V.S. Aggarwal, J.

1. M/s. Novelty Emporium (hereinafter described as the plaintiff) has filed the present suit for perpetual injunction, restraining the defendant (M/s. Novelty Creation Private Limited) from manufacturing, selling, offering for sale, advertising, directly and indirectly dealing in wedding sarees, Banaras, Bangalore and South sarees, Embroided sarees, Lehanga Chunni, Punjabi Suit Dupatta etc. under the corporate name NOVELTY of the company or any other company name with prefix and suffix of the word NOVELTY. Besides that a claim has also been made for rendition of accounts. During the pendency of the said suit, the plaintiff seeks ad interim injunction by virtue of I.A. No. 8647/98. The defendant has filed an application under Order XXXIX Rule 4 of the Code of Civil Procedure i.e. I.A. No. 8962/98. By this common order, both these interim applications are proposed to be disposed of.

2. The facts alleged are that the plaintiff is engaged in the business of manufacturing, exporting and acting as a dealer in wedding sarees and other clothes, stitched clothes like Punjabi Suit Dupatta etc. It is carrying on the business under the name and style of Novelty Emporium. It has adopted this name in the year 1960 and has been carrying on the business under the said name uninterruptedly since then. The plaintiff has acquired statutory right to use the trade name and plaintiffs corporate name NOVELTY in the trading style has become distinctive and associated with the aforesaid goods. It has acquired handsome reputation and goodwill in the market and thus, the plaintiff claims that it has acquired exclusive right to use the corporate name NOVELTY. The defendant is alleged to be engaged in the business of marketing of wedding sarees and Banaras, Bangalore and South sarees, embroidered sarees and Lehanga Chunni and Punjabi Suit Dupatta etc. It has recently started the business. The defendant, with dishonest and mala-fide intention adopted the corporate name NOVELTY, identical and deceptively similar to the plaintiffs corporate name Novelty. The adoption of name identical and deceptively similar to that of the corporate name by the defendant, is with an ulterior motive to cause confusion and deception in the mind of purchasing public at large. It is claimed that the touts of the defendant are always standing in front of down stairs of the plaintiffs showroom and insist the unwarry and innocent purchasers that Novelty Creation Private Limited is another showroom of the plaintiff, where huge stocks are kept and purchasing public is likely to wonder that defendant is connected in one or the other manner with the plaintiff. It is asserted that the defendant has no right to use the trading name NOVELTY and hence the present suit with an application for ad interim injunction.

3. The defendant has contested the said suit as well as the application. In the written statement filed, it has been asserted that the plaintiff has not mentioned that it is a registered partnership firm and, therefore, the petition as such as well as the suit is not maintainable. Plea has also been raised that the plaintiff deliberately and with mala-fide intention tried to confuse the matter by not making it clear whether its trade name is NOVELTY or Novelty Emporium. The word NOVELTY is a generic in nature meaning quality of being novel or something new. The plaintiff has nowhere claimed any right over a particular artistic or colourful way of writing the word NOVELTY. The goods of the plaintiff cannot pass off as that of the defendant. The defendants claim is that everything is absolutely dis-similar including the trade name of the plaintiff as well as the defendant. Furthermore, it is contended that the word Novelty has been extensively used by many other dealers as a constituent part of their trade name, both prior or after use of the said word by the plaintiff. It is alleged that the word Novelty is not associated with the goods of the plaintiff or that of the defendant. It was pointed that there are many other shops, which are using the word Novelty Silk Emporium, Novelty Silk and Sarees, Novelty Garments and Novelty Sarees in different parts of the city. In this process, defendant claims that there is no ground for the plaintiff to seek the ad interim injunction.

4. In the present case, the main controversy revolves around the fact as to whether the plaintiff is entitled to the ad interim injunction in the action for passing off set up by the plaintiff.

5. The contention of the respondent that the plaintiff cannot, in the absence of the firm being a registered partnership firm file the suit, need not be probed further because the answer is provided by the decision of the Supreme Court in the case of Haldiram Bhujiawala and Another v. Anand Kumar Deepak Kumar and Another, II (2000) SLT 438=2000 (3) SCC 250 [LQ/SC/2000/414] . It was held that an action for passing off can be maintained by an unregistered firm and such a suit will not be hit by the provisions of Sub-section (2) to Section 9 of the Indian Partnership Act.

6. The law with respect to the action in passing off is well settled. It is well known that neither party with a concurrent right to use the mark can prevent other from continuing to use it. But the vested right of the property of the traders in marks which they have honestly adopted and are by public use have attracted valuable goodwill, must be accommodated with the interest of the public not being deceived by the origin of the goods. In other words, an action in passing off prima facie would succeed if the Court comes to the conclusion that the goods of the defendant can pass off as that of the plaintiff by adopting similar trade name as that of the opposite side.

7. The attention of this Court has been drawn to number of precedents and the plaintiffs learned Counsel relied upon the decision of this Court in the case of M/s. Mahalaxmi Jewellers and Another v. M/s. Mahalaxmi Jewellers of Chakwal, etc., 1981 PTC 197. In the cited case M/s. Mahalaxmi Jewellers was a partnership firm. Defendant started the business in the name of M/s. Mahalaxmi Jewellers of Chakwal. The civil suit was filed in an action for passing off against the defendant. It was held that both the parties were using the word Mahalaxmi Jeweller and the name of the defendant is likely to deceive the customers as if they were dealing with the goods of the plaintiff. The injunction order prayed, had been issued.

8. In another case, entitled M/s. Kala Niketan v. M/s. Kala Niketan, 1981 PTC 213, the plaintiff was carrying on the business under the name and style of Kala Niketan. The defendant also started using the name Kala Niketan for the business. This Court decreed the suit holding that it is likely to deceive the ordinary customer. This Court, while dealing with this controversy, had held :

19. The word Niketan according to Bhargavas Standard Illustrated Dictionary of the Hindi Language means dwelling, habitation, house, place, residence, mansion. This word Niketan is not indicative in any way of the goods in question i.e. Sarees. It does not afford any information as to the general nature or character of the Sarees. The word Kala according to the above-mentioned Dictionary, inter alia, means : brilliance, grandeur, fraud, trick, sport, play, supernatural power, somerasult, art, craft, technics, fine arts. According to the learned Counsel for the defendant the word Kala suggests sarees with artistic designs.

20. On a careful examination, I am unable to accede to this contention. The word Kala or the words Kala Niketan are not descriptive of the qualities or characteristics of Sarees. These words do not indicate the Sarees. They do not afford the information as to the general nature or character of the Sarees. The word Kala is a noun and not an adjective. It cannot be said that it describes the quality of the Sarees. The word art according to Chambers Twentieth Century Dictionary (Revised Edition) is noun and means : practical skill, on its application, guided by principles, human skill and agency (opp. to nature) : application of skill to production of beauty (esp. visible beauty) and works to creative imagination (as the fine arts) : a branch of learning, esp. one of the liberal arts (see trivium, quadrivium) as in faculty of arts, master of arts : skill or knowledge in a particular department : a skilled profession or trade, craft, or branch of activity : magic or occult knowledge or influence : a method of doing a thing : a knack : contrivance : address : cunning : artifice : crafty conduct : a while. Applying these meanings the work art ) cannot be said to be indicative or descriptive of the Sarees.........

9. Yet in another decision of this Court in the case of M/s. Virendra Dresses, Delhi v. M/s. Varindera Garments, Delhi, 1982 PTC 233, the plaintiff was using the trade name Virendra Dresses. The defendant was using the name Varindera Garments. It was held that it was likely to confuse an ordinary customer and the reasoning of this Court, while granting the injunction was as under:

........ But when the two names are pronounced there does not appear to be any difference. The words `dresses and `garments means the articles of clothing. Thus the main word which is likely to cause confusion in the two businesses of the plaintiffs and the defendants is `Varindra. The two trade names of the plaintiffs and the defendant are similar and this similarity is sufficient to give rise to great risk of confusion. Similarity and confusion are to be determined from the point of view of a common man. A man in the street will remember the name `Varindra he may not be able to make a distinction between the `garments and `dresses. If a man goes in the street where the plaintiffs and defendants are carrying on business he may enter the business premises of the defendant. Thus there is every likelihood of confusion if a public man goes to the street where the plaintiff and defendant are carrying on business. A customer intending to go to the business premises of the plaintiff is likely to visit the business premises of the defendant when the two trade names are so similar. I am therefore of the view that the two trade names are not distinctively different but are similar likely to cause confusion.......

10. A reading of these precedents would clearly show that in all these cases, the defendant was using the similar name. The conclusion was that it was likely to impress upon an ordinary customer as if it was the business name of the plaintiff where they were purchasing similar goods. As would be noticed hereinafter, this is not the position in the present case.

11. On behalf of the plaintiff, strong reliance was placed on the decision, further of this Court in the case of Montari Industries Ltd. v. Montari Overseas Ltd., 57 (1995) DLT 771. [LQ/DelHC/1995/229] In the cited case, the plaintiff M/s. Montari Industries was carrying on the business while the defendant was using the words Montari Overseas Ltd.. This Court had concluded that the word MONTARI is neither natural nor a generic word. It has no place in dictionary. It had been alleged to be coined by the plaintiff by deriving components from Mohan (Bhai Mohan Singh) the name of Chairman of the plaintiff company and Mrs. Awtar Mohan Singh, nick named as TARI, being the wife of the Chairman of the plaintiff company. This Court, while allowing the application for ad interim injunction held :

14. The trend of judicial opinion is that reputation or goodwill in business generally attaches with the trade name adopted by a house. Such reputation or goodwill would be protected by the Court. Copying of the name by a competitor is likely to cause an injury to its business. No one is entitled to commence or carry on business in such a way as to represent it to be the business of someone else or at least associated with such someone else. If a person or house uses a name which is likely to deceive and divert the business of someone else to him or is likely to cause confusion in the mind of the persons likely to deal with such competing business house, then the impugned action or intended action would be prevented by the Court on the same principles which are applicable to ordinary cases of passing-off relating to sale of goods. Innocence of the defendant is no defence. The law applies with more rigour when the defendant is an inanmate person such as a company and when the name consists of a coined word.

12. As is apparent from the perusal of the decision rendered in the case of Montari Industries Ltd. (supra), it is obvious that the word Montari was held to be not a generic name and therefore, the adoption of such name, which has been coined by the plaintiff, this Court felt that ad interim injunction should be granted.

13. All these decisions, referred to above, as have been noticed, clearly reveal that either they were using absolutely similar name or they were using special names, which were not generic names.

14. The position in the present case is little different. At the outset, at this stage, one can conveniently refer to the fact that the defendant can escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. This was noticed by the Supreme Court in the case of Parley Products (Private) Limited v. J.P. and Company Mysore, AIR 1972 SC 1359 [LQ/SC/1972/67] . The Supreme Court quoted the following excerpts from the earlier decision in the case of Durga Dutt v. Navarathna Pharmaceutical Laboratories, AIR 1965 SC 980 [LQ/SC/1964/275] . The passage appearing at page 990 was approved in the later decision in the case of Parley Products (Private) Limited, which reads as under :

While an action for passing off is a Common Law remedy being in substance an action for deceipt, that is, a passing off by a person of his own goods as those of another that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (vide Section 21 of the). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off but is the sine qua non in the case of an action for infringement.

In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in an other way, if the essential features of the trade mark of the plaintiff have been adopted by the defendants, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show market differences or indicate clearly a trade origin different from that of the registered proprietors of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. (Emphasis added)

15. In the present case the word Novelty must be taken to be a generic name. It is not a name coined by the plaintiff, so that it could take advantage of the decision in the case of Montari Industries Ltd. (supra). Once it is a generic name, necessarily, the Court has to travel to find out as to whether an ordinary customer by virtue of the name, adopted by the defendant, would be mistaken and could take it to be the business of the plaintiff or its extension. Herein the plaintiff is using the name M/s. Novelty Emporium. The defendant is using the name and carrying on the business under the name and style of M/s. Novelty Creations Private Limited. Merely use of the word Novelty by itself will not indeed imply that action for passing off would be maintainable. Because the added words Creations Private Limited clearly distinguish its goods from those of the plaintiff. This is for the reason that the defendant has specifically pleaded that there are many other Saree Shops, using the word NOVELTY within the city of Delhi. In addition to that, the cartons, labels and wrappers of the defendant have also been stated to be different than that of the plaintiff. Once the word Novelty, which is a generic name is being used widely in the city and the further words that have been added to the word Novelty, makes it clear that the goods of the plaintiff can be distinguished from that of the plaintiff. It must follow that the plaintiff cannot be termed to have a prima-facie case.

16. On behalf of the plaintiff, reliance is placed on the report of the Local Commissioner. The Local Commissioner visited the site and found that while the Local Commissioner was looking at the Boards of M/s. Novelty Creation Private Ltd., some 3 to 4 persons approached them and asked them to purchase a Saree from Novelty Creation Private Ltd. and that the said shop is a sister concern of the shop namely M/s. Novelty Emporium. They were told that the owners of both the shops are brothers. Indeed, the plaintiff cannot take advantage of any such fact recorded by the Local Commissioner. This Court, on 30.10.1998, had directed the appointment of Local Commissioner (ex-parte) and required the Local Commissioner to visit the spot and report whether defendant was carrying on the business under the name and style of Novelty Creation Pvt. Ltd. It was not the brief of the Local Commissioner to find out what has been recorded above. Therefore, what has been recorded by the Local Commissioner in this regard, necessarily should be ignored.

17. For these reasons, when no prima facie case is drawn the ad interim injunction so granted, necessarily must be vacated. Order is made accordingly.

Suit No. 2107/98

18. List it for framing of issues on 11.4.2002.