V.B. Bansal, J.

1. This order is to dispose of the application filed by the plaintiff under Order 39 Rules 1 & 2 read with Section 151, Civil Procedure Code, praying that the defendants, their servants, agents, dealers and representatives be restrained from carrying on their business as manufacturers or vendors of black and galvanised steel pipes and tubes under the trade mark BINDAL alongwith the device of the map of India or any other identical and/or deceptively similar trade mark and also from passing off their goods under the offending trade mark/label entitled Bindal alongwith the device of the map of India or under any other mark/label identical and/or deceptively similar to the mark, label or device of the plaintiff.

2. M/s. Jindal Industries Ltd. has filed a suit for perpetual injunction restraining the defendants from using the trade mark Bindal with the device of map of India in respect of manufacture and sale of galvanized steel pipes and tubes, similar to that of the plaintiff and from passing off their goods, thereby causing loss and damage to the plaintiff. A prayer has also been made for rendition of accounts.

3. Briefly stated, the averments made in the plaint have been that the plaintiff is a company duly incorporated under the provisions of the Indian Companies Act, 1956 and Shri B.B. Pradhan, who is the General Manager of the plaintiff company is connected with the affairs of the plaintiff, has been authorized by it to sign, verify and file this suit.

4. It is claimed that the plaintiffs are the established manufacturers and traders of galvanized iron pipes and tubes since 1961 and have been using the trade mark Jindal with the device of the map of India in relation to the said products. The plaintiffs are the registered owners and proprietors of the trade mark Jindal with the device of the map of India under registration Nos. 384, 816 dated 31.12.1981 in Class-6, advertised in Trade Mark Journal No. 959 dated 16.05.1989, having claimed its user since 1961. This has been renewed from time to time and the registration is still subsisting.

5. The plaintiffs are the registered owners and proprietors in respect of the artistic work/label entitled Jindal with the device of the map of India under No. A-36949/82 dated 31.05.1982 under the Copyrights Act, 1957. The impugned device is in oval shape having black border line with the word Trade on the upper side and Mark on the lower side and in the inner the map of India is given in black colour around white ground showing the trade mark Jindal with the alphabets j, i, a and l in black colour and n and d in white colour. It is also claimed that the goods of the plaintiffs are manufactured in accordance with the Essential Commodities Act and plaintiffs are one of the leading concerns of India and its products are supplied to various Government departments, including the Director General of Supplies and Disposal. It is also claimed that the plaintiffs have been publishing trade mark caution notices in various newspapers, trade magazines etc. so as to make the general public know that the plaintiffs are the registered proprietors of their trade mark.

6. It is also claimed that on account of the continuous regular and extensive use, this trade mark has come to be associated with the name of the plaintiff and none else and that the plaintiffs have spent huge sums in giving advertisements in different newspapers, being the owners and proprietors of this trade mark. The sales of the plaintiffs in respect of the galvanized pipes runs into crores of rupees and they have a name in the market. It is further claimed that the name of the plaintiff has acquired a high reputation in the market with which their goods have become associated and, thus, they have a right to restrain any individual, firm or company from using the same so as to cause harm to the reputation of the plaintiff, besides monetary loss.

7. It is also claimed that the defendants have started the manufacture and market of galvanized steel pipes and tubes under mark Bindal with the device of the map of India using the exactly similar design, colour scheme, get up as of the plaintiffs artistic work in violation of the vested rights of the plaintiffs. It is also claimed that the defendants are also guilty of passing off their spurious and sub-standard quality of products under the trade mark Bindal alongwith device of the map of India as and for the superior and high standard quality of the goods of the plaintiffs, thereby causing loss to the goodwill and reputation of the plaintiffs, besides monetary loss. It is also claimed that the defendants have not stopped the use of the impugned trade mark and, thus, this suit in which a prayer has also been made for decree for rendition of accounts.

8. Defendants have contested this suit as also the application and have filed written statement and reply to the application. It has inter alia been pleaded by the defendants that the plaintiff has falsely represented that the trade mark Jindal with the device of map of India as well the trade mark alleged to be registered in relation to the galvanized iron and steel pipes and tubes in Class-6 as registered in view of Section 18(d) of the Trade and Merchandise Marks Act, and that, in fact, there is a disclaimer under this registration to the effect Registration of this trade mark shall gill give no right to the exclusive use of the device of map of India and the word trade mark. It is further claimed that the plaintiffs are neither the registered owners nor proprietors and originators in respect of the artistic work/label entitled Jindal with the device of map of India. It is claimed that artistic works are never registered under the Indian Copyrights Act and, thus, plaintiffs are guilty of making misrepresentations and concealing material facts.

9. It is further claimed that the plaintiff obtained registration of the mark by concealment of facts, knowing it fully well that other people have been using this trade mark and that this mark is also registered in the name of M/s. Jindal (India) Limited, 2/1, Ahmed Mamooji Street, Lillooah, Howrah, West Bengal. It is further pleaded that the registration of the trade mark and artistic work are not legal and regular and are liable to be rectified from the records of the Registry under the relevant provisions of the Act. It is further pleaded that the plaintiff has been engaged in trading deceptively and is pursuing a policy of deliberately deceiving purchasers of his goods as bearing registered trade mark and registered artistic work. It is further pleaded that the defendant is the proprietor of the trade Bindal logo with device of map of India inside a circular round shape in relation to galvanized steel pipes and tubes on account of its adoption in the year 1987 and continuous user thereafter. It is further pleaded that the defendants have already built up a valuable trade and reputation under the said trade mark and the plaintiff has all along known it. It is further pleaded that the present suit has been filed out of business rivalry only to curtail the business of the defendant, which has been well established.

10. It is also pleaded that on the short ground of delay itself this suit is liable to be dismissed and is barred by the principles of waiver, acquiescence, estopped and latches. It is specifically denied that the plaintiffs have been regularly, conclusively and openly using the trade mark Jindal with the device of the map of India on their manufactured goods since 1961. It is further pleaded that the mark/label of the defendant is not exactly similar in design and colour scheme as that of the plaintiff. A prayer is, therefore, made that this suit may be dismissed. Prayer for interim relief has also been opposed by way of filing reply to the application.

11. I have heard learned counsel for the parties and have also gone through the records.

12. Learned counsel for the plaintiff has submitted that the trade mark of the plaintiff was registered in the year 1981 which has been in use by the plaintiff since 1961 and that the defendant has started the use of the trade mark Bindal with the device of map of India so as to deceive the public and pass off his galvanized pipes to be that of the plaintiff so as to infringe the right of the plaintiff under the Trade & Merchandise Marks Act, 1958, as also to pass off its goods as that of the plaintiff. It has, thus, been pleaded that the use of this mark by the defendant, if permitted, would cause an irreparable loss to the plaintiff who has a prima facie good case. It has also been pleaded that the balance of convenience lies in favour of the plaintiff and it is a fit case where injunction, as prayed, is granted.

13. Learned counsel for the defendant has, on the other hand, submitted that the plaintiff is not he exclusive user of the trade mark Jindal which is being used by other concerns, having the same mark registered in their name. He has further submitted that there is a disclaimer in respect of the map of India at the time of registration of the trade mark Jindal in favour of the plaintiff, which information was suppressed by the plaintiff in this suit. He has further submitted that there is no violation of the trade mark of the plaintiff and Bindal is the Gotra of the defendant which is being used by many other persons. He has further submitted that there is no likelihood of the public being deceived as the two trade marks are distinct. It has also been submitted that the balance of convenience does not lie in favour of the plaintiff and the defendants would suffer an irreparable loss if the injunction, as prayed for, is allowed as their business would come to a standstill. A prayer has, therefore, been made that the application should be dismissed. I would be considering these submissions hereinafter.

14. The first question is with regard to the registration of the trade mark of the plaintiff. The plaintiff has been registered under No. 384816 dated 31.12.1981 in Clause (6) which has been advertised in the Trade Mark Journal No. 959 dated 16.05.1989. The plaintiff has claimed the user of this artistic name since 1961. The plea taken by the defendant in para 4 of the written statement has been that the registration of the trade mark in favour of the plaintiff is not legal and that M/s. Jindal (India) Ltd., 2/1 Ahmed Mamooji Street, Eillooah, Howrah, West Bengal, are also the user of the same mark under registration Nos. 192125, 470648 and 470649. It has, been pleaded by the learned counsel for the defendant that the plaintiff has no exclusive right to the use of this trade mark. The question for consideration, however, is as to whether this defence is available to the defendant any my answer is in the negative. Section 31 of the Act clearly provides that in all legal proceedings relatings to a trade mark registered under this Act, the original registration of the trade mark and all subsequent assignments of the trade mark shall be prima facie evidence of the validity therefore. The question is as to who is competent to challenge the registration 28 and the answer is available under Section of the act. A bare reading of this section makes it abundantly clear that if a trade mark is registered in the name of more than one person they may contest the registration inter se, but as against third persons each one of them can initiate action if the said registration is being used by a third party. It cannot be a valid defence by a person using the trade mark to plead that since more than one person is having the registered trade mark in his favour, he used the same.

15. Learned counsel for the defendant has submitted that the plaintiff had obtained registration by fraud, which needs to be cancelled. Suffice it to say, at this stage, that the defendant may take such action as deemed proper but he cannot succeed in defeating the prayer of the plaintiff for injunction on this ground that the registration was obtained by fraud. The validity of registration cannot be challenged in this case of injunction. Reference in this regard can be made to the case Hindustan Embroidery Mills Pvt. Ltd. Vs. K. Ravinder & Co. 1974 B.L.R. 146.

16. Learned counsel for the defendant has submitted that there is a disclaimer by the plaintiff with regard to the use of map in the registration of the trade mark of the plaintiff and on this account the plaintiff cannot claim any right under this registration with regard to the use of the map. He has also submitted that the plaintiff has suppressed this material fact about disclaimer in the suit and it is sufficient to decline the discretionary relief of injunction to the plaintiff. I do not agree with this submission. In this suit, the plaintiff has claimed the relief of injunction both on the basis of the registration of the trade mark as also of passing off. It is well established law by this time that common law right of the plaintiff would not be affected by the registration of the trade mark and the disclaimer mentioned therein.

17. The plaintiff has claimed the use of the trade mark Jindal with the map of India since 1961. Submission of the learned counsel for the defendant has been that the evidence with regard to its user by the plaintiff has not been brought prima facie on record from the said date it cannot be said that the plaintiff has been using this trade mark of Jindal alongwith the map of India. There are clear averments made by the plaintiff in this regard and the matter would have to be gone into during trial prima facie there is sufficient material to hold that the plaintiff has been using this mark much prior to the start of the use of the map of India by the defendant, which according to the claim of the defendant itself, was from the year 1987. The law is well established that if the proprietor has acquired his right by long user of the goods, he can by proving the necessary facts prevent the infringement of his trade mark by another person. Reference in this regard can be made to the observations made in Arakhito Sahu Vs. Abakash Sahu, AIR 1983 noc 208. Reference can also be made to the case of Registrar of Trade Mark Vs. Ashok Chandra Rakhit Ltd., AIR 1955 S.C. 558.

18. Learned counsel for the plaintiff has submitted that the galvanized pipes of the defendant are similar to the pipes manufactured by the plaintiff and the public is likely to be deceived considering the product of the defendant to be that of the plaintiff and, thus, the plaintiff is suffering an irreparable loss on account of the user of the name Bindal with the device of map of India similar to the name Jindal with the device of map of India of the plaintiff. Learned counsel for the defendant has controverted this submission and submitted that the galvanized pipes are used by persons only on the advice and approval of the architects and engineers and there can, in these circumstances, be little chance of deception in case of the pipes of the plaintiff and those of the defendant. The test to my mind is not the intention of the defendant in using a certain name but the probable effect of such action on the mind of the public. However innocent his intention may be, the defendant can be restrained from trading under the name so much like that under which the plaintiff was trading, who was first in the field and if the public are likely to be deceived into systematic and not merely occasional confusion. I do not agree with the submission of the learned counsel for the defendant that the galvanized pipes are used only under the advice of approved architects and engineers. It is a matter of common knowledge that public at large, including illiterates and persons residing in for off places use galvanized pipes and they may not be is a position to distinguish between the mark Jindal of the plaintiff and Bindal of the defendant, when both of them are using the map of India alongwith the name. Learned counsel for the defendant has placed reliance upon the case Kimberly Clark Corporation Vs. Bays Chemicals 1968 Madras Law Journal Vol.II 14. It was case with regard to the objections to the registration of the mark Blotex in respect of sanitary napkins by the persons who had earlier the trade mark Cotex registered. A perusal of this judgment makes it abundantly clear that the two marks were held to be not similar so as to deceive the public on the basis of the facts of its own type. It was observed that the sanitary napkins are being used by ladies who belonged to a sophisticated and educated section of the public, who would appear to be the higher middle class if not actually affluent. It was found that such ladies may accept the Blotex napkins to be the best possible substitute but would not be misled to accept Blotex for Cotex. This judgment in these circumstances cannot be of much assistance to the defendant.

19. Reliance has also been placed on the case Amritdhara Pharmacy Vs. Satya Deo Gupta AIR 1963 SC 449 [LQ/SC/1962/200] . A perusal of this judgment clearly shows that every case has to be considered on its own facts and the value of the authorities lies not so much in the actual decision but the law on what is likely to deceive or cause confusion. It was also held that the defendant is to prove that there is no possibility of deception and that for deceptive resemblance there were two important questions, viz. one the persons whom the resemblance must be likely to deceive or confuse and what rules of comparison are to be adopted in judging whether such resemblance exists. It is further observed in this judgment that the question has to be approached from the point of a man of average intelligence and imperfect recollection and that to such a mind the overall structural and phonetic similarity of two names Amrit Dhara and Laxman Dhara was likely to deceive or cause confusion. An unwary purchaser of average intelligence and imperfect recollection will not split the name into its component parts where the trade relates to goods largely sold to illiterate or partly literate persons and that a person educated in Hindi can make distinction in the meaning.

20. It would also be convenience at this stage to refer to the case of F. Hoffimann-La roche and Co. Ltd. Vs. Geoffrey Manners and Co. Pvt. Ltd. AIR 1970 Supreme Court 2062. It was held in this case that the mark must be compared as a whole and it was not right to take a portion of the word and say that because that portion of the words differs from the corresponding portion of the word in the other case, there is on sufficient similarity to cause confusion. It was also held that the true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. The question for consideration was whether the trade mark Protovit was deceptively similar to the trade mark Dropovit, already registered. The conclusion arrived at in this judgment was that it was a case of medicine and the prescription was to be written by a Doctor, to be taken to a Chemist for the purchase of the medicine and, thus, there can possibly be no question of confusion or deception. It was also held that the question of deceptively similar has to be decided on the basis of the class of the goods to which the two trade marks apply and that even an average customer would know that in respect of vitamin preparations the work Vit occurs in large number of trade marks and because of this he would naturally be on his guard and take special care against making a mistake.

21. AIR 1970 Supreme Court 142 is another authority which needs to be mentioned at this stage. In this case the question for consideration was whether Gluco Vita with reference to Glucose with Vitamin was similar to Gluco Vita used with reference to Biscuits. It was held that in deciding the similarity between two marks, Courts have to approach it from the point of view of a man of average intelligence and imperfect recollection and to such a man overall structural and phonetic similarity is reasonable to cause confusion between them.

22. Learned counsel for the defendant has submitted that there cannot be a monopoly of the use of the mark Jindal by the plaintiff so as prevent the use of the mark like Bindal, Bansal etc. by others and that Bindal is the surname of the defendant and they have a right to use the same. He has further submitted that there are so many persons doing business under the name Jindal and referred to such names appearing in the telephone directory. In a case of infringement of trade mark and passing off would such a plea be open to the defendant My answer is in the negative. Reference in this regard can be made to the case of Bajaj Electricals Limited, Bombay Vs. Metals & All Products, Bomaby & Another AIR 1988 Bombay 167. It was a case where the surname Bajaj was the subject matter of he dispute. The plea taken by the learned counsel for the respondent was that the defendant No.1 being Bajaj was entitled to use his own name unless it was established that the user was dishonest. Reference was also made to observations made in 1962 RPC 265 to the effect that trading must not only be honest but not even unintentionally be unfair and, consequently, the conclusion arrived at was that the respondent was not entitled to use the trade mark Bajaj of the plaintiff even if it was assumed that the goods of the defendant were of high quality and that the plaintiff would not suffers damage on account of the sales of the goods of the defendant with the same trade mark. It may be repeated at this stage that the defendant has started the use of the word Bindal at a much later stage in respect of the same goods which are marked by the plaintiff.

23. It would at this stage be relevant to mention the case B.K. Engineering Company, Delhi Vs. U.B.H.I. Enterprises, Ludhiana and another, AIR 1985 Delhi 210. In this case the registered mark of the plaintiff was B.K. and the defendant had started the use of trade mark B.K.81, B.K. being the initials of the defendants deceased mothers name, viz. Balwant Kaur. It was held that the claim of the defendant that B.K. were the initials of the name of the deceased mother and that he had no intention to deceive anybody did not mean that such likelihood has not been created and that the two marks were deceptively similar. In this case also a reference was made that the alphabets B.K. were business names and used by hundreds of people. This argument, however, was not accepted and it was held that it was a case where both the firms were engaged in the common field of activity. The question was as to whether the defendants were misleading the public into believing that they emanated from the plaintiff. Similar is the case in hand where both the parties are dealing in the manufacture and sale of galvanized pipes. It is not that the sphere of manufacture and sale is in respect of different articles and thus, there could not be any deception. This argument, thus, cannot be of any help to the defendant.

24. It is well established that the defendant cannot be permitted to deliberately repay what it has not sown and the defendant cannot be permitted to make use of plaintiffs extensive labour and effort so as to misappropriate the plaintiffs property in business and goodwill. It would also be relevant at this stage to refer to the case M/s. Nirex Industries (P) Ltd. Vs. M/s. Man Chand Foot Wears Industries 1984 PTC 97. It was in respect of trade mark relating to shoes and chappal. The plaintiff was having the registered trade mark Nirex and it was held that the mark Mirx of the defendant was similar to that the plaintiff and, so, injunction was granted. Similarly in the case M/s. Pidilite Industries P. Ltd. Vs. M/s. Mittees Corporation & Another 1988 (2) ALR 436 the trade Fevicol of the plaintiff was registered in 1960 while the defendant adopted the trade mark Trevicol in 1985. In was held to be similar to the trade mark of the plaintiff. It was also observed that the Court has to examine and compare the trade mark as a whole and not only a portion of the same. It was also held that while deciding the question about the similarity, the Court has to find out the following, viz.

(1) It is always a question of fact whether the deception or confusion is likely to be caused or not by the use of the impugned trade mark and the Court has to put itself in the position of an average customer and ask the question whether there is likelihood of deception or confusion or not and then to answer the question on that basis.

(2) The marks must be compared as a wholes. It is not right to take a portion of the word and say because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion.

(3) The likelihood of deception or confusion is to be seen in relation to average unwary customer.

(4) It is the tendency to misled or cause confusion that forms the basis of passing off action of the plaintiff having established the actual deception.

25. In The Tata Iron & Steel Co. Ltd. Vs. Mahavir Steels & Others 1992 A.L.R. Vol.(16) 417, the question for consideration was as to whether the mark Fisco was similar to the trade mark Tisco of the plaintiff for iron and steel channels and the answer was in the affirmative.

26. Learned counsel for the defendant has referred to the matter of the Application by R.K. Dundas Ld. for the registration of a trade mark (1955 Vol.72 RPC). It was a case where an application was made for the registration of the trade mark Dustic for adhesives. The application was opposed by the party whose trade mark Bostik was already registered. It was held that the word Dustic was an invented word and has no reference to the character and quality of the goods and it was not liable to be confused with the mark Bostik registered by the opponents for certain classes of adhesives, regard being had to the number of marks for adhesives ending in Stic or a like termination already in existence. The registration mass thus, allowed. The facts of this case are entirely different. As a matter of fact, it was held that there is no likelihood of deception.

27. As already referred to, the plaintiff has been dealing in the manufacture and sale of galvanized pipes under the name Jindal with the device of map of India and this trade mark was registered in the year 1981 with a disclaimer about the use of the map and the defendants started the use of the name Bindal with the device of map of India at a much later stage. On comparison of the two marks it is clear that unwary and human man is likely to be deceived in considering the pipes of the defendant to be that of the plaintiff. The plaintiff has, thus, a prima facie good case and he would suffer irreparable loss if the injunction prayed for is not granted. The balance of convenience also lies in favour of the plaintiff.

28. As a result, the application is allowed and the defendants themselves and through their servants, dealers, are restrained from manufacturing, selling, offering for sale black galvanized steel pipes and tubes under the offending trade mark Bindal with the device of map of India or any other identical or deceptively similar trade mark, to the trade mark of the plaintiff so as to pass of their good as the goods of the plaintiff till the disposal of the suit.

29. It is, however, made clear that the observations made have only been for the decision of this application and the suit would finally be decided on the basis of the evidence that may be produced by the parties.