminary objections to the suit, it is stated that the suit filed by the plaintiff is not maintainable and is liable to be dismissed in limine as the same has not been filed by a competent and duly authorised person in the eyes of law. It is admitted that in the absence of the Resolution of the plaintiff authorising Shri Rahul Rai to institute the suit, he is not duly authorised under law and the plaint is liable to be returned and the suit is liable to be dismissed, that the suit is bad for mis-joinder of parties as defendant 1 is a sole proprietary concern of Sri Kant Verma and defendant No. 2 is neither a partner nor proprietor of defendant No. 1 firm ; it is stated that the trade mark of the defendant 1 is NOT A FLAME (Hot Flame ). It is also said that the word Trade Mark SUPERFLAME and HOT FLAME are absolutely different and that there cannot be any confusion and deception between the two words; that Flame is descriptive of gas appliances and is common to the trade of gas appliances and that the word SUPERFLAME is in common use for gas appliances, words being used on appliances being SUPERFLAME, HOT FLAME, FLAMELINE etc., and that SUPER and HOT are distinct from each other. It is asserted that the plaintiffs trade name Globe Super Parts, and the defendants trade name Blue Superflame Industries are absolutely different and distinctive and one cannot be confused with the other. It is also asserted that Superflame comprises of two commonly known English words and monopoly or exclusive rights cannot be claimed over it; that the word SUPER is laudatory and is inherently incapable of distinguishing, It is also asserted that the plaintiff did not have any right much less exclusive right to use the words SUPER and FLAME. The objections is also taken in the Preliminary objection to the valuation of the suit, which is stated to be not in accordance with the Suit Valuation Act and that inadequate Court fees has been paid. It is stated that the suit is based on a false statement of a connection between Ganga Ram Verma and defendant 1; that the suit has been filed because of trade rivalry and that the suit suffers from delay laches and acquiescence. It is also contended that the suit has not been instituted, in a Court of the lowest grade in accordance with S. 15 of the Civil P.C.

9.It is denied by the defendants that the plaintiff is a sole proprietary concern of which Super Parts Pvt. Ltd. is the sole proprietor. It is also denied that Rahul Rai is competent to sign, verify or file the suit. The written statement also denies that the said trade mark SUPERFLAME has acquired any distinctiveness much less great distinctiveness.

10. It is asserted that the trade mark SUPERFLAME consists of two common English words SUPER and FLAME. The word SUPER is a commonly used laudatory term which is absolutely inherently incapable of acquiring any distinctiveness and that the word FLAME is a descriptive term and has a close and direct reference to the character and quality of the goods. It is also denied that the word SUPERFLAME has acquired any secondary significance as alleged in the plaint. It is asserted that the use of the word SUPERFLAME by a trader as a part of its name or in relation to its goods is likely to lead to confusion or deception or passing off, as alleged in the plaint. It is asserted that the defendant No. 1 has been manufacturing and marketing gas appliances since 1.4.1983 continuously and that they are known by and are marketed under the trade mark HOT FLAME; that HOT FLAME is absolutely different and distinct from the alleged trade mark SUPERFLAME; that Hot Flame was depicted by the defendants honestly and bona fidely without reference to the alleged trade mark SUPERFLAME of the plaintiff. It is further asserted that the defendant depicted the trade name BLUE SUPERFLAME INDUSTRIES honestly and bona fidely while taking on the descriptive and common word. It is also asserted that the words BLUE & FLAME are descriptive and the word SUPER is laudatory and hence the same were chosen to from the trade name of the defendants; that the word SUPERFLAME is not the key portion or conspicuous portion of the trade name of the defendant. It is also asserted that the key portion is the word BLUE. It is asserted by the defendant that the trade mark HOT FLAME is predonininently and boldly depicted on the goods and in all advertisement and publicity materials. It is denied that any activity of defendant 1 is illegal or is likely to cause any injury to the plaintiffs business or reputation. It is asserted that the defendants goods which are marketed under the trade mark HOT FLAME enjoy a good demand and are of superior and standard quality; that not a single incident of confusion has been recorded. It is denied that the use of SUPERFLAME, as a part of trade name, is likely to lead to passing of defendants goods as those of the plaintiff. It is denied that the goods of defendants have been advertised under the trade mark BLUE SUPERFLAME INDUSTRIES. The suit is described by the defendants as false, frivolous, vexatious and misconceived.

11. In the replication, the pleas taken in the written statement are traversed and it is specifically asserted that the trade mark SUPERFLAME has been incorporated as an integral and key part of the firm name of the defendant. It is asserted that the plaintiff is not seeking a monopoly in the use of the word FLAME that there could be no objections to defendants use of the word HOT FLAME as a part of its firm name such as Blue Hot Flame Industries. But the defendants use of SUPERFLAME in the firm name shows the fraudulent and mala fide state of mind. It is further stated that SUPERFLAME is a coined fancy, expression.

12. On the pleadings of the parties, the following issues were framed on 14th Jan. 1984.

1. Whether Shri Rahul H. Rai is competent to institute the suit, sign and verify the plaint on behalf of Super Parts Pvt. Ltd. plaintiff

2. Whether the suit is bad for misjoinder of parties

3. Whether the plaintiff is the owner of the trade mark/house mark Superflame in respect of gas appliances

4. Whether the defendants use of the trade style Blue Superflame Industries is likely to pass off their goods and/or business as the goods and/or business of the plaintiff

5. Whether the suit of the plaintiff is false, vexatious and frivolous and whether the defendants are entitled to special costs. If so the what extent

6. Relief

13. At the outset to eliminate confusion which is likely to occur the distinction between cooker burner and a stove must be made clear.

A stove from the inception, has been considered to be heated room or heated chamber. Cooking apparatuses, or cookers which were a development of the stove that were devised to heat up rooms or chambers, essentially had a chamber, in which fire was lit with boiling holes from which the heat was transmitted on to cooking utensils which were put over boiling holes of stoves. (Vide Encyclopaedia Americana)

As distinct from stove is a burner. Burner was normally used a connection with an implement, used to burn combustible gas, and usually is an implement with a body, incorporating for controlling the flow of combustible gas and an opening or a series of openings, through which the combustible gas is passed and is ignited so that a continuous flame burns at the opening.

The gas burner appliance/device which has been shown in Court by the parties, cannot be termed as a stove as there is no heating chambers which are necessary part of a stove.

A cooking range comprises of a numbers of burners, 3 or 4, one burner is used to heat up a chamer called the OVEN, and another burner may be provided for a grill.

I do not think it will be right to equate a stove with a gas burning cooker or cooking range, as it is quite distinct from the design and structure of a stove ; and one cannot be equated with the others.

RE : ISSUE NO. 1

Whether Shri Rahul H. Rai is competent to institute the suit, sign and verify the plaint on behalf of Super Parts Pvt. Ltd., plaintiff

14. Much argument has been addressed on this issue and the arguments have been divided into two parts by the defendant.

The defendant relies upon AIR 1971 SC 198 [LQ/SC/1970/73] at Page (201) Saheb Ram v. Financial Commr., and says that a legal plea can be raised at any time and that no formal issue regarding thereto need to be framed. This authority is cited in support of a contention which has been raised that the suit is not maintainable.

15. The reason why the above contention has been made is because the plaintiff was described thus; Globe Super Parts (Sole proprietor Super Parts Pvt. Ltd., 17/1 Mathura Road, Faridabad (Haryana) because of the Fact that the name super Parts Pvt. Ltd. has given within brackets, it is urged by Mr. Aggarwal that the real plaintiff is not Super Parts Pvt. Ltd., but Globe Super Parts.

16. Mr. Aggarwal urges the above contention because evidence has been recorded in this case to the effect, that Globe Super Parts was the partnership concern. After a while the firm Globe Super Parts was reconstituted and at the time of reconstitution Super Parts Pvt. Ltd., a company incorporated under the Companies Act, was made one of its partners ; that thereafter the partnership Globe Super Parts was dissolved and all its business and assets was taken over by Super Parts Pvt. Ltd. - one of the partners of Globe Super Parts. This is stated by P. W. 4 a chartered accountant, who has worked as a Chartered Accountant, not only for Globe Super Parts but also for Super Parts Pvt. Ltd. It is also asserted by P.W. 1 Rahul H. Rai that Globe Super Parts is a name in which Super Parts Pvt. Ltd. is carrying on business. Mr. Aggarwal relies upon AIR 1969 Cal 496 Modi Vanaspati Mfg. Co. v. Katihar Jute Mills (Pvt.) Ltd., for the proposition that a Corporation must sue in its own name and not in business name. An examination of Calcutta judgment however shows that the Calcutta High Court was dealing with 0.30. R-10 which specifically requires defendants to be sued in their name the said judgment is not relatable to the plaintiff. In my view, this judgment, therefore, would not be assistance to Mr. Aggarwal. Another judgment relied upon in this connection by Mr. Aggarwal is Okara Municipality Case AIR 1935 Lahore 345. This judgment has no application to the case before me, for the reason that the said judgment related to ratification of acts of an employee of a Municipal Corporation. It was held in that case that an action which was ultra virus the Punjab Municipal Act, could not be ratified. That judgment, thus has nothing to do with the name in which the plaintiff has to sue.

17. I am of the view that the plaintiff in the case is Super Parts Pvt. Ltd., the name which is to be found in the parenthesis/ Brackets, or parenthesis has a meaningful role to play in every day language and according to written style. Brackets are to be utilised whenever there is to be an indication of the equality between what is stated within the Brackets and what appears just before the Brackets begin. For the purposes of the case, in view of the fact, that the words Super Parts (P) Ltd., appear with in Brackets, it has to be held that Globe Super Parts is equal to Super Parts Pvt. Ltd. These is yet another reason for coming to the conclusion that the plaintiff is Super Parts Pvt. Ltd. and that to be found in the fact that, for a number of years the business, which is being carried on today by Super Parts Pvt. Ltd. was in fact being carried on today by Globe Super Parts a Partnership concern which was in fact a predecessor of Super Parts Pvt. Ltd. continues to carry on the same activities as Globe Super Parts as Globe Super Parts had acquired a name and reputation over the years with people who used to trade with them. All the letter heads which are to be found on record of this case relating to Super Parts Pvt. Ltd. contain both the names. Globe Super Parts and Super Parts Pvt. Ltd. Super Parts Pvt. Ltd. have, therefore, continued to hold out and rely upon the connection between Super Parts Pvt. Ltd., and Globe Super Parts, which is historical qua them.

18. The meaning and effect of Brackets in the English language are found in Webster International Dictionary at page 265 which says that what is placed within the Brackets is put in the same class or in other words what is contained within the Brackets is equated to the word that proceeds the Brackets. In The Family Word Finder Brackets is stated to mean to group and in Shorter Oxford Dictionary it is stated to mean to mention together as equal.

19. I therefore, hold that merely because that the plait is instituted by having recourse to parenthesis (Brackets), it does not mean that the name of the plaintiff in the instant case is in doubt or that the plaintiff is non-existent. Super Parts Pvt. Ltd., exists on the plaint, and they are the plaintiff. For the foregoing reasons, I hold that Super Parts Pvt. Ltd., is the plaintiff.

20. As regards the authority to institute suit on behalf of the Super Parts Pvt. Ltd., the minute books of Super Parts Pvt. Ltd., has been produced and authorisation given in favour of Rahul H. Rai to institute the suit given by the Board of Directors has been proved as Ex. P. 1. The authority to institute suit having been conferred upon Rahul H. Rai, I hold that he had authority to institute the suit on behalf of Super Parts Pvt. Ltd. He being a Director, is a Principal Officer of the Company, and has also signed and verified the plaint as such. I, therefore hold that the plaint has been signed and verified by a person who is authorised to do so. Issue No. 1 is decided in favour of the plaintiff.

ISSUE NO. 2

Whether the suit is bad for misjoinder of parties

21. This issue has been framed on an objection being taken by the defendant. What is asserted by Mr. Aggarwal is that there is no connection between defendant 1 and defendant No. 2. It is asserted that defendant No. 1 is the sole proprietary concern of Sri Kant Verma. Sri Kant Verma has appeared as D.W. 1. He has stated that he is a sole proprietor of the concern. He has also stated that Ganga Ram Verma, defendant 2 is his father. In his deposition in Court Sri Kant Verma has stated that his father Ganga Ram Verma was contractor for the plaintiff. In fact, he worked as a contractor for 10 to 12 years. The contract which Ganga Ram Verma had with the plaintiff was for painting gas stoves. The name or the style under which this painting contract business was carried on was Ravi Enterprises which belonged to defendant 2, and they did chrome-plating and metal painting work for the plaintiff. He also admitted in his deposition that he had helped his father. D.W. 1 Sri Kant Verma admitted that it was after the contract of his father was terminated with the plaintiff, that he started manufacturing gas appliances. He also admitted that money may have been received by him from his father, and more materially he had no knowledge about the trade of manufacture of gas appliance when he started that business.

22. That there is a connection between defendant, 1 and defendant 2 is also established by the deposition of D.W. 2, a dealer of goods of defendant No. 1. He admitted that Ganga Ram Verma, visits him in connection with the work of defendant 1.

23. In view of the depositions of D.W. 1 Sri Kant Verma and D.W. 2 Mohd. Abdulla, I am satisfied that there is a connection between the work being done by defendant 1 and defendant No. 2. Defendant 2 has, as deposed to by Mohd. Abdulla D.W. 2 been actually adding the business of defendant 1. In the circumstances, keeping in view the depositions of the two witnesses D.W. 1 and D.W. 2, I am of the view that there in no misjoinder of parties in this case and the issue is decided accordingly.

ISSUE NO. 3

Whether the plaintiff is the owner of the trade mark/house mark Superflame in respect of gas appliances

24. At the outset it must be ascertained whether there is something recognised in law, as a house mark. Trade mark is a recognized concept in law. We have the Trade and Merchandise Marks Act, 1958 which gives statutory sanction to trade marks, whether they are registered under the Act, or whether they are unregistered trade marks.

25. In para 3 of the plaint it is asserted that the trade mark SUPERFLAME on account of the fact that it appears upon and is used in relation to all the products of the plaintiff, has acquired the status of a house mark. I put it to Mr. Anand who appears for the plaintiff, to let me know what is meant by the House mark which has been used in the plaint and also used in the issue under consideration. It was put to him by me that House mark may be name or a device which gets associated with a particular industrial house, the name or device may have its origin in the persons of an entrepreneur or may represent a business family. For example, we have well known industrial houses in India such as, Tatas, Birlas, Dalmias and Singhanias. Each of them, if they adopt any particular name as common designation for companies in the same group; companies which are controlled by them there may be House-name like Tata, Birla or Dalmia or Symbol like JK which may be said to represent house marks ; which are commonly associated with a group of companies/corporation, just like in other parts of the world. Unilever is a Mega Corporation, as are IBM, General Motors, Ford, Gulf & Western and other. The question put to him was whether a house mark is a concept recogdised in law relating to trade and merchandise marks. Mr. Anand frankly conceded that he had looked into the various texts books on trade marks, and that he could not find anything in those texts which give a legal meaning to House Mark. He did refer to (1930) 47 RPC 37: that was a proceeding for rectification of mark Radiation. The proceedings were before the comptroller General, and not a Court. In that case, what had happened, was that the Company which had applied for registration of the mark Radiation in not less than five, different classes, held practically all the shares in group of associated companies by whom gas appliances like gas fires, gas cookers etc. were manufactured and marketed. The applicant company did not themselves manufacture or sell the article but the aforesaid companion did. The applicant company controlled the policy of the associated companies regarding the manufacture and sale of the articles by the registered companies but what the Comptroller General found was that the word Radiation was used as a trade mark. He said that the mark had become in effect the House Mark of the whole group of companies formed by the applicant company and also associated companies. There is no evidence in the instant case, of there being a group of companies controlled by any particular company which would lead to a finding that the word SUPERFLAME had become a house mark. In any case, the order in (1930) 47 RPC 37 is not an order of Court and it is not possible for me to say on the basis of this one single order that some legal recognition needs to be given to the concept of the House mark.

26. Mr. Anand also refers to an order of a Division Bench of this Court in AIR 1985 Delhi 210 : B.K. Engineering Co. v. U.B.H.I. Enterprises Ludhiana. This was an order passed on an interlocutory application without recording any evidence. A perusal of the judgment shows that the learned Judges did not refer to (1930) 47 RPC 37 or attempt to define what a House Mark meant if it did cannote something in law. They appear to have assumed that the contention of Mr. N.K. Anand (who appeared for the plaintiff in that case also) that BK was a House Mark without scrutinising the submission. As stated above, before me, Mr. N.K. Anand has conceded that apart from the administrative order in (1930) 47 RPC 37, which did not scrutinise the concept of House mark either, there is nothing in the Text books, or statutes which relates to House Mark.

27. As such, in these facts and circumstances there is no authority of any persuasive nature or binding force which gives legal meaning to the word House Mark; the word House Mark in the issue No. 3 has to be dropped from consideration.

28. There is no evidence in this case as to how or when anything can acquire the status of the House Mark or can be considered to be a House Mark, the issue will, therefore, be confined to whether the plaintiff is the owner of the trade mark SUPERFLAME in respect to gas appliances.

29. Keeping in view the definitions given in the Trade and Merchandise Marks Act, 1958, trade marks, whether registered or unregistered are those which indicate a connection in the course of trade between the goods and some person, and such marks can include a device brand, heading, label, ticket name signature, word, letter, or numerical or any combination thereof ; and the name includes any abbreviation of a name.

30 In the present case, SUPERFLAME appears to have been used either as a name (applied to gas appliances, or as a word, and the witnesses who have deposed in Court also have used SUPERFLAME either as a name or as a word.

31. It is urged by the plaintiff that they are the first, persons in the trade to use SUPERFLAME in connection with the gas appliances which they have been manufacturing. The gas appliances having been, in the first instance, manufactured by the partnership concern Globe Super Parts, and after dissolution of the partnership, Super Parts Pvt. Ltd., by one of its partners, who became the successor to the business of Globe Super Parts, namely Super Parts Pvt. Ltd.

32. In view of the provisions of S. 2(v). 2(j) and 2(k) of the Trade and Merchandise Marks Act, 1958 a name or a word is capable of exclusive appropriation as a trade mark. Even at common law a mark or a name can be exclusive appropriated by the person who was, as between parties to the suit, the prior user of it. There are however, certain pre-conditions attached to exclusive appropriation of words or names. These pre-conditions are to be found in the law laid down by various judgments. The pre-conditions are because some names are common, and most words are part of the language. The words which are of common usage; and the words, which are uncommon coined or Fancy words, are treated differently, as coined words or fancy words are not part of language.

33. One of the earliest cases to decide that there can be exclusive appropriation of a name/word is a case decided by the House of Lords on 13th December, 1877 reported as (1877) 3 AC 376; Singer Machine Manufacturers v. William Newton Wilson. This case set at rest a controversy which existed amongst the lawyers that a name cannot be subject-matter of exclusive appropriation by any person. The facts of the case were that in 1850 Mr. I.M. Singer of new Jersey, USA began the business which was thereafter carried on by the Singer machines manufactures, of manufacture sewing machines of various kinds, of different constructions. From time to time, he had taken partners into the concern and finally was incorporated as a Company by the Legislatures of New York and New Jersey, by Acts of Incorporation. The machine manufactured by Mr. I. M. Singer were subject-matter of various patents which had expired in America. In any case, at the time of commencement of the action in England, the appellants did not have any patents applicable in England, but the name of Singer was applied to the machines which are sold by the appellants in England, and in the suit the appellants claimed that the word/name Singer was exclusively appropriated to the machines which they sold.

34. The defendant had carried on business as manufacturer and vendor of Sewing machines in London and Dublin and described his own machines as Singer Sewing machines. Thanks his name/surname was not singer.

35. The Chancery Court dismissed the action filed by Singer Machine Manufacturers, and the appeal filed by the appellants in the Court of Appeals was also dismissed without calling upon the defendant and without reading the affidavits which have been filed by the defendants. The Lord Chancellor referring to the assertions made by the appellants that the appellants are a manufacturing company trading in America and Great Britain having the name of and trading in succession to, a person of the name of Singer who established, both in this country and in the United States a large business in the manufacture and sale of sewing machines; held that, from the time the business was first started these sewing machines were advertised and sold as Singer and Singers machine; that they obtained for them a very wide reputation that great varieties of sewing machine, with many modification in their mechanical details and many improvements of different kinds, have been made by singer and by the Singer Company, but that no one of them has been made according to any patent nor is there any patent completely descriptive of any of them, although singer and the Company have held patents for minor details and accessories; that the mechanical construction of the machines has been from time to time varied in may ways, so that the designation Singer does not import and is not generally understood to import, any specific principle of construction or mechanical arrangement of working parts, or any single type of machines, but simply that the machines were designated as of the appellants manufacture constructed in one of the several forms which they from time to time adopt ; that they have spent 60,000 and upward in advertising their machines as Singer or Singers machines, and they have become known as such throughout the world and the name has become, and is a trade mark of the plaintiffs ; observed that if these allegations are true, if the term Singer or Singers machine denotes to the mind of the public or of those likely to purchase such articles, not a particular type or shape and arrangement of parts of the machine, but a machine the manufacture of particular person of firm ; and if the defendant, whose name is not Singer, represents his machines as being Singer or Singers machines, there is at least a case which calls upon the defendant to show some reasons which would justify him in thus making a use of a name which is not his own, but which is the name, and is known to indicate the manufacture, of the plaintiffs. The Lord Chancellor, in view of the fact of the case, and from what had transpired in the Courts below said that he has no option but to direct remitting of the case to the Chancery Division for receiving evidence and thereafter disposed the whole of the case upon evidence. In other words the Lord Chancellor ordered the re-trial of the matter. The law Lords agreed with the action proposed and the matter was remitted. Lord Gordon observed at page 401, that the appellants have stated a prima facie case for the injunction which they have sought.

36. This case therefore, established that there can be property in a name. The nature of the property being such that others could be restrained from using it connection with their goods. It is noteworthy that by the time the matter came up before the court I. M. Singer was not the person who was manufacturing the goods. It was incorporated company which was manufacturing the Singer Sewing Machines. Therefore, Singer was not a name, but a word which was being applied to the machines manufactured by the successors of the business of Mr. I.M. Singer by then had become an important word, which by extensive advertisement, publicity and world wide sales had become exclusively associated with the sewing machines which have been manufactured by the appellants. In the Singer case the defence of the defendant Wilson, that the Singer machine is descriptive of a particular type of machine, was rejected by the House of Lords.

37. This was the position with respect to a name, which had, in due course become a word. The association of Singer with Sewing machines is common knowledge even in India since a long-time.

38. The word Singer is also to be found in dictionaries of English language and the word means a person who sings a song. The English language meaning of the word has no reference to sewing machine. For Sewing machines, it is the surname of the person who commenced business of manufacturing and trading in sewing machines, namely I.M. Singer.

39. Besides names of persons, words which are of common use in a language can be exclusively appropriated by a certain trader or manufacture as is evident from the case of Raddaway v. Banham, (1896) 13 RPC 218. The words of common language which were held to be exclusively appropriated by Reddaway, in that case were Camel Hair. What was asserted in the Reddaways case was that beltings were manufactured and sold by various persons ; that the beltings used to be sold under the name of various animals like Yak, Llama, Buffalo, Crocodile etc. What plaintiff Reddaway asserted was that Banham was their one time employee and that he had started selling the beltings under the Claim Hair; Reddaway also asserted that they were entitled to stop others, like defendants Banham, from using the word Camel Hair with respect to the beltings manufactured by them.

40. This case was decided by the House of Lords on or about 26th March, 1896. The case was started on 3rd May 1893 when Frank Reddaway and F. Reddaway & Co. Ltd., commenced the suit in the Manchester District Registry or the Queens Bench Division against George Banham and George Banham & Co. Ltd., for an injunction to restrain the defendants from infringing certain trade marks and from continuing to use the word Camel in such a manner as to pass off their goods as and for the plaintiffs goods. It was asserted that the plaintiffs had, during the course of trade, sold very large quantities of beltings as `camel beltings and that word `Camel appeared as upon, or was attached to their beltings as Camel beltings. In England and abroad the word camel, or the figure of a camel, was universally understood in all the places where their beltings was sold, to indicate goods to be of the plaintiffs manufacture. It was also asserted that beltings was sold as camel and camel hair beltings also. The action was commenced because the defendants company and the defendant Banham had recently sold in England and advertised for sale in conjunction with the word Camel large quantities of beltings, which belting was not made by the plaintiffs and thus, the persons who desire for purchasing beltings of the plaintiff would be deceived by the defendants use of the word Camel, into the belief that they were purchasing the beltings of the plaintiffs manufacture.

41. The plaintiffs got the injunction from Collins, J. but the defendants appeal was allowed by the Court of Appeal holding that Camel Hair Belting was merely a truthful description of the nature of the goods and nobody can be prevented from using that name, although it may lead to goods being purchased under that name, as a goods of a particular maker. The Court of Appeal held that Camel Hair Belting was a true description of the goods, and that it was the name by which a person wanting to buy goods would ask for them. Again a judgment was given for the defendants. The plaintiffs then appealed to the House of Lords.

42. The House of Lords examined the case, and held that even descriptive words like Camel Hair Belting were capable of exclusively appropriation, that the words Camel Hair Belting have acquired a secondary signification with respect to the beltings in the sense that the words Camel Hair with respect to the trade in beltings had lost their primary meaning, to indicate belting made of camel hair, but has acquired a secondary significance or meaning in the trade, and came to cannote the products of the plaintiffs. The House of Lords found that there was ample evidence to justify the finding that amongst those who were the purchasers of such goods, the words Camel Hair were not applied to beltings made of that material in general ; that in short, it did not means in the market belting made of a particular material, but belting made by a particular manufacturer. The House of Lords thus came to the conclusion that common words of a language can be exclusively appropriated to a particular manufacturer as they had acquired a special meaning as denoting the goods of a particular manufacturer/trader.

43. Lord Herschell also dealt with coined words, that did not have any meaning in the language; and at page 228 line 19, said that words never in use before, and meaningless except as indicating by whom the goods in connection with which it is used were made, there could be no conceivable legitimate use of it by another person. Thus the coined created, Fancy, or new words which were not in use in any language before, and which did not have any meaning in the ordinary language, as evidenced by their absence in authoritative and standard language dictionaries, were the exclusive property of the person who first coined, or created them and adopted them for use, and used it in connection with any article the only reason why a hitherto meaningless word would be used by another in connection with his activities would be to deceive the public, that the latters article, thing or goods or the articles, thing, or goods of the former. He also observed that he was unable to see why a man should be allowed in this way, more than in any other, to deceive purchasers into the belief that they are getting what they are not, and thus to filed the business of a rival.

44. Not only words can be used in connection with articles of manufacture and denote a connection in course of trade for the purposes of Trade and Merchandise Marks Act, and be exclusively appropriated by the person who has first used the words; words can also be exclusively appropriated under the law of copyright which exists for protecting intellectual property, in earlier times by common law, and later on by the Copyright statute. The common law rights which were not made a part of the statutory copyright law are being still protected by Common Law Courts.

45. Words whether descriptive or coined/invented/fancy have all along been capable of being exclusively appropriated, as stated above, not only as marks or trade marks but also as names/title of books, magazines, plays Motion Picture etc. To determine whether the words, whether descriptive, coined, fancy, or invented, have been exclusively appropriated, the legal tests are the same in Trade Mark Law, as in the Copyright Law. Thus, even in the case of Copyright Law, what is required to be shown is whether the word is a word of ordinary language, or whether the word is a fancy, invented, or coined word. In the case of the former, as in trade mark law, what is required to be further established is whether the common word or phrase has acquired secondary significance or not. In case, it has, then the same is protected as the name/title of book, newspaper, magazines, play motion pictures etc. as it has acquired a name and reputation in the market place where such vendible commodities are bought and sold. In case of fancy invented, coined word the case is much easier, as a reference to the authoritative dictionaries of the language would clearly establish whether the word in question, exists in the language dictionaries, if not, it is a coined, fancy, invented word which is not a part of the language. Such word must be found to be owned by the person who has so devised the word, by applying the skill and labour test, laid down in inter alia in AIR 1924 PC 75 ; (1960) 1 Mad LJ 53 : (AIR 1961 Mad 111 [LQ/MadHC/1959/22] ), which test is applicable in all copyright cases. The test being based on the principle that what is protected is what has originated from the author (1964) 1 All ER 465 Ladbroke Football, relying upon (1894 AC 335). What originates from the author as a result of exercise of his skill and labour is his expression which is protected by the law of copyright. The skill and labour does not depend upon the time taken by the author as greater is the skill of the author less will be the time taken what would be relevant would be whether what was originated from the author is new, or distinctive even a successful adaptation from another language.

46. As regards cases in which names of books haven protected a reference can be made to Weldon v. Dicks, (1878) 10 Ch. D. 247, at 260 ; W.H. Allen & Co. v. Brown Watson Ltd., 1965 RPC 191 at 194 ; Mathieson v. Sir Issac Pitman & Sons, (1930) 47 RPC 541. Warner Brothers Pictures Corpn. v. Majestic Pictures Corpn. 70 Federal Reports 2nd ) 310.

47. In the Mathieson case (1930) 47 RPC 541, it was held at page 550 that secondary meaning in connection with names/titles of the books must cannot that in the market where such books are purchased, and among the member of the public who were buyers of these books, the mere title (How to appeal Against Your Rites) indicated the work of the author of it (Mr.Andrew Douglas Lawrie) and perhaps further indicated that is was published by a particular publisher. On the principles given in (1930) 47 RPC 547 Books/Titles like Godan- is associated with Prem Chand, Gitanjali with Tagore, Das Kapital with Marx, Mien Kampt with Hitler, and so on. The observation regarding secondary signification in Reddaway v. Banham (1896 (13) RPC 218) (supra) and the Mathieson case are in essence the law in relation to exclusive appropriation of a name or a word, when it is words of common use are adopted by any person; and, the observation of Lord Herschell in the Reddaways case mentioned above is in essence the law with regard to exclusive appropriation of coined, invented, fancy, adopted new words, which did not have meaning in the common law language. For the reasons given by Lord Herschall, book titles like Sayonara- Japanese word adopted by James Michner as the name of his very successful novel ; Tai-Pan a Chinese word adopted as a name of his best seller novel by James Clavell; Shogun a Japanese word adopted by James Clavell as the name of his best selling novel, become exclusively appropriated by the said authors. These persons had adopted the said words as names/titles of their novels, with the object of having a distinctive name/title for their novels. By adaptation, by exercise of their skill and labour (choosing foreign language word) by the success of their novels, the adopted name got identified with them and gained currency in another language. How the mere mention of these foreign language words in the book market/shops, indicate the author of the novel. They stood exclusively appropriated to the authors of these novels.

48. Thus, a common language word, that has a meaning, can be exclusively appropriated only upon it being established that the word has acquired secondary significance i.e. to say a different meaning other than the primary meaning in the language; and in case of a word which is a coined, fancy, new or meaningless as put by Lord Herschell the claim to exclusive appropriation is sustainable without the need to prove the existence of any secondary significance. It is only to be seem whether the claimant of it, applied his skill and expended labour upon its creation/adaptation. Very little amount of skill, and very little amount of labour is sufficient for this purpose.

49. There is yet another case to be noted: This is the Shredded Wheat case decided by the Privy Council, reported as 57 RPC 137. This case is an unusual case, Canadian Shredded Wheat Co. Ltd. v. Kellogg Co. of Canada LD and Solomon Rassin, carrying on business under the name Bassins Cut-Rate Stores.

50. The observations at page 149 establish that there was litigation between National Biscuit Company of America and Kellogg Company not only in England and Canada but also in the United States of America. In the USA the National Biscuit Company had sought to restrain the Kellogg Company from using the word Shredded Wheat in connection with their goods. It is noted in 55 RPC 125 at 149 that initially the Company failed before the District Court of Delaware, and on appeal US Circuit Court of Appeals for the third circuit, the decree was affirmed. Subsequently on rearguments before the same Judges of the Circuit Court of Appeal, that decision was reversed and decree was entered for National Biscuit Co., enjoining the defendant Kellogg from the use of the name Shredded Wheat as its trade mark, and from advertising or offering for sale its product in the form and shape of the plaintiffs biscuit in violation of its trade mark.

51. The Privy Council were aware of the reheard case judgment. Instead relying upon the latter judgment of the Circuit Court of Appeals the privy Council preferred the overruled earlier judgment of the Circuit Court of Appeals.

52. The appeal had come before the Privy Council as another original action reported in 55 RPC 125 has been instituted in Canada.

53. From the report : 55 RPC 125, it is seen that an inventor had devised a method for making filaments out of boiled and mashed wheat. The filaments prepared out of mashed wheat, were baked and formed into the shape of pillow. The shape was a naturally occurring phenomenon as a result of cutting of the mashed wheat filament. This article, mashed wheat filament biscuit, appears to have been patented alongwith the process by which the same was made. By the time the case was instituted in Canada the patents life had expired, but ever since the manufacture of the biscuits by the patented process was commenced, the biscuit was called Shredded Wheat Biscuit. In my view this name was given to a hiterto unknown product a new and patented article (patents are given for inventions only for that which is new, that which did not exist before 1929 RPC 23 at Page 55 Popes case).

54. Wheat grain, to my view, is principle of being Shredded. An examination of the dictionary meaning of the word Shred would show that what is Shredable, is that which has long fibres. Thus, a banana leaf can be Shredded, cloth can be Shredded, This is because all these things have got long fibres and can be Shredded. As in the case of banana leaf, and in case of cloth, and of paper, because of the manner in which the cloth is woven, the nature of paper, they are capable of being torn into shreds. Thus, no wheat grain, or its product can be naturally termed as Shredded wheat.

55. What was done by the new patented process, and the patented machines invented for preparing wheat filaments from boiled mashed wheat, was to mash the cooked and softened wheat into a filament shape ; and the filaments were baked, and the resultant product called Shredded Wheat. Shredded Wheat was thus an invented description for a product which did not exist before. In fact Lord Russel of Killowen at 138 observes the new product was called and was known by the name of Shredded Wheat. Although the process covered by patent No. 52,428 may be strictly a mashing rather than a shredding process. Having seen the Shredded Wheat myself, I would say the apt description would be wheat filaments biscuit. Not shredded wheat biscuit. A shredded thing is not uniform or smooth, a filament is. A wire is a filament, not a shred.

56. To me it appears that there is conflict of judicial opinion on the matter of product of this patented process, between the Courts in America and the Courts in England. Lord Russel of Killowen himself recognised that the process was one of mashing rather than shredding. I am, therefore, unable to accept that what is mashed, in fact can be regarded as shredded in law, and I would prefer to say that filamented wheat biscuit would not be shredded wheat biscuit that it was open to the inventor to give a coined name to the product being an entire by new product could be name anything by its inventor, as was done. He called in Shredded wheat.

57. There is another reason for my coming to conclusion that the shredded wheat was not an apt description for the patented biscuit as held by Lord Russel of Killowen. In my view, the new products could easily have been called Wheatabix, as it was a biscuit made from wheat. In fact, now there is an extensively advertised product in England, a biscuit made out of wheat, which is sold by the name of Wheatabix, and it is used for exactly the same purpose as the Shredded Wheat, biscuit is used ; that is to say as breakfast food. If the wheat in fact was mashed to make the products. I do not see how it can, in law, be said to be shredded, merely because it has been made up of wheat filaments. If the name of the biscuit Shredded Wheat was not descriptive of it, clearly injunctions ought to have been issued, as was done by the U.S. Circuit Courts of Appeals after rehearing of the matter. In any case, no one other than the patents or his assignees had used the word Shredded Wheat for the invented filamented wheat biscuits, and even if it was descriptive following the case of Reddaway v. Banham (1896) 13 RPC 218(HL) the Privy Council should have held that apt by descriptive words have been exclusively appropriated. For this reason I would prefer the view of reviewed judgment of third U. S. Circuit Court of Appeal, rather than that of the Privy Council in 55 RPC 125. In doing so, I would be following the principles laid down in the case of Reddaway v. Banham (1896) 13 RPC 218, which appear to have been distinguished by the Privy Council without distinction in the Shredded Wheat case. Privy Council had accepted at page 138 line 29, that the process was strictly a mashing process. Mashing of boiled wheat cannot be equated to shredding it boiled wheat is so soft, it cannot be shredded. Shredded Wheat therefore cannot be an apt description of the product made by mashing Shredded Wheat not being a descriptive word, has to be really dealt with as an invented word. An invented word is capable of exclusive appropriation, without acquisition of secondary significance. In any case, even if it was needed to be proved that the word Shredded Wheat had acquired secondary significance, it was amply proved that it was only the licencees of the inventor- the plaintiff co. who has exclusively sold shredded wheat biscuits during 1905 to 1914, in Canada and thus the word Shredded Wheat had acquired secondary significance as the foot of the plaintiff in Canada.

58. For the aforesaid reasons, I prefer to follow the case of Reddaway v. Banham (1896) 13 RPC 218 (HL) rather than the Shredded Wheat Case (57 RPC 137).

59. In the light of what is in stated above, we have to see what is superflame.

Is superflame a word which is common place used in the English language, or is it a meaningless word

In order to come to a conclusion as to what is superflame one has to first know about flame.

A flame is that which comes into existence when any combustible material gets ignited due to self combustion, or is ignited by spark or a small flame. The type flame which comes into existence as a physical phenomenon upon any combustible matter being ignited, depends upon the combustible material that is ignited. Thus, the flames of burning wood, coal, coke, liquid paraffin (Kerosene oil), combustible gases are different in their characteristic colouration. As is apparent to all those who have noted it, burning wood, burning coal, burning kerosene stoves, and burning gas (in a physical or chemical laboratory where Bunsen burners are of common use) the flames are of different colours. Thus, the reddish glow flame of coke, is different from the flames of charcoal which burn with slightly yellow colour, and the flames of the burning wood are usually yellow. As distinguished from any of the above is the flame of combustible material using Bunsen burner, which emits a blue flame.

60. The flames of various combustible materials have different temperatures, it is also common knowledge that the flames which have the highest temperature are the blue coloured flames. Anyone who has observed an oxy-acteylene flame which is used by welders, will appreciate this. The oxy-acetylene flame produced by the welders torch when mixture of oxygen gas and acetylene gas is ignited, first gives out a yellowish flame which after the flow of the gas is properly adjusted, has a blue flame, at its core. The blue flame is distinctly blue in color, and is surrounded by a raddish glow. It is the blue core of the flame which is the hottest part of the flame emitted by the welders torch, it is the blue core of the flame that is used for either melting the metal used for welding or for cutting metal.

61. In Encyclopedia Science and Invention Volume III at page 397 the functioning of Bunsen burner is explained. In fact, photographs are shown indicating the blue colored flame which is emitted by the Bunsen burner. It is stated there that in the Bunsen burner gas and air mix in the barrel of the burner, and are ignited at the top. The proportions of the mixture usually are 3 parts air to 1 part gas this will burn with a blue flame. If the volume of air is reduced by rotating the collar which part covers the air holes, the burner produces a luminous smoky flame. If the burner is operated with 3 to 1 gas mixture the flame will consist of two distinctive zones. The inner core of the flame or reducing zone, consists of partly burned gas. The outer core or oxidizing zone, the mixture of gases is completely burned by using the oxygen in the surrounding air. This is the hottest part of the flame. This type of burner can be made to operate on almost any type of inflammable gas, such as natural gas, coal gas or oil gas.

62. What is worthy of note is that the hottest flame is created when the gas to air in ratio is maintained as one part gas to three parts air. It is interesting to note as is stated at page 398, that burners which are used in gas cookers operate on the principles of Bunsen burner, or of its derivatives.

63. The illustration in the Encyclopedia of Science Invention also indicates that when gas is burned by itself, without being mixed with any air then the flame (which is termed as defusion flame) is yellow coloured, and when the gas is burned after being aerated, that is mixed with air, the flame is a blue flame.

64. In Encyclopedia Britannica, 1969 Edition, Vol. IX at page 415, it is mentioned that in a flame of coal gas and air of optimum composition, the temperature may be as high as 2,000o c.

65. The Encyclopedia Britannica 1969 also shows the design of burners used in cookers/cooking ranges. The explanation of the burner design, which is illustrated at page 415 in the said Volume of Encyclopedia Britannica, indicates that the burners illustrated is so designed that safety of the person using the burners is ensured. The illustration of the burner and the explanation of illustration shows that immediately beyond the jet from which the combustible gas is emitted, a venturi is a waisted hollow pipe. The function of the venturi is to accelerate the flow of gases. The gas released from the jet goes straight into the venturi, and its flow is acceleated automatically by the venturi. Because of this accelerated flow of gas, atmospheric air is sucked into the venturi from the opening provided therefore just before the venturi. The accelerated flow of air and the gas mixture following through the venturi ensure that no part of the inflamable gas is blown back through the opening provided for the intake of air. The burner incorporating venturi in its body, thus ensures that the combustible gas does not flow back out of the air opening provided in the burner body. Thus, ensuring that the combustible gas is not burnt in any place, other than the series of opening provided in the burner for burning gas air mixture. The design of the burner in the gas cooker, produced by the plaintiff, and the defendants in Court does not incorporate a venturi in their bodies. I apprehend that the result of not incorporating the venturi into the burner bodies of the plaintiffs, and of the defendants that these burners bodies are not capable of ensuring that the combustible gas does not blow back and escape from the air holes/opening near the controlling knobs. When the gas is blown back through the air holes provided near the gas controlling knobs the combustible gas flames near the control knobs of the burners. In other words the gas flame flare up where they are not expected to. This flamming is dangerous, when the gas thus flames up when a woman wearing a nylon saree of flammable synthetic material, is doing the cooking. It is perhaps for this reason that dangerous fire accidents involving the women, take place in the kitchen.

66. I think, it is necessary that organisations like Indian Standard Institutions should examine the burner designs used in the gas cookers, now sold in India, to satisfy themselves whether the burners are properly designed to ensure consumers safety. If, upon investigation, if is found that a burner body designs which do not incorporate Venturi are not safe an appropriate standard of the burner body design should be laid down, as a guide, I can suggest that the persons concerned at ISI, look into the burner body design which is to be found in Sanyo gas cooker. This is, of course, the cooker manufactured in Japan but with a slight effort may be a available to persons who are concerned with such an investigation. From what is stated in the Encyclopedia Britannica, it appears to me that the venturi provided in the gas burner bodies is a good safety measure, it needs to be incorporated in all gas burner designs so as to ensure safety of the consumers.

67. The colours of the flames of various combustible materials would be yellow, red or blue. The yellow coloured flame being of the lowest temperature, and the blue coloured flame having highest temperature.

68. Thus, existence of yellow flame red flame, or blue flame are matter of common knowledge. The characteristics and temperatures of different coloured flames can be found in any adequate illustrated scientific text or reference books.

69. Reference to the standard dictionaries of English language, like Chambers, Shorter Oxford, Webster International etc., would show that there is no word superflame therein. It is not found either in that part of the dictionary where the word SUPER occurs or in that the part of the dictionaries where the word FLAME is dealt with Prima facie, therefore, it would appear that the word SUPERFLAME is not a common place word of English language nor has it been given any meaning in that language. The dictionaries of English Language being silent on the meaning of Superflame, the conclusion is inescapable that it is a coined, or fancy word and one may go so far as to say that in the circumstances, a meaningless word, it is a word which is not in use. In any case, it is not a word which is so common place as to be found in the authoritative language dictionaries. The word is made meaningful only when applied to the products for which it was created.

From the above, it is quite clear that yellow flame, Red Flame and Blue Flame are a part of the general public knowledge and that they have been in, existence in the physical world and a yellow flame, red flame and blue flame may actually be descriptive of a naturally existing flame. This is not what can be said of Superflame. Superflame does not exist in nature. Superflame is not part of an ordinary language as is established by the fact that the word Superflame does not occur in the authoritative dictionaries of English language.

71. The word superflame, however, suggest a meaning by itself. I am further of the view the fact that it suggest a meaning by itself is its virtue and in my view would not in any way, denigrate the amount of skill and labour spent thinking it up, giving it expression. This word appears to have been made up to ensure that it shall catch the fancy of the potential customers/purchasers, and be easy to retain in memory, and to recall it, and repeat it by word to mouth publicity.

72. It is contended by the defendant that the word Superflame is combination of two words namely SUPER and the word FLAME which are words of ordinary every day language and the same cannot be exclusively appropriated.

73. While dealing with appropriation of words either with reference to Trade Mark Law or Copyright Law, what has to be first seen is whether the words in question exist in the language. It is then to be seen whether the word in question is a combination of two or more words. The important thing to bear in mind is actually not whether it is a combination of two or more words but whether the word in question is used by the author of it/owner of it as the single word or not. If the author uses the word in question as a single word, I am of the view that it is not permissible to break up that single word into its component parts. I am further of the view that it is not permissible after the word has been broken up into its component parts to say that it consists of either two or more words, which are common language words. This is so because what has to be seen in Trade Mark Law is a connection in the course of trade, and in the copyright laws, what one is concerned is to determine whether the person who has created the new fancy or invented word combination has expended his skill and his labour upon the creation of the word combination. Any person who is desirous of identifying himself with a particular word, which he has created, does so only for the purposes of establishing the sole connection with the article to which it is applied. The skill of the person who created a new word lies in making the word so simple, that the simplest of those, who would be interested in procuring the articles to which that word is applied, or those interested in purchasing the book to which the word/name has been given as a title would immediately register it in his mind for future reference. This is possible only when the word itself suggests a meaning which did not exists before and yet the word appears to be meaningful. It is not permissible to dissect the word and the word has to be seen as a whole. It must not be dissected to see whether any of its component parts conveyed any meaning. It is note worthy that for the purpose of comparison of two words, it was stated by the Superflame Court in AIR 1970 SC 2062 [LQ/SC/1969/320] that the whole word has to been seen. In my view, it makes no difference whether the Court is called upon to compare the similarity in two different words, or is concerned with only single word.

74. The principle appears to be that a word has to be considered as a whole and it is not permissible to dissect it into its alleged component parts. In this case, the fact is and it is not disputed that Superflame is written with only one single capital alphabet. The manner of its writing itself suggests that it is a single word, it is not combination of two words, and it cannot be dissected.

75. Applying the above test, it is apparent to me that sufficient skill and labour has been expended upon the creation of the word Superflame by the persons who first created it and used it.

76. The first user or the prior user if any mark, name or word has sufficient property therein to prevent others from making use of it.

77. In this case, there is ample testimony, even the testimoney of the witnesses of the defendants, like D.W. 1 and D.W. 2, who admit that Globe Super Parts/ Super Parts Pvt. Ltd. were the first persons to use the word Superflame upon their goods . The prior user of the word Superflame is of the plaintiff. The plaintiff is entitled to exclude others from making use of it.

78. In connection with the concept prior user the counsel for the plaintiff has cited a number of cases, which deal with the rights conferred upon the first user of any mark. Amongst others, the cases cited are AIR 1978 Delhi 250, Century Traders v. Roshan Lal Duggar & Co. In that case, a Division Bench of this Court referred to ILR (1976) 1 Delhi 278, L.D. Malhotra Industries v. Ropi Industries. The Division Bench held that in order to succeed in a passing off matter, what has to be established, is the user of a mark, prior in point of time than the impugned user by the respondents. The Division Bench approved the statement in ILR (1976) 1 Delhi 278 to the effect; a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly, the article having assumed a vendible character is launched upon the market. The registration under the statute does not confer any new right to the mark, claimed or greater right than what already existed at common law and at equity without registration. The single Judge of this Court had adopted, what is stated above, from a judgment of the Bombay High Court reported as AIR 1965 Bom 35 [LQ/BomHC/1961/52] ; Consolidated Foods Corporation v. Brandan & Co. Pvt. Ltd. I may, however add that the length of the user is relevant only when it is to be seen whether secondary significance has been acquired by a common language word.

79. As to the duration of prior use, which is required to acquire the exclusive right to the same, Mr. Anand referred to 1967 RPC 589 ; Standar v. Reay. In that case the matter in question was who used the words Mr. CHIPPY a coined combination in connection, with sale of fist & Chips. The plaintiff had commenced the business in Oct. 1966, and the defendant in Nov. 1966. Justice Buckley held that there was evidence in the case that substantial takings by the business of plaintiffs were proved by the trade for about three weeks prior to the commencement of the trade of selling fish and chips by the defendant under the name Mr. CHIPPY and that there was fall in the takings when the defendants started to trade. The Court held that the business of the plaintiff had been built up rapidly which was affected by the defendants also trading under the name of Mr. Chippy. Not with standing, that the defendants had given the name of the business independently of the plaintiff, the court confirmed the interlocutory injunction which has been granted in favour of the plaintiff. In other words, there is no fixed period of time provided for which exclusive prior use must be established in case of coined or fancy words, names, titles. In Mr. Chippys case about 2 month prior use was considered to be sufficient.

80. Counsel for the plaintiff also referred to 1967 RPC 201. Compatibility Research Ltd. v. Computer Psyche Co. Ltd. The plaintiff in that case had sought an interlocutory injunction with reference to the sex symbol device (an arrow attached to a circle for a male ; and a plus sign attached to a circle to denote a female) which were found to be in common use by science biologists to denote the male and female sex, by respondents who had commenced business later on. The plaintiff alleged that they were the prior user of the biological sex symbol and entitled to restrain the respondents. The Court found that in the short duration, in which the said symbols had been in use by the plaintiffs, did not exclusively identify those symbols, which were in common use by scientists with the trade of the plaintiff the trade of the plaintiff being the business of arranging introduction between members of the opposite sex by means of a computer. This case does not appear to be relevant for establishing the duration of prior user. The matter relates to exclusive appropriation of commonly used symbols and thus does not seem to have any bearing on the matters or prior user only.

81. What seems to be required, while determining the question of prior use is whether it has actually been identified with the prior user of it.

82. As far as question of identification of name/word SUPERFLAME with the plaintiff and its prior use by the plaintiff, the evidence on record bears out the contention that the name/mark Superflame had acquired a connection in the course of trade with the goods manufactured by the plaintiff, by virtue of its prior use and publicity and public association Rahul Rai as PW 1 has deposed to the effect that in the market, the word superflame denotes the products of Super Parts Pvt. Ltd., the plaintiff. Even the witnesses of the defendants have said, particularly defendant No. 1 as DW 1 that in the market place, no one else other than the plaintiff, is using the word Superflame in connection with the gas appliances. Defendant No. 1 also admitted that advertisements, which have been got published by the plaintiffs, highlight the word Superflame, and that he has never seen the name/mark/word Superflame on any goods belonging to any persons other than the plaintiff. He also stated that if anybody wanted to buy the goods of the plaintiff, he would ask for Superflame.

P.W. 2 Akhil Kumar Sharma had deposed On the products of Globe Super parts the words Superflame are found.

P.W. 3 Dhiraj Kumar has stated that the goods purchased from Super Parts Pvt. Ltd. bear the trade mark Superflame. P.W. 5 has stated that the Superflame is the brand of products of Globe Super Parts.

83. D.W. 2 Mohd. Abdulla Malik stated that no person other the Globe Super Parts makes stoves and name it as SUPERFLAME; Globe Super Parts exclusively used the name of SUPERFLAME on the stoves. He further stated that he had knowledge about the trade mark SUPERFLAME since he started business and that SUPERFLAME has been published in newspaper from time to time.

84. Evidence has been led by the plaintiffs through PW 4, their Chartered Accountant, Shri Rattan Lal Garg, who has been looking after the accounts, not only of Globe Super Parts partnership, but also of Super Parts Pvt. Ltd. His deposition regarding the expenses incurred on advertising the products of the plaintiffs, wherein the word SUPERFLAME is associated with the products of the plaintiffs, were deposed to be as follows :

In the year 1975-76 (by the partnership firm)Rs. 28,727.05

In the year 1976-77(by Globe Super Parts Pvt. Ltd.)Rs. 33,565.14

In the year 1977-78Rs. 3,22,742.53

In the year 1978-79Rs. 75,846.52

In the year 1979-80Rs. 1,07,095.00

In the year 1980-81Rs. 3,47,088.80

In the year 1981-82Rs. 14,80,304.06





The deposition, which was made by Chartered Accountant with reference to the account books, which had been brought by him to Court, the only thing which was put to him in cross-examination was that the word SUPERFLAME did not appear in the head of account regarding the publicity expenses.

85. I am of the view that the absence of the word SUPERFLAME in the relevant ledger folios is immaterial, because the accounts relate to Super Parts Pvt. Ltd. or Globe Super Parts; and there is ample evidence found of defendants witness that the mark/name adopted by the plaintiffs upon their goods is SUPERFLAME.

86. I am of the view that the testimony of the aforesaid witnesses, both of the plaintiff, and of the defendants, establishes that there is identification of a name/mark SUPERFLAME with the plaintiffs and its product and that the SUPERFLAME had become a recognisable idicia qua the vendible production of the plaintiff.

87. It is contended by Mr. Aggarwal for the defendants that the word SUPERFLAME is essentially a descriptive word and is incapable of becoming distinctive of the plaintiffs. He says that the word SUPERFLAME is a combination of two common English language words, namely, SUPER and FLAME. He states that the word SUPER is laudatory, adjective and the word FLAME is descriptive of a thing which is interlinked with the stoves.

88. As regards the first part of the contention that the word SUPERFLAME cannot become distinctive of the plaintiffs goods as the words is descriptive, Mr. Anand for the plaintiffs relies upon 126 RPC 854 at 857 L 20; it was held that whether a word is or is capable of becoming distinctive of the goods of a particular maker is a question of fact, and is not determined by its being or not being descriptive. The law has never refused to recoginse that this is the case, or to give protection to descriptive Trade marks when once duly established in fact, although , except in the case of old marks they refused registration, and left the owners to obtain protection in another form of action. This is now changed, and under the provisions of the present act the Court clearly has power to allow descriptive words to be registered, if a case on the merits is proved before it sufficiently strong to induce it to do so. (page 857 L. 40-47)

89. In order to consider the contention of Mr. Aggarwal further, one has to seen what is the nature of evidence in the case, produced by him, which establishes that the words SUPER and FLAME are incapable of being exclusively appropriated. In this case, there is no evidence led by the defendants to establish that the word FLAME is descriptive of gas cookers in which the heat is provided by a flame. In all types of cookers whether they are the wood burning chulas or the charocal/coke burning angithies or whether they are electrically operated cooking ranges, it is the heat which is provided by the various fules/source of energy which is of essence. Without heat there can be no cooking. In view of the fact that electric cooking appliances like OVENS, electric cooking ranges also exist, in my view it cannot be said that the flame heat source is of essence, in all cookers. Flame certainly provides heat but heat and flame are in view of what is stated above, not identical and one can and does exist without the other.

90. It is contended by Mr. Aggarwal that the word SUPER is a mere laudatory phrase. SUPER being laudatory and FLAME being inextricably connected with cooking appliances, it is stated that SUPERFLAME is incapable of being identified with the plaintiff. In my view, the argument that the word SUPER is laudatory entirely mises out on what is proved in this case. What is proved in this case is that the plaintiffs business has always contained the word SUPER in its trading name/trading style, whether the plaintiff was carrying on business as Super Parts Pvt. Ltd. or as Globe Super Parts. In the fact and circumstances of the case there is no reason for me to hold that the word SUPER in the present case, in the context of the plaintiffs goods, is a mere laudable phrase. I would say that on the facts proved in this case, the word SUPER has been taken out of the trading name/trading style of the plaintiffs and was not indented to be laudatory of the word FLAME but to indicate the connection between the plaintiffs business name and their products.

91. I may add here that, as stated earlier lames, depending upon the combustible material, are of different colours and have different temperatures. The gases which are put to use for providing heat in cookers are usually these which gives out a blue flame. This of course depends upon whether or not the burners of the cookers are properly designed, to ensure three parts air and one part gas mixture before the inflammable gas it ignited. The temperature of the blue flame is constant and it is not possible to say that the flame which comes out of the burner is a SUPERFLAME. In fact, it is the usual blue coloured flame and the blue colour of the flame depends upon the efficiency and the design of the burner.

92. In view of what is stated above, it is also not right to contend that flame is interlinked with all cookers. There is no flame in case of electrically operated cookers/cooking ranges nor is there any flame in case of burning coke, as in known to everyone, burning coke gives a hot red glow as coke burns without a flame.

93. In the facts and circumstances of this case, it is useless to contend that the word Super is superlative to the word-flame, also for the reason that SUPERFLAME may refer to the length or width or both, of a flame and not necessarily to the heart generated by it. When a pile of wood is burnt, the flame , though yellow coloured, which does not burn with a higher temperature than blue flame, because of its length and width, may be called SUPERFLAME or SUPERFLAMES. On the other hand the heat generated by the red glow of burning coke, without a flame, may be higher than the heat generated by a tall and broad yellow flame of burning pile of wood. Similarly the small flame of the Bunsen Burner which burns which burns with a blue colour may not be super in length and width but generates more heat as the blue coloured flame has a highest temperature.

94. The contention the Super is a laudatory word, flame is descriptive therefore SUPERFLAME cannot be exclusively appropriated, is based upon a misconception that it is permissible to dissect the word SUPERFLAME. The word has to be considered as a whole.

95. It is next contended by Mr. Aggarwal what the word SUPERFLAME is actually a misleading word and a misdescription and, therefore, being deceptive as contemplated by S. 11A of the Trade and Merchandise Marks Act, 1938, it ought not to be given any protection by the Court. It is the admitted case of the defendants as well as of the plaintiffs that the flame which comes out of gas burners, when they are functioning efficiently is blue coloured. As has been stated above, blue coloured flame has the highest temperature among the various coloured flames. In my view, it is not a misdescription or a deception to call a blue coloured flame SUPERFLAME inasmuch as a blue coloured flame burns with highest temperature. This is not to say, however, that every blue coloured flame is a SUPERFLAME. We are dealing with in this case, the word SUPERFLAME, as applied to a vendible commodity and not whether the blue flame produced as a result of igniting combustible gas, is SUPERFLAME or not.

96. The word SUPERFLAME is also not misleading for another reason. The person who buys a burner may buy in either in ignorance about its performance or he may purchase it after he has made himself aware of the performance of a particular gas cooker either by personal observation, or reputation as conveyed by friends or by any other means. It is no misrepresentation to call anything SUPERFLAME as at the time when the gas cookers are being displayed for sale they are not ignited to show that type of flame comes out of it.

97. Besides this, it may be also questionable whether lay public, who buys the gas cookers, is aware of the scientific fact that the blue coloured flame has the highest temperature and, therefore, for that reason is a SUPERFLAME.

98. Mr. Aggarwal contends that a gas cooker and flame are related and because of this relationship every gas cooker manufacturer is using the word FLAME to indicate a flamming gas cooker. There is no evidence as to why and how the word FLAME has become common to the trade. The only evidence which has been led by the defendants, is that some gas cookers are sold bearing name like Silver Flame, Sun Flame, Royal Flame, Blue Flame. Steel Flame, Superme Flame and also SUPERFLAME.

99. During the course of the arguments, I put it to the counsel that in fact the first gas cooker with the gas burner that was made here was named Planet. It was conceded by the defendants and the counsel for the defendants that it was so. It also cannot be disputed that there are gas cookers, which are being sold in the market, which do not have the word FLAME upon them. For example gas cookers being sold with names like, Savloy, Nick, Inalsa etc., and there may be many others. In view of the existence of the gas cookers with name like Planet and Savloy, Nicky-Tasha, Inalsa, it cannot be said in my view that the word is common to the trade. It may be that a number of manufacturers are using the word FLAME as a part of the name by which they wish to sell their gas cookers, but that is not the same thing as saying that flame is common to the trade.

100. In view of the above discussion. I am of the view that the word SUPERFLAME is a coined or fancy word, that it has been, in the facts and circumstances of the case, exclusively appropriated by the plaintiffs and that they are the owners of the mark SUPERFLAME in respect of gas cookers/appliances which are manufactured by them. The evidence in the case also establishes that in the market owing to the extensive publicity where the gas cookers appliances are bought and sold, the name/word SUPERFLAME cannotes the goods produced by the plaintiff. This issue is therefore, decided in favour of the plaintiff.

ISSUE NO. 4

Whether the defendants use the trading style Blue Superflame Industries is likely to pass of their goods/or business as the goods and/or business of the plaintiff

101. Having held that the name/word/mark SUPERFLAME belongs to the plaintiff, the next question which arises for consideration is whether the defendants Blue Superflame Industries are likely to pass off their goods as the goods of the plaintiff.

102. Mr. Anand for the plaintiff contends that the goods which are produced by defendants have got a lable about 1x3, on which their name i.e. Blue Superflame Industries is to be found. The existence of this lable on the gas cookers/gas appliances, manufactured by the defendants are likely to be passed off as the goods of the plaintiffs, as the word SUPERFLAME in the trading style of the defendant No. 1 is likely to create an impression in the mind of the persons who are buying the gas cookers/appliances that the defendants appliances are those of the plaintiff.

103. It is noteworthy that the small lable of 1x3 is affixed on the gas cooker/appliance of the defendants in put on the back side of the gas cooker/appliance. By the back side, I mean the side which is opposite to the side on which the knobs for controlling the flow of gas and the size of the flame have been affixed. These labels show the name of the manufacturer of the gas cooker/appliance. It is further also to be noted that the defendants gas cookers/appliances have the word Hot Flame on their front side, the same side as that on which the knobs for controlling the flames are to be found. It is also clear that the words Hot Flame are written up upon a label. This label is about 2x8 (approximately), and another label is 1x5(Nutan Label) on which word Nutan is to be found. Thus, each gas cooker as affixed to it two labels, one large one, and one small one. The larger one denoting its name, and the smaller one denoting the name of the manufacturer.

104. In view of the fact that each of the cookers of the defendants have got large size labels indicating its name, wherein the word SUPERFLAME does not occur. I would have thought that no claim to passing off the gas stoves would arise. But a claim of passing off has been raised and needs to be decided upon evidence.

105. It is interesting to read the deposition of the witnesses of the plaintiff. Much of the witnesses of the plaintiff have specifically stated that if any customer of theirs asked for Blue Superflame then what he would be given by them would be a gas cooker/appliances made by plaintiffs which has been painted blue in colour. Deposition to this effect has been made by PW 2, PW 3 and PW 5. These were witnesses produced by the plaintiffs, from the trade and the market. Other witnesses produced was PW 1, a Director of the plaintiff and PW 4 its chartered accountant. It is interesting that in this case, the market witnesses of the plaintiffs have themselves stated that there is no likelihood of passing off of the gas cookers/appliances, manufactured by the defendants as the gas cookers/appliances manufactured by the plaintiff. In view of this evidence, it is not possible to hold that the goods manufactured by the defendants, are being passed off as goods manufactured by the plaintiffs.

106. There is yet another reason why there is no passing off of the goods of the defendants as the goods of the plaintiff. The word SUPERFLAME, which occurs on the back side of goods of the defendants is minus cut compared to the size of the gas cooker/appliance manufactured by the defendants and it is unlikely that any average intelligent person, even with a fading memory would examine the back side of gas cookers/grill manufactured by the defendants and on the basis of the small label on the back side and the word SUPERFLAME occurring on a small part of the small label would be led to believe that he is buying the gas cooker/appliance of the plaintiff. In view of this finding of fact it is not necessary to consider judgments which have been cited at the Bar in connection with the principles applicable to passing off of goods.

107. In my view, the words Hot Flame and Nutan which are found on the front of defendants gas cookers/stoves cannot lead to confusion, as between them, and gas cookers/appliances of the plaintiffs, which have a label thereon bearing the word SUPERFLAME. As stated in AIR 1985 Delhi 210; B.K. Engineering Co., Delhi v. U.B.H.I. Enterprises (Regd.) Ludhiana and another ; what is required to be considered in a passing off action is whether the public at large is likely to be deceived. What would be the effect of the representation upon the prospective purchasers The instances of actual deception need not actually be proved. What is to be seen is whether there is unfair competition between traders rather than the deception of the public. These observation were made by the Division Bench in an appeal on the interlocutory matter. But these observations reiterate what the law of passing off of goods has always been.

108. In view of the fact proved in the case. I am of the view that the defendants goods are not being passed off as goods of the plaintiff by the defendants. In this view of the matter, there is no need to consider the following judgment cited by counsel for the defendants : AIR 1955 Cal 591 ; AIR 1972 Delhi 179 ; 1978 RPC 397 ; 1964 RPC 47.

109. The matter will not end here. What has further to be examined is whether the defendants use of the trading style Blue Superflame Industries is likely to pass off their business as the business of the plaintiff.

110. In order to decide this part of the issue, one has to keep in mind, what has been stated earlier regarding SUPERFLAME. It has been held by me that SUPERFLAME is an invented, coined word ; that it has no meaning in the English language and it has been proved on evidence that the word SUPERFLAME is not common to the trade ; and that in the trade and in the market place, where gas appliances are marketed, sold Superflame has been exclusively identified with the products of the plaintiff. SUPERFLAME being a meaningless word having no meaning ascribed to it in the common language, what is to be seen is why is the word SUPERFLAME adopted as a part of the trading style of the defendants.

111. It is proved by the evidence of PW 1 and also established by the evidence of DW 1 i.e. defendant No. 1, in the case, that defendant 2, the father of defendant 1, was the painting contractor for a number of years, for Globe Super Parts, as also for Super Parts Pvt. Ltd. The painting contract, for painting gas cookers/appliances of the plaintiffs was terminated by the plaintiff. It is after the termination of the painting contract that the defendant 1, who is young man of 21 years, admittedly having no experience in the trade of manufacture of gas cookers/appliances, started the manufacturing of gas cookers/appliances, as a sole proprietor of the sole proprietary concern which he named as Blue Superflame Industries. It is also admitted by DW 2 Mohd. Abdulla Malik that defendant 2, ex-painting contractor of the plaintiff, father of defendant 1, comes to him in connect with the business of gas cookers/appliances manufactured by the defendant 1. It is also admitted by the defendant 1 that his father may have given financial help to the defendant 1 in connection with business of manufacture of gas cooker/appliances. I think it is reasonable to find, with this state of evidence, that the word SUPERFALME in the trading style Blue Superflame Industries is not innocent or accidental. I am of view that the word SUPERFALME has been deliberately incorporated into the trading style/trading name of the defendant 1, with the sole intent to continue the link which the father of the defendant 1 had with the plaintiff, which connection was known in the trade, as is clear from the testimony of DW 1, defendant 1, and DW 2 Mohd. Abdulla Malik, the latter being the agent of defendant 1.

112. I have come to the conclusion earlier that the words SUPERFALME is a meaningless word ; that the SUPERFALME does not exist in the common and authoritative English language dictionaries. There was no reason to adopt a meaningless word as a part of the trading style/title, unless the same was adopted to convey to all persons in the trade and the prospective purchasers that there is a ling between the trade and goods of defendant 1 and the trade and goods of the plaintiff. The same link having existed between the father of the defendant 1 defendant 2 herein and plaintiff. I think that the observations of Lord Herschell in the case of Reddaway v. Banham (1896) 13 RPC 218 mentioned above are fully applicable to this case. Lord Herschell in his judgment in that case has said that he was unable to see why a man should be allowed in this way to deceive purchaser into the belief that they are getting what they are not, and thus to filch the business of the rival. In my view, mentioning the meaningless word in a trading style by the defendant is only with a view to filch the business of the plaintiff. What is the effect of this

113. With regard to this Mr. Aggarwal has two contentions to make. He says that if trading style contains descriptive words, then the same is not actionable, and for this proposition he relies upon 1946 RPC 39 ; Office Cleaning Service v. Westminster Window and General Cleaners. In that case, it was held that When the name of the words consists of words descriptive of that business, and which have not acquired secondary meaning, a slight difference between the plaintiffs and the defendants to the will, in the absence of fraud, be a sufficient distinction. That case relates to two business names which both business giving the same descriptive service. In this case, what is agitated, is the use of the words SUPERFLAME, a mark put on plaintiffs cookers, has been incorporated in the trading style of the defendants. I have held that the word SUPERFLAME is not descriptive word that it is the fancy word, invented word or a coined word. This case, as it deals with descriptive words only, is of no help to Mr. Aggarwal.

114. Mr. Aggarwal next contends that the small variation are sufficient for making the matter non-actionable. In other words, what is contended, is that according to the plaintiff what is actionable is the use of the words SUPERFLAME. The defendants having not used the word SUPERFLAME by itself, but in conjunction with the other words, therefore, owing to the added matter they are not liable. He relies upon AIR 1974 Andh Pra 274, AIR 1981 All 421 [LQ/AllHC/1981/335] , AIR 1965 SC 1980.

115. In all these cases the words were added by the defendants.

In AIR 1974 Andh Pra 274 the plaintiff was carrying on the business under the trading style of One day Electric Dry Cleaners and the defendants started their business as Only I dagy Dry Cleaners. The injunction was refused by the Andhra Pradesh High Court, because of the reason that the word only was held to create sufficient distinction. It is noteworthy that the trading style in the Andhra Pradesh case itself was descriptive of the nature of the services of namely, One day dry cleaning and following the principle that in case of descriptive terminology additions made created distinction the injunction was refused.

Same was a case in AIR 1981 All 421 [LQ/AllHC/1981/335] : Victory Transport Co. Pvt. Ltd., Ghazibad v. District Judge, Ghaziabad. In that case, the trading style of the plaintiff was Victory Transport Co. Pvt. Ltd. and the defendants started to carrying on business as Victory Goods Transport Co. In this case, also addition of the word goods was considered sufficient to distinguish. All the words were known words of the English language.

In AIR 1964 SC 980 [LQ/SC/1962/365] ; Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories. The plaintiff were Navaratna Pharmacy and the defendants were Navaratna Pharmaceutical. The word Navaratna was common Indian language word, and Pharmacy and Pharmaceutical were words added to Navaratna. It was held that this added matter was sufficient to distinguish the goods of the plaintiff from the goods of the defendants. All these words were descriptive words.

Another case relied upon by Mr. Aggarwal is (1907) 25 RPC 149 Electromobile Company v. British Electromobile Co. Ltd. In this case, what was objected to was the use of the word Electromobile in the trading style. It was held that the word Electromobile was a descriptive word, and also further it was found as a fact that the word Electromobile had not acquired any secondary meaning or significance. In these circumstances, the relief sought by the plaintiffs was refused.

Mr. Aggarwal also relied upon (1915) 32 RPC 479; Universal Winding Co. v. George Hattersley & Sons. In that case, it was found that the word Universal was a descriptive word and that being the case, the relief was not granted. The word considered in that case being the descriptive word, and the word under consideration in the instant case, not being a descriptive word, that case has no application to the present case.

116. None of the cases relied upon by Mr. Aggarwal apply to the present case, inasmuch as the word SUPERFLAME cannot be said to be a descriptive word. It is a coined, fancy, invented word.

117. The argument which has been advanced is that as far as the name of the defendants company is concerned matter has been added to the word SUPERFLAME namely, the words THE BLUE.INDUSTRIES, and that with additions of these three words to the word SUPERFLAME, there is no likelihood of confusion between the name adopted for the product by the plaintiff and the name adopted for the business by the defendant No. 1 and therefore no injunction be issued.

118. It is also clear from the reading of the cases that in order to escape the injunction what is required is that the added matter must be sufficient to distinguish. I also note from the cases, which have been cited before me that the added matter cases essentially deal with words which are common language words or names which are common names. I am of the view that the principles of, added matter sufficient to distinguish has no application when a new, invented, fancy, coined word for the reason that it is the new, invented, fancy, coined word which is the most striking of the words used, just because it happens to be new.

119. I have held that the word SUPERFLAME is new, invented, fancy, coined word, adopted by plaintiff to make their goods distinctive, and I am also of the view that the word SUPERFLAME does not loose its distinctive, newness, meaninglessness merely because some other words are added to it, still retains its prominence.

120. The cases cited with respect of the added matter, namely AIR 1974 Andh Pra 274, Teju Singh v. Shanta Devi; AIR 1981 All 421 [LQ/AllHC/1981/335] , Victory Transport Co. Pvt. Ltd. v. District Judge, Ghaziabad; AIR 1965 SC 980 [LQ/SC/1964/275] , Durga Dutt Sharma v. N.P. Laboratories, deal with words which are words which are common to the language and none of them contained words which are new, invented, coined, fancy words.

121. In my view, the fact that the words THE BLUE INDUSTRIES were added to the word SUPERFLAME is not sufficient to enable the defendants to avoid the injunction. Having found that the word SUPERFLAME is a fancy, coined new invented and meaningless word, I hold that the only reason why the defendants have adopted that as the part of its trading style is to filch- as stated by Lord Herschell in Reddaway Case- and to trade upon the name and reputation of the plaintiff, and in the facts of this case, and to retain the connection which existed between the defendant No. 2 (or his proprietary concern) as a painting contractor of the plaintiff and the plaintiff.

122. In view of my findings that SUPERFLAME is new, invented, coined, fancy and meaningless word the arguments of the defendants about the prefixes and suffixes are of no consequence as the defendants have failed to establish by cogent evidence that the word FLAME is common to the trade. It is also a matter of public knowledge, as is clear from advertisements, which are published for gas cookers, that there are manufactures who do not use the word FLAME upon or in connection with their gas cookers. By way of example is PLANET, INALSA, SAVLOY, NIKY-TASHA etc.

123. Mr. N.K. Anand cited the judgement of this Court in AIR 1980 Delhi 254 ; Ellora Industries, Delhi v. Banarasi Dass Goela in support of his case for grant of injunction. In that case, what had happened, was that the plaintiff was carrying on business in the name and style of Banarasi Dass Goela, and was registered proprietor of registered trade mark ELORA in respect of watches, time pieces , clocks and their parts. The plaintiff sold clocks but intended to introduce time pieces also. What the defendants did, was that they adopted the trading style of Elora Industries for carrying on the business of manufacturing time pieces.

124. It is clear that the business carried on by both the parties related to implements for measuring time ; Elora was the registered trade mark of the plaintiffs who were not using the word as a part of the their trading style. This Court held that the use of the registered trade mark Elora in the trading style of the defendants, would cause harm to the plaintiffs.

125. It is clear from S. 27 of the Trade and Merchandise Marks Act, 1958 that a Mark can be registered Trade Mark in which case an action for infringement shall have to be instituted and in the event of the Mark being an unregistered mark then an action for passing off is required to be instituted. In law injunctive relief is available whether the mark is registered mark or unregistered mark. Whereas in AIR 1980 Delhi 254 the whole of the registered trade mark of the plaintiff was used in the trading style of the defendant, by the defendant; in the instant case, the defendants have used the whole of the unregistered name/mark which has been found to be exclusively appropriated to the plaintiff as a part of their trading style ; it has also been found that the name/mark SUPERFLAME has become distinctive of the plaintiff and is a recognised Indica for the plaintiffs production. Having found that the word/name SUPERFLAME is distinctive qua the plaintiff the use of the words SUPERFLAME in the trading style is likely to lead to a belief that a connection exists between the business of the plaintiff and the business of the defendants. The plaintiffs have established that they are entitled to restrain the defendants from using the word SUPERFLAME as a part of their trading style.

126. There is yet another reason for my coming to the conclusion that the defendants ought to be restrained from using the word SUPERFLAME. As discussed above, the flame having the highest temperature, is a blue flame. A blue flame by itself would indicate a flame with the highest temperature. The addition of the word SUPERFLAME of the word Blue cannot convey anything about the nature of the article as there is no flame which is superior to the Blue Flame as far as temperature is concerned. The words Blue Superflame is merely an attempt to rely upon the principle of added matter sufficient to distinguish which is of no avail to the defendants, in view of the fact that the word SUPERFLAME is itself a coined, fancy, invented, new and meaningless word.

127. In this view of the matter, the petitioners are entitled to a permanent injunction restraining the defendants from using the word SUPERFLAME in the name of the business which is being carried on by the defendants.

128. In view of the evidence, which has been led, it is clear that there has been no passing off of the defendants goods as the goods of the plaintiff and for this reason, the plaintiff are not entitled to an accounting and prayer for accounting is denied.

129. As regards the prayer of delivery up inasmuch as the only article of the defendants that contains the word SUPERFLAME, are the small labels affixed at the rear of the Hot Flame or Nutan gas cookers made by the defendants, the defendants are ordered to deliver up the same upto the plaintiff. The defendants are directed to file an affidavit disclosing the number of labels in their possession and power, as also the dies jigs tools and fixture used by the defendants, their servants or agents, in manufacturing and preparation of the same, within two weeks from today; and deliver up all the aforesaid infringing articles within four weeks from today.

130. The plaintiffs shall have the costs of the suit.

131. In view of the observations regarding the gas burner body design I direct that a copy of the judgements alongwith a photo copy of pare 415, Vol. IX of 1969, Edition Encyclopedia Britannica, be sent to the Indian Standards Institute and the Consumer Protection Cell of the Delhi Administration. This is being done to ensure that the gas burner body design, if it needs alteration can be altered and proper standards laid down therefore in interest of consumers safety.

Order accordingly.