K. Ramamoorthy, J.

1. The plaintiffs claim to the trade mark GOLDEN CRUISER 1200. The defendants claim the trade mark SUN CRUISER 2001.

2. The plaintiffs and defendants are engaged in the same business of manufacturing and selling automobile coolant and other attendant products. The suit was instituted by the plaintiffs on 28.8.1990. In the original plaint, the plaintiffs claimed the relief of injunction on the ground of passing off. On 7.1.1991 the plaintiffs filed IA. 210/91 for amendment of the plaint claiming the relief of infringement of trade mark on the ground that the trade mark claimed by the plaintiffs have been registered by the Registrar under the Trade Marks Act, 1958 and, therefore, they are entitled to the injunction on the ground of infringement of trade mark also. The following are the reliefs claimed in the amended plaint:

(aa) An order for permanent injunction restraining the defendants, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in automobile coolants under the trade mark SUN CRUISER 2001 or any other mark as is identical to or deceptively similar with the plaintiffs trade mark GOLDEN CRUISER 1200 or from doing any other thing amounting to infringement of registered Trade Mark No. 455304 of the plaintiffs.

(a) An order for permanent injunction restraining the defendants, their officers, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in automobile coolant and brake and clutch fluids or any other cognate or allied goods under the trade mark or trade name SUN CRUISER 2001 or any other mark or name as is identical to or deceptively similar with the plaintiffs trade mark GOLDEN CRUISER 1200 or from doing any other thing as is likely to leading to passing off of the defendants goods or business as the goods and business of the plaintiffs.

(b) An order for rendition of accounts of profits illegally earned by the defendants and a decree be passed in the amount so ascertained.

(c) An order for delivery up of all infringing materials including unused containers, blocks, dies, etc. for purposes of destruction and/or erasure.

(d) An order for costs in the proceedings.

3. After the amendment of the plaint the plaintiffs filed IA 8594/91 for injunction on the basis of the averments in the amended plaint. The case of the plaintiffs tersely stated is this:

The first plaintiff Sunstar Lubricants Limited is registered under the Indian Companies Act having its registered office at Suite 2, 10, Hailey Road, New Delhi. The second defendant Livingpoint Sales Pvt. Ltd. is a Company having its registered Office at 203, Defence Colony Flyover Market, New Delhi. Plaintiff No. 2 commenced business of manufacturing and selling of automobile coolants since May 1986 under the trade mark GOLDEN CRUISER 1200. The word Cruiser means a worship of high speed and medium armament and it was chosen by the second plaintiff being a fancy trade mark in relation to automobile coolants. By deed of assignment dated 25.8.1989 the second plaintiff transferred the right, title and interest in the trade mark to plaintiff No. 1. The trade mark was registered under Registration No. 455304. Though the Registrar of Trade Marks issued a Certificate of Registration on the 15th day of November, 1990, the plaintiffs do not say in the amended plaint the date on which the Registrar issued the order. Perhaps the attempt was from reading of the plaint one should get the impression that even before the date of plaint the reader should get the impression that it was registered. The mark GOLDEN CRUISER 1200 has been extensively advertised and a lot of money has been spent by the plaintiffs. Another point to be noted is, there has been a disclaimer to the following effects before the Registrar:

Registration of this Trade Mark shall give no right to the exclusive use of the numeral 200.

This disclaimer is also not mentioned in the plaint.

4. The defendants had commenced to manufacture and the sale of automobile coolants under the trade mark SUN CRUISER 2001. The numeral 2001 is a jumble of the numeral 1200 used by the plaintiffs. The use of the word Sun instead of Golden does not alter the impression since Sun is a part of the plaintiff No. 1s name and Sun and Golden signify similar meaning. Sun rays are referred to as golden. The SUN CRUISER 2001 has the effect of creating tremendous confusion and deception in the mark. The trade mark SUN CRUISER 2001 which is deceptively similar to GOLDEN CRUISER 1200 is violative of the statutory rights of the plaintiffs and amounts to infringement of the trade mark. Further, the mark SUN CRUISER 2001 amounts to a misrepresentation in the course of trade and the use of the trade mark by the defendants would create confusion and deception resulting in passing off. The defendants have mala fide and dishonest intention to create confusion.

5. The defendants in the written statement, filed after the amendment of the plaint, have stated that they have got a particular reason to have the name Sun and there is no dishonest intention. They have also added Super to that name to give an impression that their product is better than the rest. The trade mark SUPER SUN CRUISER 2001 does not resemble GOLDEN CRUISER 1200. The defendants have been making very good business and out of shear jealousy the plaintiffs have come forward with this suit. There are other coolants in the market under the name of CAR CRUISER 2100, GOLDEN CROWN 1200, AUTO CRUISER 1800, SILVER CRUISER 5000, CAR CRUISER AND DISMOND CRUISER, etc. The defendants also point out that the word Golden is not unique qua the product automobile coolant. There are other trade names Golden Scissor 2100, Golden Crown 1200. The defendants have different style of packing, different get up, colour combination and distinct logo and they have also mentioned that the coolant is processed by Sun Cruiser Lubricants Ltd. The defendants have also spent a lot of money for advertising in national newspapers, regional newspapers, leading magazines like India Today, Auto Bharati, Auto Spark, Bombay and Project, etc. apart from advertisement in Nestrak Video Cassette, in one or two films, on National Network before the programme TIPU SULTAN and broadcast on Delhi Station of All India Radio. The plaintiffs were well aware of the business of the defendants and in spite of it they were keeping quiet for some time and all of a sudden they have filed this suit. The products of the defendants have been approved by Apex Defence Laboratory. The name Super Sun Cruiser has been derived from the corporate name of the defendant-Company Sun Cruiser Lubricants Ltd. as registered with the Registrar of Companies, Delhi and Haryana. The other allegations in the plaint are denied and I do not want to advert to them at this stage.

6. The plaintiffs have filed the following documents:

1. Photo copy of deed of assignment dated 25th August, 1989.

2. Statement of sales of plaintiffs goods with effect from 1986.

3. Sales expenses of the plaintiffs with effect from 1986.

4. Photo copies of excise gate passes pertaining to sale of plaintiffs goods for 1987-90.

5. Photo copies of invoices issued by the plaintiffs to various parties with effect from 1986.

6. Photo copies of orders received by the plaintiffs from various parties for the period 1986-90.

7. Photo copies of advertisements issued by the plaintiffs in various newspapers and magazines with effect from 1987.

8. Article pertaining to plaintiffs in Business Times dated 24th June, 1990.

9. Letter dated 22nd July, 1990 from Hotel Sixer to plaintiff No. 1.

10. Letter dated 15th June, 1990 addressed by K. Lalnghakaliana to plaintiff

No. 1.

11. Photo copies of advertisements of the defendants appearing in VIGYAN dated June 1990 and INDIA TODAY dated 31.7.1990.

12. GOLDEN CRUISER 1200 container of the plaintiffs (in box)

13. SUN CRUISER 2001 container of defendants (in box).

Along with the amendment of the plaint the Certificate of Registration, as mentioned above, was filed.

7. The defendants have filed the following documents to show that advertisement, their business from 1989:

1. dated 1.6.1989 Photo copy of declaration form under Excise Rule.

2. dated 10.8.1989 photo copy of advertisement in T.O.I.

3. dated 10.8.1989 photo copy of advertisement in Sandhya Times.

4. dated 10.8.1989 photo copy of advertisement in Economic Times.

5. dated 10.8.1989 photo copy of advertisement in Mid-Day.

6. dated 21.8.1989 photo copy of advertisement in Herald.

7. dated 21.8.1989 photo copy of advertisement in Assam Tribunal.

8. dated 21.8.1989 photo copy of advertisement in Deccan Herald.

9. dated 21.8.1989 photo copy of advertisement in Times of India.

10. dated 22.8.1989 photo copy of advertisement in Statesman.

11. dated 22.8.1989 photo copy of advertisement in Hindu.

12. dated 24.8.1989 photo copy of advertisement in Hindustan Times.

13. dated 15.9.1989 photo copy of advertisement in Evening News.

14. dated 24.9.1989 photo copy of advertisement in Hindustan Times.

15. dated 15.10.1989 photo copy of advertisement in Amar Ujjala.

16. -do- (Bareilly)

17. -do- (Moradabad)

18. -do- (Meerut)

19. dated 25.10.1989 photo copy of advertisement in Punjab Kesari.



20. dated 31.10.89 Photo copy of Invoice of Radiospot.

21. dated 6.12.1989 photo copy of advertisement in Punjab Kesari (Delhi)

22. dated 30.12.1989 photo copy of advertisement in Hindustan Times.

23. dated 18.1.1990 photo copy of Form A.L. 4.

24. dated March 1990 photo copy of advertisement in Auto Bharati (Magazine).

25. dated 21.4.90 photo copy of invoice.

26. dated 7-20 June, 90 photo copy of Advertisement in Bombay (Magazine).

27. dated 11.6.90 photo copy of invoice.

28. dated 21.6.90 photo copy of I.O.C. letter.

29. dated 22.6.90 photo copy of invoice.

30. dated 28.6.90 photo copy of invoice.

31. dated July, 1990 photo copy of Advertisement in AUTOSPARE (Magazine).

32. dated July 1990 photo copy of Advertisement in Project (Magazine).

33. dated 6.7.1990 photo copy of invoice.

34. dated 6.7.1990 photo copy of I.O.C.s letter.

35. dated 7.7.90 photo copy of invoice.

36. dated 13.7.90 photo copy of invoice.

37. dated 14.7.90 photo copy of invoice.

38. dated 20.7.90 photo copy of Excise Licence.

39. dated 28.7.90 photo copy of Advertisement in Hindustan Times (newspaper).

40. dated 31.7.90 photo copy of invoice.

41. Coloured photographs.

At page 61 the defendants have shown the photographs where the coolant is sold in different names including that of the plaintiffs. They are at page 62 also. The photographs of the boxes of the products sold by different persons are shown as under:

GOLDEN CROWN 1200

SILVER CRUISER 5000

GOLDEN SCISSOR 2100

CAR CRUISER 2100

SUN CRUISER 2001

GOLDEN CRUISER 1200

8. The defendants have also filed an application for rectification of the Trade Mark of the plaintiff and that is pending and the defendants have also prayed for the stay of the suit under Section 111 of the Trade Marks Act, 1958.

9. Mr. Praveen Anand, Learned Counsel for the plaintiffs, submitted that the registration of the trade mark GOLDEN CRUISER 1200 gives a statutory protection to the plaintiffs under Sections 28 and 29 of the Trade Marks Act, 1958. Section 28 refers to rights conferred by registration. Section 29 speaks of how a registered trade mark is infringed. The plaintiffs trade mark is registered in Part A. He relied upon the decision of the Supreme Court in Registrar of Trade MarksvAshok Chandra Rakhit Ltd., 1955 SC 558 [LQ/SC/1955/41] about the disclaimer which I have referred to above. The Supreme Court rendered the judgment under Section 13 of the Trade Marks Act, 1940. The provisions similar to it is Section 17 of 1958 Act. He submitted that as per the decision of the Supreme Court the disclaimer would relate only to the number 1200 and for the consideration of the question of infringement the entire trade mark has to be considered. He also relied upon Section 2(d) which defines what is deceptively similar. The learned Counsel submitted that the defendants themselves admit they started the business in June 1990 and in August 1990 the plaintiffs approached this Court and, therefore, they are entitled to the relief on the ground that the trade mark of the defendants are deceptively similar to that of the plaintiffs.

10. Mr. Kapur, learned Senior Counsel for the defendants submitted that the defendants started the business in June 1989 and the trade marks are not similar and the plaintiffs cannot claim any relief in this suit. The first plaintiff claims rights and user by assignment from the second plaintiff on 25.8.1989. The trade mark was registered in the name of the second plaintiff on 13.9.1990. The defendants have made thorough search in the office of the Registrar of Trade Marks. The registration still stands in the name of the second plaintiff. The learned Senior Counsel submitted that in view of Section 44(2) of the Trade Marks Act, 1958 for the purpose of showing that the first plaintiff in order to succeed must have the change in the Register of Trade Marks before the Registrar and Section 44 imposes a bar to the first plaintiff claiming any right and admittedly second plaintiff does not claim any right of user. On 4.9.1996 an affidavit has been filed by the defendant to show that the name Cruiser cannot be an invented name by the plaintiff. On 17.2.1994 eight manufacturers have filed affidavits. The learned Senior Counsel Mr. Kapur brought to my notice an affidavit of Mr. Prince Mohan Chugh dated 4.9.1996 to show that on 4.8.1996 in Sunday Edition Times of India an advertisement was issued by the plaintiffs which read as under:

Liqui Moly Engine Oils from Germany and Golden Crusier from Japan are manufactured in India by Sunstar Lubricants Ltd.

There is also an advertisement filed along with the affidavit also shows that Liqui Moly Engine Oils from Germany and Golden Cruiser Coolant from Japan are manufactured in India by Sunstar Lubricants Limited. This is only to contradict the case of the plaintiff that the word GOLDEN CRUISER was chosen by them by chance for the first time.

11. The learned Senior Counsel also submitted that as stated in the written statement there are so many persons carrying on the same name with reference to the same product and the plaintiffs cannot claim any right on the basis of the registration and there is no deceptively similarity at all.

12. Section 2(d) of the Trade Marks Act, 1958 defines deceptively similarity to mean a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

13. Section 28 of the Trade Marks Act, 1958 speaks of the rights that flow from the Registration of Trade Mark in Part A or Part B. Section 29 speaks of the infringement by a person who uses in the course of a trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

14. Mr. Praveen Anand in reply to the arguments of Mr. Kapur relied upon the decision of this Court in Century Traders v.Roshan Lal Duggar & Co. and Others, 15 (1979) DLT 269 [LQ/DelHC/1977/59] =AIR 1978 Delhi 250 in paragraphs 9, 10, 14 and 20 that the defence raised by the defendants is no defence at all; that word Cruiser is an essential part of the trade mark and if that essential part is used by any person it would amount to infringement.

15. Having regard to the words which are now used as trade mark, I do not at all agree with Mr. Praveen Anand that the trade mark Super Sun Cruiser 2001 is deceptively similar to Golden Cruiser 1200.1 need not dwell at length on the case law to come to the conclusion because I am very clear in mind that these two trade marks are phonetically different and the getup, the colour scheme of the boxes are entirely different. Therefore, there is no question of any infringement and no question of passing off also arises. The plaintiffs have not established, prima facie, strong case for the grant of injunction. Therefore, the application IA 8594 791 under Order 39 Rules 1 and 2, CPC is dismissed. There shall be no order as to costs.

I.A. 10144/93

Post the matter on the April 10,1997.