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M/s. J.S. Passi Agro Engineering Industr v. M/s. Passi Mechanical Works - FAO-1733-2005  RD-P&H 9623 (31 October 2006)
FAO No. 1733 of 2005
Date of decision : 2.11.2006.
M/s. J.S. Passi Agro Engineering Industries and another
M/s. Passi Mechanical Works
Coram: Hon'ble Mr. Justice S.N. Aggarwal Present: Sh. Amar Vivek, Advocate
for the appellants.
Sh. Piyush Kant Jain, Advocate assisted
by Sh. Amit Rawal, Advocate for the respondents.
S.N. Aggarwal, J.
The respondent-firm M/s. Passi Mechanical Works is a partnership firm registered in 1981. It is running the business of manufacturing and marketing of hand tools, horticultural tools, forestry tools, garden tools, agricultural tools and implements, lawn movers and parts and fittings thereof, hardware goods. They are using the trade mark PASSI since 1962 which was duly registered at Sr.No. 357195 in January 1980. The said trade mark PASSI was advertised in Trade Marks Journal No.849. It was got renewed from time to time and now it is valid upto January 7, 2008. The trade name is M/s. Passi Mechanical Works, Phullanwal, Passi Nagar, Pakhowal Raod, Ludhiana.
The respondents filed the civil suit in the learned trial Court in March 2004 for restraining the appellants from manufacturing, selling and/or offering for sales hand tools, horticultural tools, forestry tools, agricultural tools, garden tools, lawn movers, parts and fittings thereof, agricultural implements, hardware goods under the trade mark J.S. PASSI and/or from using the trade name M/s. J.S.
Passi Agro Engg. Industries. Injunction was also sought against the servants, agents, dealers, stockiest, representatives and all other persons acting for and on behalf of the appellants, from selling and/or offering for sale all these implements under the trade mark J.S.
PASSI and/or from using the trade name M/s. J.S. Passi Agro Engg. Industries.
The facts pleaded were that the respondents became aware of the use of the offending trade mark J.S. PASSI by the appellants for the first time in January 2004 when the appellants' application No.
1166771 B for registration of the offending trade mark J.S. PASSI was advertised in the Trade Marks Journal. On this, the respondents had served a legal notice dated 19.1.2004 upon the appellants through their counsel but to no effect. Thereafter, the respondents filed the civil suit as stated above.
The plea taken was that the trade mark PASSI is the registered trade mark of the respondents, which was highly well known and distinctive trade mark of the respondents and is distinctive in relation to the goods and business of the respondents. The business and goodwill of the respondents is dependent on the trade mark and trade name PASSI. By using the word PASSI by suffixing the words J.S., the appellants are misleading the general public to take it as the product of the respondents as the trade mark and trade name used by the appellants is highly deceptive. The case of the respondents also is that the respondents sell its manufactured goods in the packing/boxes having a specific trade dress, colour combination, layout plan, arrangement of features for which also they have a copy right. The appellants have copied the said trade dress with all its characteristics on the packing/boxes and thereby have infringed the copyrights of the respondents.
On the other hand, the version of the appellants was that the parties are closely related to each other and their business premises are also in the same locality, rather in the same street. The appellants are the manufacturers of lawn movers, thrashers, combine, their parts, power tools, cutters, hand tools, horticultural, forestry tools, garden tools and agricultural tools etc. under the trade mark and trade name J.S. Passi Agro Engg. Industries since 1998. No objection was ever raised by the respondents about the manufacturing of those goods, as well as, about the trade mark or trade name adopted by the appellants.
It was denied if the trade mark or trade name of the appellants was identical or deceptively similar to the trade mark and trade name being used by the respondents.
It was also pleaded that Jaswinder Singh Passi-appellant is the proprietor of the firm M/s. J.S. Passi Agro Engg. Industries and he has used the trade mark and trade name by the initial words of his name, while his surname PASSI is his sub caste. The two trade marks/trade names used by the appellants and those used by the respondents are entirely different.
Rather, allegations were made against the respondents that because of the increasing popularity of the appellants and of their product, the respondents have taken this step to throttle the business of the appellants. Neither there is any infringement nor there is passing off goods by the appellants in the trade mark or trade name of the respondents. Even the trade mark and trade name of the appellants have become distinctive and it causes no confusion among the general public. The appellants have obtained the ISI certification as prescribed and required under the law. The appellants are the inventor, introducer and continuous user of the trade mark and trade name J.S. Passi Agro Engg. Industries. It was denied if the appellants have violated any provision of the Copyright Act, 1957 or of the Trade Marks Act, 1999.
The appellants denied if the respondents came to know about the trade mark or trade name of the appellants for the first time in January 2004 because the appellants had furnished the surety bond before the sales tax authorities in January 1998, for and on behalf of the appellants. This surety bond clearly indicates that the trade mark/trade name of the appellants was M/s. J.S. Passi Agro Engg.
Industries and Sarbag Singh, partner of the respondent-firm had stood surety for him. Therefore, the respondents were aware about the use of this trade name/trade mark by the appellants. Hence, it was prayed that the suit be dismissed.
Alongwith the said civil suit, the respondents had also filed an application under Order 39 Rules 1 and 2 read with Section 151 CPC for restraining the appellants from using this trade mark/trade name during the pendency of the civil suit. This application was opposed by the appellants. However, the learned trial Court vide impugned order dated 2.3.2005 restrained the appellants from manufacturing, selling or causing to be sold, advertising or offering for sale under the trade mark/trade name J.S. PASSI or any other trade mark identical with or deceptively similar to the respondents' trade mark PASSI, with or without any suffix or prefix to pass off.
Hence, the present appeal.
The submission of the learned counsel for the appellants was that they are using the trade mark/trade name J.S. Passi Agro Engg.
Industries since 1998. The respondents were aware, as one of the partners of the respondent-firm had executed the surety bond (Annexure P-2) for and on behalf of the appellants in the sales tax office and in the surety bond, the trade mark/trade name of the appellants was clearly indicated as J.S. Passi Agro Engg.
Industries. Both the parties are closely related to each other and for that reason the partner of the respondent-firm had stood surety for the appellants in 1998. Therefore, it amounts to consent of the respondents for the said trade mark/trade name, being used by the appellants.
It was further submitted that the appellants are running their business since 1998. The business premises of both the parties are also very closely located and are in the same street. Therefore, it cannot be believed prima facie if the respondents had come to know about the user of trade mark/trade name by the appellants as J.S.
PASSI and J.S. Passi Agro Engg. Industries for the first time in January 2004 as alleged by the respondent-firm.
Even the photographs placed on the file by the appellants clearly revealed that the appellants have installed a big board in front side of their business premises/workshop as J.S. PASSI. It is specifically written lawn movers and garden tools. The board on the nearby workshop is of the respondents with the trade name PASSI. They have also got written on the board, their business in garden tools and lawn movers. From this photograph (Annexure P-1), it cannot be believed if the respondents had come to know of it for the first time, in January 2004 as both of them have installed big boards in front of their workshops clearly indicating the trade name/trade mark being used by them and the kind of business being run by them.
The appellants have also placed on the file a number of documents to show that they are using this trade mark/trade name at every place, in their bills, advertisement notices etc. Annexure P-1 ( colly ) also reveals that even the logo used by the appellants is distinctly different. There is nothing which may make deceptive with the logo of the respondents prima facie. The words 'Ekam Onkar' is mentioned in the logo of the appellants, but this word is not there in the logo of the respondents. The logo of the appellants is round in shape, while logo of the respondents is of square shape. The appellants have specifically mentioned J.S. Passi Agro Engg.
Industries, while the respondents have specifically mentioned in the logo as Passi Mechanical Works (Regd.).
There was some similarity in the packing/boxes prepared by the two parties in the colour of the packing and its design scheme was also almost the same. But after the respondents filed the civil suit, the appellants have changed the colour scheme and the writings of the packing/boxes/packages used by the appellants. The learned counsel for the appellants has also undertaken that the appellants would now continue using the newly designed packages/boxes which have nothing in common with the packages/boxes used by the respondents. No doubt the word PASSI is common in both the packing/boxes used by the parties but the appellants are using J.S.
PASSI with full trade name. Therefore, even the similarity which to some extent existed in the packages/boxes earlier, is no longer there.
Learned counsel for the parties have made reference to a number of judgments each. But the facts of each case are different. In any case, the judgments may be necessary at the time of passing the final judgment in this case. So far as the application for interim stay is concerned, the facts itself are sufficient to dispose of the same.
Moreover, if those judgments are discussed in this order, it is likely to influence the mind of the learned trial Court, who is yet to decide the main suit. However, this Court has analysed those judgments but the facts of each case are different. For example, it may be stated that the learned counsel for the respondents made reference to the judgment of the Hon'ble Supreme Court reported as Power Control Appliances and others vs. Sumeet Machines Pvt. Limited and others (1995- PTC-165) and it was submitted that even in this reported case, the defendants (of that case) had started manufacturing/marketing the mixies under the trade name SUMEET with the knowledge and consent of the plaintiffs (of that case) openly and concurrently and the plaintiffs (of that case) had also given personal guarantees in the State Bank of Hyderabad on behalf of the defendants (of that case), but still the Hon'ble Supreme Court was pleased to hold that since the respondents were using the name SUMEET, it was the trade mark/trade name of the plaintiffs (of that case), and the defendants (of that case) were violating the provisions of Trade Marks Act/Copyrights Act.
Even in this case the facts were different which make it inapplicable to this case. It is clear from the following observation made by the Hon'ble Supreme Court in para 18 :- " On the contrary the evidence in this case discloses that the first defendant was only marketing (but never manufacturing) from 1986. Therefore, merely because he was marketing, that cannot amount to honest and concurrent user. It was only in September-October, 1991 he started infringing the trade mark, copyright and the design. Therefore, when the suit came to be filed immediately, no question of acquiescence would ever arise. It is only on 28th
of October, 1991 the first defendant
invited applications for distribution."
But in the present case, the appellants had started manufacturing and selling since 1998 when one of the partners of the respondent-firm had executed the surety bond for and on behalf of the appellants and in the surety bond the trade mark and trade name of the appellants was clearly stated. Therefore, on the basis of this judgment of the Hon'ble Supreme Court, it cannot be held prima facie if the execution of surety bond by the partner of the respondent- firm, for and on behalf of the appellants, did not amount to consent.
In the facts of the present case, knowledge and consent of the respondents can be attributed to them for the user of the aforesaid trade mark or trade name indicated in the surety bond by the appellants. Moreover the appellants are using this trade mark/trade name in the same street, in the same locality and since 1998. The filing of the civil suit by the respondents in the year 2004 i.e. after the expiry of more than five years, prima facie, is a circumstance which is favourable to the appellants.
The last submission of the learned counsel for the respondents was that the learned trial Court has exercised its judicial discretion while passing the order of interim stay and therefore, the said judicial discretion should not be disturbed or tampered with even if this Court holds different opinion about the merits of the application for interim stay. Such an order passed by the learned trial Court could be disturbed only if this Court comes to the conclusion that the order passed is perverse.
That may be so. But the order on the face of it leads to miscarriage of justice. The appellants were running their business in the trade mark/trade name J.S. Passi Agro Engg. Industries since 1998 to the knowledge of the respondents. It was only in the year 2004 that the respondents thought of filing the civil suit for injunction against them. If they could permit the appellants to use the said trade mark/trade name for more than 5 years, nothing is going to happen in the period till the suit is decided. It appears to be highly unjustifiable to restrain the appellant-firm from running its business under the trade mark/trade name which the said appellants were using for the last 6 years. Whatever fault there was in the packing/boxes, that has been removed by the appellants. Therefore, for these reasons, the respondents have no prima facie case, nor the balance of convenience is in their favour. Rather the principles of equity also do not help the respondents. Therefore, the impugned order dated 2.3.2005 may not be termed as perverse but it is certainly nearing its borders and it leads to miscarriage of justice.
In view of the discussion held above, this appeal is accepted.
The impugned order dated 2.3.2005 is set aside.
However, nothing said in this order shall affect the merits of the case.
The learned trial court is directed to expedite the disposal of this civil suit.
( S.N.Aggarwal )
November 2, 2006.
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