First Computers (Formerly) known as 'Brilliant's Computer Centre vs A. Guruprasad

S.S. Subramani, J.—The respondent in O.A. No. 151 of 1995 in C.S. No. 253 of 1995, is the appellant.

The suit was filed by the respondent herein for permanent injunction restraining the appellant by the themselves, their servants, agents or any one

claiming through them from using the trade name/business name ""First Computers""/""1st Computers"" or using the word ""First/1st for conducting any

business relating to computers and pass-off their business, as the business of the plaintiff and for a direction to the defendant (appellant) to render a

true and faithful account of all the profits made by them by the use of the business name/trade name ""First Computers"" or the expression ""First"" in

relation to its computer business and direct the defendant to pay over to the plaintiff the proceeds that may be found due on taking of such

accounts, and for other consequential reliefs.

Along with the suit, the plaintiff filed the above original application. The relief sought in the original application is the same as the first relief in the

suit.

The material averments that are alleged in the plaint are, that the plaintiff started the business of trading in computers in the name and style of

First Computers"". He obtained certificate of Registration in his business name under Rule 24 of Tamil Nadu General Sales Tax Rules from the

Commercial Tax Officer, Madras. A similar Certificate has been obtained for the business of computers in the name of ""First Computers"" under

the Central Sales Tax (Registration and Turnover) Rules, 1957. It is also averred that for the purpose of importing computers, the plaintiff has

obtained an Importer and Exporter Code from the Officer of the Joint Director General of Foreign Trade, Madras and Reserve Bank of India

Exchange Control Department, Madras. It is also stated that he was assessed to Income Tax in the name of Guruprasad, as Sole Proprietor of

First Computers"". He has also given some details of the turnover since 1989. It is also stated that for income tax purposes, he has to obtain

annually an Auditor''s report with respond to his business and the Report is also obtained in the name of ""First Computers"". He has also accounts

with Union of India. There also, the expression ""First Computers"" is used as plaintiff business name. It is stated that the name and style of ""First

Computers"" is given to the defendant. In September 1994, the defendant desired the plaintiff to undertake annual maintenance of the Computers in

all their Computer Centres, and the plaintiff''s engineer had personal discussion with one R. Ramesh, Regional Manager of Messrs. Brilliant''s

Computer Centre, the name by which the defendant was previously known. It is stated that since most of the computer equipments used by the

defendant were found to be obsolete, the plaintiff expressed his inability to undertake comprehensive annual maintenance of the computers of the

defendant. It is stated that at the time the appellant''s Regional Manager R. Ramesh had handed over his visiting card, which is filed as one of the

exhibits. It is alleged that in July 1994, the appellant, through one of its managers, Mr. Balasundaram, placed orders, for certain computer

equipment with the plaintiff. The goods were, however, returned as they did not satisfy the requirement of the defendant (appellant). The plaintiff

has been selling and servicing computers not only in the City of Madras but also all over South India. A list of 54 leading customers of the plaintiff

has also been appended to the plaint. The plaintiff further avers that in December 1991, he wrote to the Registrar of Companies, Madras, for

approval of the name ""First Computers"" to float a company ""First Computers Pvt. Ltd."" The object of the proposed company was for dealing in

computers and maintenance of computers and system designs. Necessary fee was paid for search of conflicing names. The Register of Companies,

by letter dated 19.12.1991, after search of their list, found that there was no conflicting name and wrote to the plaintiff that the name ""First

Computers Pvt. Ltd."" was available for registration. It is further stated that the name and style of ""First Computers"" has acquired much reportation.

It is the expression of the plaintiffs identify in the business.

Thereafter, the plaintiff (respondent) has detailed the circumstances under which he was compelled to file the suit. It is stated therein that an

advertisement appeared in ""The Hindu"" daily dated 25.1.1995, at the instance of the defendant, stating the business of the ""Brilliant''s Computer

Centres"" will be known hereafter as ""First Computers"" and that the new business offers four courses in computers training, name of first Job, First

Accountant, First Officer and Fist Step. It was further averred by the respondent that it was found by him that the predecessor or the ""First

Computers"" namely ""Brilliant''s Computer Centre"" has a vast network of branches not only in different part of the Madras City but also in urban

centres, the details of which are given in the plaint. It is stated that in all the advertisements made by the appellant (defendant), it is described as

Formerly Brilliant''s Computer Centre"". It is stated that the conduct of the defendant despite having an established name of their own in

highjacking the business name of the plaintiff amounts to a classic case of passing-off, liable to be stopped by an order of injunction. It is stated that

even if the defendant had any valid reason to discard their name, they have no justification to appropriate the name of ""First Computers"" used by

the plaintiff since 1989. It is further stated that the business of the plaintiff is trading in computers. He is not a manufacturer but sells already

manufactured computers. The defendant is neither a manufacturer, nor a seller of computers. Their job is training people in the use of computers.

The plaintiff concedes that in view of the difference in their business, the concept of the Trade Mark and the application of Trade and Merchandise

Marks Act, 1958 is totally irrelevant. It is further stated that the crucial and distinctive component of the plaintiff''s name is the use of the exprssion

First"" along with ""Computers"". The word ""Computer"" and the word ""First"" are each by themselves the common property of all. But the

combination of the two words as ""First Computers"" has served the purpose of identifying and distinguishing the plaintiff''s business in computers.

This mark of distinctiveness, according to the plaintiff, has now been filched by the defendant by describing their as ""First Computers"" and using the

word ""First"" to describe the different computer courses run by them. using the word ""First"" to describe the different computer courses run by them.

It is stated that the plaintiff has built up his entire business goodwill with the name ""First"" Computers"", and misappropriating of the business name by

the defendant and the use of the word ""First"" to describe the different Computer Courses amounts to a clear case of deliberate ""passing-off"".

In the above circumstances, it is alleged by the plaintiff that he is entitled to file a suit for permanent injunction to restrain the defendant (appellant

herein) from using the trade name/business name ""First Computers"" or using the word ""First"" for conducting any business relating to Computers

and passing off their Business as the business of the plaintiff.

A detailed counter affidavit was filed on behalf of the appellant. It is stated therein that the Brilliant''s Computers Centre, which is the original

name of the appellant, was carrying on the business of computers education and training. In or about August 1994, the defendant decided to

change its business name to ""First Computers"". The defendant had started a computer course called First Job, First Accountant and First Officer.

In view of the names decided for the several courses, it was logical to decide the business name, ""First Computers"". It is further stated, that before

launching the business name, ""First Computers"", the defendant carried out a search in the office of the Registrar of Companies, Madras which

failed to reveal any company incorporated under the name and style First Computers'' Ltd. or Pvt. Ltd. The defendant has obtained from the

Registrar of Companies a name availability certificate certifying that the defendant could be incorporated under the name and style First Computers

Private Limited. The defendant carried out a search in the Registrar of Firms, and even there, failed to come across any partnership firm registered

under the name and style ""First Computers"". The defendant also carried out a search in the office of the Registrar of Trade Marks, Madras, and

even there he failed to come across any trade mark registered or applied for bearing the words ""First Computers"" in Class 9 or Class 16. The

defendant, therefore, applied for registration of Trade Mark Label ""First Computers"" 1st C Logo'' under No. 651110. On 9.1.1995, the

defendant made a presentation at Madras to its Franchises in Southern India regarding launching of training course under the label First Computers

1st C Logo. All 54 representatives of the Franchisees of the defendant welcomed the change. On 10-1-1995, the defendant made a second

presentation at New Delhi to all its Franchises in Northern India regarding launching of training courses under the label First Computers 1st C

Logo. All the 45 representatives of the Franchises of the defendant welcomed the change. On 25.1.1995, the defendant commercially launched

computer training under the name ""First Computers 1st C Logo''. The same was advertised though leading dailies in major cities all over India

including inter alia, ''The Hindu'', ''Deccan Herold'', ''Hindustan Times'', ''Tribune'', ''Statesman'', ''Telegraph'', ''Pioneer'', ''Enadu'', ''Malayala

Manorama'', ''Gujarat Samachar'' etc. He also made an application on 5.1.1995 in Class 16 in respect of printed publication, pamphlets, news

letters, magazines, stationery, office equipments (other than furniture), instructional and teaching materials, all being goods included in Class 16, of

the Trade Marks Rules for getting it registered. It is also avarred that the appellant carefully persued the telephone directories of Madras, New

Delhi, Bombay, Calcutta, Hyderabad, Ahmedabad and Bangalore, but did not come across any name called ""First Computers"". The plaintiff''s

name, according to the defendant, is not listed in Madras Telephone Directory or in the other telephone directories of metro cities in India. It is

stated that the ""First Computers 1st C Logo'' was created by the appellant''s intellectual skill. The appellant has also spent huge amounts for

printing brochures, pamphlets and other promotional materials. According to the appellant, it has spent approximately Rs. 40 lakhs on

advertisements in newspapers and magazines so far, and around Rs. 20 lakhs towards banners, hoardings, kiosks, road-median, etc. The

defendant has also incurred around Rs. 1,50,000/- towards creative fees to be paid to their advertising agency for the work done towards

campaign. On 25.1.1995, the defendant''s computer training centres all over India had the new glow-sign name board ""First Computers 1st C

Logo"". The defendant and their Franchises have spent approximately Rs. 10 lakhs in putting up the said new boards all over India. It is further

stated that the defendant has approximately 90 Franchisees all over India who impart computer training in computer software, computer operations

and computer applications. The defendant has five directly operated centres in the metropolitan cities, namely, Delhi, Bangalore, Calcutta and

Madras bearing the name ""First Computers 1st C Logo''. Approximately 12,000 students have been enrolled with the defendant and the

Franchisees of the defendant for training in computer software, computer operations and computer applications under the name ""First Computers

1st C Logo''. There are about 250 teachers and staff employee directly by the defendant for training in computer software, computer, operations

and computer applications under the name First Computers 1st C Logo. In addition, the defendant''s Franchisees all over India have employed

approximately 600 teachers and staff for training in computer software, computer operations and computer applications under the name First

Computers 1st C Logo. The defendant does not manufacture, sell or deal in computers, printers, other hardware or servicing and maintenance of

computers. The defendant''s coustomers are knowledgeable and discerning persons who are aware of the field of activity the defendant is involved

in under the name First Computers 1st C Logo. It is stated that the defendant is the proprietor of the copyright in artistic work label First

Computer''s 1st C Logo. The said artistic work was created by the defendant in September 1994 in the course of employment. The defendant''s

said artistic work was first published in India in January 1995 and has since then been continuously published all over India. It is further stated that

in the filed of computer, spares and peripherals manufacturing activity, the manufacturers normally do not conduct computer education courses for

students or public at large. In India, leading computer manufacturers such as HCL-HP Limited, Modi Business Machiness Limited and PCL do

not conduct computer education courses for students or public at large nor do leading computer training organisations like NIIT and Aptech sell

computer hardware and peripherals. In the circumstances, the chances of confusion between the plaintiff, an alleged trader in computers

manufactured by others, and the defendant, a company involved in conducting computer education courses for students and public at large, are

very remote. It is stated that the filed of activity of the appellant in computer education is completely different from that of the plaintiff who is

dealing with the sale and maintenance of computers, manufactured by others. It is also stated that the plaintiff has no goodwill or reputation. The

appellant has honestly and bonafidely accepted the name First Computers 1st C Logo without any reference or knowlege of the plaintiff''s alleged

business activities. There was no means by which the defendant could become aware of the plaintiff''s business activities. The plaintiff''s address

given in the plaint does not bear the name board ""First Computers"" It is also stated that the plaintiff is guilty of inordinate delay which has not been

explained, for he must have been aware of the defendant''s plan to launch computer training courses under the name First Computers 1st C Logo

since September 1994. It is also stated that the plaintiff was well aware of the defendant''s plans and initiatives to use the name and style First

Computer 1st C Logo much prior to 25th January, 1995. According to the defendant, the plaintiff has suppressed the material fact from the court.

It is also stated that the plaintiff was aware of the defendant''s application bearing No. 651110 dated 5-1-1995 for registration of trade mark First

Computers 1st C Logo. It is further contended by the defendant that the plaintiff is not manufacturing or selling computers under the name ''First

Computers''. The defendant, on the other hand, has spent approximately Rs. 75 lakhs in launching the name ''First Computers 1st C Logo''. The

plaintiff has no prima facie case. The plaintiff has not registered the name ''First Computers'' before any statutory authority wherefrom such

registration would be knowledgeable to the public at large. The plaintiff has not advertised the name ''First Computers''. The plaintiff is not selling

any product under the Trade Mark ''First Computers''. The plaintiff is not manufacturing and selling computers under the Trade Mark ''First

Computers''. The plaintiff has no all India sales network.

Regarding the documents produced by the plaintiff, it is stated that these documents are not available for public inspection. The trade and public

who deal in computers are knowledgeable, educated persons who would not confuse a sole proprietorship firm selling computers or spares

manufactured by others, with the defendant company which is involved in teaching students. In view of the trading channels, class of customers

involved in the plaintiff''s field of activity and the defendant''s field of activity being different, there would not be any confusion and deception

caused amongst the trade and public. The colour scheme, lettering style, layout and get up adopted and used by the defendant is completely

different from the name ''First Computers'' used by the plaintiff. The turnover mentioned by the plaintiff does not relate to manufacture and sale of

any product bearing the trade mark ''First Computers''. The turnover mentioned by the plaintiff is misleading. It is also stated that the appellant

never had any business transaction with the plaintiff. The visiting card of an executive employed by the defendant does not prove that the defendant

had any business transaction with the plaintiff. There are more than 850 employees and it is not possible to track the persons that each employee of

the defendant meets, not is it possible to keep track of the purposes of any such meetings. The allegation in the plaint that the appellant''s executive

met the plaintiff for certain computer equipment is also denied. The defendant/appellant has adopted the name First Computers 1st C. Logo bona

fide without any reference to the plaintiff''s business. The defendant has also carried out all necessary searches. It is also stated that the plaintiff has

not advertised the trade mark ''First Computer''. It is stated that the appellant had never passed off its educational courses as that of the plaintiff''s

trading business. The defendant (appellant) undertakes that, without prejudice to the contentions already taken, it will not carry on the business of

manufacturing, selling, trading in computers. printers, spares, peripherals, hardware, and computer servicing and maintenance under the name and

style ''First Computers''.

Ad-interim injunction was granted. The appellant filed Application No. 1147 of 1995 to vacate the order of injunction. O.A. No. 152 of 1995

filed by the respondent and Application No. 1146 of 1995 filed by the appellant were heard together, and the learned single Judge, by the

impugned order, confirmed the earlier order of injunction.

While confirming the Order, the learned Judge also took the view that the change of name from ""Brilliant''s Computer Centre'' to ''First

Computers'' will not create a confusion in the mind of the public between the two different businesses, one conducted by the plaintiff and the other

by the defendant. But in spite of the same, learned Judge held that the trader who is dealing in sale of articles of quality under a trade name is

entitled to protect the trade and business name being encroached upon and damaged by any other trader. The learned Judge further held that the

name ''First Computers'' adopted by the defendant is likely to cause confusion in the minds of the general public in such a way that there is

likelihood of their mistaking the course conducted by the appellant as that of the respondent and the business carried on by the respondent as that

of the appellant, and when there is such a likelihood, the respondent herein who has been using the name ''First Computer'' as his trade name from

1983, is entitled to have the same protected from the onslaught of the appellant by getting an order of injunction in his favour.

The said order of the learned Judge is challenged by the defendant, appellant herein, on various grounds before us.

Before considering the factual basis of attack against the order of the learned single Judge, let us consider the legal principles involved in the

grant of injunction.

In The Asiatic Government Society Life Assurance Company, Limited Vs. The New Asiatic Life Insurance Company, Limited, , a learned

Judge of this court considered the circumstances under which an injunction can be granted. The learned Judge held thus :

....... In suit by one company for injunction restraining another company from carrying on business under similar name it is not sufficient to show

that there is a similarity of names but it must also be shown that there is a reasonable probability that the use of the name would result in the

defendant''s appropriating the material advantage of the plaintiff''s business and before the court will grant an injunction, a very high standard of

affirmative proof is required to establish the plaintiff''s case or that the similarity of the names is of itself sufficient.

The learned Judge also followed the decision of Lawrance, J. as he then was) in Society of Motor Manufacturers and Traders v. Motor

Manufacturers'' etc. Insurance Co. 1925 1 Ch. 675, where it was held thus :

It is important to bear in mind first, that this is not a case of fraud; secondly that the business of the defendant company is altogether different from

and in no way competes with the business of plaintiff society; and thirdly, that the name of the plaintiff society is descriptive and consists entirely of

words in ordinary use in the English languages.

The learned Judge also stated that in the absence of fraud or dishonestly, the defendant can not be restrained from the use of their own name if it

involved no misstatement of fact. The learned Judge also held that without proof that the similar names have misled the public, no injunction can be

granted. An attempt to deceive the public is a material fact to be considered.

In Teju Singh Vs. Shanta Devi, , a similar question came for consideration. There the competing names were ''One day Electric Drycleaners''

and only 1 day Electric Dry-cleanears. Their Lordships were considering the question whether the names are only of a descriptive nature and not

distinctive, and how far the plaintiff has proved the ingredients for the grant of injunction. That was also a case where the plaintiff therein did not

register her name or design under the Trade-Marks Act. Their Lordships held thus :

........... When the plaintiff brought the suit ""it was only a common law action for ""passing off"" the plaintiff''s business name. The scope of an action

for passing off goods is now too well settled to require elaborate citation of authorities. It is remedy against a false representation tending to

deceive customers into believing that the goods which the defendant is selling are really the plaintiff''s the false presentation made by the statements

or by conduct, i.e., by adopting the distinctive mark, name, number, design, get-up or appearance of another''s goods. The plaintiff may prove

either an intent to deceive or an actual damage and it is enough if he shows that the conduct of the defendant was calculated or likely to deceive or

mislead public. On proof these facts the plaintiff would be entitled to an injunction or damages. Thus, onus is on the plaintiff to show that his goods

acquired a reputation among the public by some distinctive mark, name, etc. The same principles which are applied in the case of an action for

passing off"" the goods are applied where the name of a person''s business is imitated and passed off by another person as his own. It has now

been uniformly laid down as settled rule that either in the case of goods or business the plaintiff has to show that his mark has become so distinctive

that the public regard the same as belonging to a particular source. The plaintiff has to further prove that the offending mark or name is likely or

calculated to deceive and cause confusion among the public thereby injuring the plaintiff''s business. It has also been held that where a trader

adopts a trading name including mere descriptive words of common use the court will not readily assume that the use of the said word or name by

another is likely to cause confusion. In such cases it is incumbent upon the plaintiff to show that the name has acquired a secondary meaning in

connection with the goods or business so that the use of the name by another, is likely to deceive the public.

Their Lordships also made distinction as to violation of a trade mark and passing off action. It was held thus :

......... I is only in an action for the infringement of a trade mark that the plaintiff can succeed merely by proof of infringement of a mark and nothing

more. The authorities are clear that in the case of a descriptive name the plaintiff has to further prove that the words acquired a secondary meaning

and that the plaintiff is associated with the same name ......

In Victory Transport Co. Pvt. Ltd., Ghaziabad Vs. The District Judge, Ghaziabad and Others, , a similar question came for consideration. The

learned Judge has held thus :

...... In regard to a ""passing off"" action according to settled law, there are broadly two tests which have to be applied for determining the question

whether the plaintiff is entitled to an injunction. The tests are :

(1) Whether the words used in the trade name of the plaintiff are mere descriptive words of common use or have they came to acquire a distinctive

or secondary meaning in connection with the plaintiff''s business so that the use of these words in the trade name adopted by another was likely to

deceive the public ? This test relates to the reputation which the plaintiff claims for itself.

(2) Whether there is a reasonable probability that the use of the name adopted by the defendants was likely to mislead the customers of the plaintiff

by reason of similarity of the two trade names.

In order to succeed the plaintiff has to establish both these things. The court shall insist on a very high standard of proof before it could grant

injunction in favour of the plaintiffs, in view of the seriousness of the reprecussions which such an injunction is bound to have on the rights of the

defendants. The injunction prayed for in such cases prohibits the defendants altogether from carrying on their existing business under a trade name

adopted by them at the instance of a plaintiff whose claim is founded on no more than such illusive concepts as ""reputation"" or goodwill and so

forth. In the cases of infringement of trade marks, the right is founded on registration of the mark which per se is property. It must be borne in mind

that in the case of an action on infringement of a trade mark in view of the statutory provisions, similarity in the trade marks is per se actionable. In

passing off actions, however, the plaintiff has to prove further that his trade name has by reputation and use, come to acquire a secondary meaning

indicating distinctiveness and quality of the business being carried on by him.

In Rustam & Hornsby Ltd. v. The Zamindar Engineering Co. 39 2 SCC 787, also the Supreme Court made a distinction between infringement

of a trade mark and a passing off action thus :

...... (1) An infringement action is quite distinguishable from ''passing of action'' although the two are similarly also in some respect.

In passing off action the issue is :

Is the defendant selling goods so mark as to be designed or calculated to lead purchasers to believe that they are plaintiff''s goods ?

But in an infringement action the issue is :

Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff''s registered trade mark ?

In Parle Products (P.) Ltd. v. J.P. & Co. Mysore AIR 1972 SC 1959, their Lordships followed the earlier decision reported in ( Kaviraj

Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, , wherein it was held thus :

To decide the question as to whether the plaintiff''s right to a trade mark has been infringed in a particular case, the approach must not be that

which obtains in an action for passing off goods of the defendant as and for those of the plaintiff. According to this court in Durga Dutta v.

Navaratna Pharmaceutical Laboratories (supra).

While an action for passing off is a Common Law remedy being in substance an action for deceit, 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 Act). 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 the above case the court further pointed out :

In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant''s mark is likely to deceive; but where the

similarity between the plaintiff''s and the defendant''s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion

that there is an Limitation, no further evidence is required to established that the plaintiff''s rights are violated. Expressed in another way, if the

essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up., packing and other writing or

marks on the goods or on the package in which he offers his goods for sale show marked differences or indicate clearly a trade origin different

from that of the registered proprietor 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 ..........

In ( K.M. Multani Vs. Paramount Talkies of India, Limited, , the principles have been anuciated thus :

....... The principle of a passing-off action is that nobody is entitled to represent his goods as the goods of somebody else. The foundation of a

passing-off action is always deception, or possibility of deception, but it is not an action of deceit. In an action of deceit the plaintiff has to prove

that he has been deceived by the defendant, and has suffered damage thereby, and that the deceit on the part of the defendant was deliberate. In a

passing off action, it is never the plaintiff''s case that he has been himself deceived by the action of the defendant. His case is that other people, the

public have been deceived, or are likely to be deceived. But a private individual cannot sue for a wrong done to the public. The plaintiff must

therefore prove that the action of the defendant has infringed some proprietary right of this own. It is not necessary to prove any fraudulent

intention on the part of the defendant, although, if a fraudulent intention can be proved, that usually assists the plaintiff''s case. Two issues must

always arise in a passing-off action; first, has the name of description or make-up, or whatever may be, the wrongful use of which the plaintiff

complaints, come to be associated, in the public mind with the goods, business, or works of the plaintiff secondly, is the defendant so describing,

or setting up, his goods or whatsoever it may be, as to be likely to mislead the public into believing that they are acquiring the plaintiff''s goods,

when in fact they are acquiring the defendants'' goods.

In (John Walker and Sons Limited v. Rothmans International Limited and John Sinclar Limited 1978 FSR 387, the Chancery Division had the

occasion to consider a similar dispute between a cigarette dealer and a whisky dealer both having the same name. Justice Brightman held in that

case thus :

.... To put the matter in general terms, if one trader acquires a reputation with the public in relation to a particular name or get-up, the use of that

name or get-up by another trader in either an associated field or even in a different field may be restrained if the public may be confused into

thinking that the productor service of the other trader has the cachet of the first trader''s established name or get-up. This is to be distinguished

from what may be called product confusion. In the case with which I am concerned there is obviously no possibility whatever of product confusion.

No one would purchase the defendants Red Label cigarettes thinking that he was buying the plaintiff''s Red Label whisky. The confusion, if any, is

only that of name.

It was further held that there must be proof or prospect of damage. The damage must be to the reputation of the plaintiff''s business. It is also

settled law that before granting any injunction, the prima facie case and balance of convenience is also to be considered. It is on the above

principles, we have to consider whether the order of the learned Judge calls for any interference.

In this connection, it is admitted in the plaint itself that the business name ''First Computers''/1st Computers'' is not registered before any

statutory authority. It is also admitted that the plaintiff is not a manufacturers. He only sells already manufactured computers. The manufacturers of

those computers will have their own trade mark or goodwill. It is also admitted in the plaint itself that the appellant is neither a manufacturer nor a

seller of computers. The defendant is only training people in the use of computers. The plaintiff has conceded that the concept of the Trade Mark

and the application of Trade & Merchandise Marks Act, 1958 is totally irrelevant to the facts of this case.

If the plaintiff has not registered his business name before any statutory Authority the plaintiff can come to court only with an action for passing-

off. In his case, that is also not possible, for defendant/appellant is not off dealing with any goods and is only training people in the use of

computers. The learned Judge also found that business of the appellant and the respondent are different and the possibility of there being any

confusion in the mind of the public is remote. Then, the only other question that remains for ur consideration is, whether the plaintiff has acquired

copyright by which he can prevent the defendant from making use of the words First Computer. It is admitted in the plaint that the words ''First''

and ''Computer'' are common property of all, and the plaintiff claims that because of the combination of the words ""First Computers"", the same has

identified his business in computers. This, according to the respondent (plaintiff), amounts to distinctiveness. On the basis of the available

documents, a finding cannot be entered at this stage whether the combination of the two words ''First'' and ''Computers'' has served the purpose of

identifying and distinguishing the plaintiff''s business in computers. For, the plaintiff will have to prove that he has earned a reputation in that name.

The documents that are produced before the learned Judge are not sufficient to hold that the plaintiff has earned a reputation by using the words.

The same is also substantiated by the appellant. It is in evidence that before the appellant wanted to convert the name ""Brilliant''s Computer

Centre"" into ''First Computers'', they made search before the Registrar of Companies, Registrar of Firms, Registrar of Trade Marks, etc. They

could not find the name ''First Computers'' being made use of by the plaintiff. The learned Judge relied on a circumstance in favour of the

respondent, i.e., a letter from the Registrar of Companies showing the name ''First Computers'' available for registration. The letter is dated 19-12-

1991. The learned Judge has further stated that the same was also registered in 1991. The said statement on the basis of available evidence cannot

be said to be correct. Even though the respondent knew that such a name is available for registration, he did not register the same till date. The

plaintiff is also not having any telephone in his name. What we find is, that he has only registered his name for getting telephone connection. The

telephone stands in the name of one Kuppusami. His relationship with the plaintiff is not desclosed. Further, the plaintiff says that his turnover from

1989 till 1994 has increased from Rupees 14.5 lakhs to Rs. 107 lakhs. But when we turn to the assessment of the plaintiff under Income Tax, we

find that his income is very much less and it has no relevance to the turnover. For the year 1993-94, the amount of tax is only Rs. 19,000/-. Profit

for that year is stated to be nearly Rs. 96,000/-. The plaintiff has also given a list of his customers who are 54 in number. A reading of the same will

show that the customers are mostly from Tamil Nadu and that too localised in Madras or Coimbatore. In fact, they cannot be termed as

customers, for they are the dealers of the plaintiff. We have already said that the plaintiff himself is not manufacturing any goods, but what he deals

with is only computers manufactured by others having goodwill of their own. The plaintiff has also produced a Code Number allotted to him by the

Reserve Bank of India for Exports and Imports. There is nothing on record to show that the plaintiff has exported or imported any goods under the

name ''First Computers''. The assessment under the Tamil Nadu General Sales Tax or Commercial Taxes Department is not of much relevance to

show that the plaintiff has established a reputation, for the purpose of getting an injunction against the defendant.

In this connection, we may also note the relief sought for in the plaint. It is, to restrain the defendant (appellant) from using the trade

name/business name ""First Computers""/""1st Computers"" or using the word ""First/1st"" for conducting any business relating to computers and pass-

off their business, as the business of the plaintiff. The Managing Director of the appellant has stated in his counter affidavit that he has no intention

to start any manufacture, sell or trade in computers, printers, spares, peripherals, hardware, computer servicing and maintenance under the name

and style ''First Computers'', and that he intends only to do caching in computers to the students. The said statement in recorded as an undertaking

by the appellant. In view of the undertaking the plaintiff cannot have any apprehension that his alleged reputation will be encroached upon by the

appellant.

The business carried on by the respondent comes under class 9 of the Rules whereas the appellant has applied for registration of the trade

mark label which comes only under class 16. That also makes a distinction. It has also come out that the appellant is doing business under a trade

mark label ''First Computers 1st C Logo''. The name is also different. The plaintiff has no case that he has ever done any business under the above

style. The appellant has also produced the colour scheme, letter and style, layout and getup, adopted and used by it, and on a verification of the

same, we do not find that the plaintiff has ever been using that style for the purpose of his business. Except using the word ""First Computers"", he

has no colour scheme, lettering style layout and get-up. There is also no prima facie evidence that by using the name, the public has got confused

and the business of the respondent is in any way affected. When the parties are doing business which is entirely different from each other, there

cannot be any confusion in the mind of the public. The observation of the learned Judge that if the appellant is allowed to make use of the name

''First Computers'', it is likely to cause confusion in the mind of the general public in such a way that there is likelihood of their mistaking the course

conducted by the appellant as that of the respondent and the business carried on by the respondent as that of the appellant, has no basis. Even the

plaintiff has no such case in the plaint. The documents produced by the respondent are not available for public inspection. All the documents

produced by him are on the basis of correspondence by him. No public authority has entered the name of the plaintiff as ''First Computers''. In the

plaint itself, he has stated that the word ''First'' is used to identify the business in different fields, and he has also given four or five instances where

the word ''First'' is used by various companies.

It is also in evidence in this case that the appellant has written to the various Dailies even in October and November 1994 to advertise its name

as ''First Computer 1st C Logo'' and we find that huge amounts have been spent by the appellant for the said purpose. According to the appellant,

he has spent nearly Rs. 75 lakhs for the said purpose, and if at this juncture it is restrained from making use of the name, it will be put to great

hardship, cannot be said to be an irrelevant circumstance. The learned Judge has rejected that argument on the ground that even before the

advertisement in the Dailies, the defendant was having the coaching class and it had already earned a reputation under the name ''Brilliant''s

Computer Centre'', and in view of the change of names, it has not earned anything. The said finding is not correct. The defendant has explained the

circumstances under which it had to change its name. In November 1993, it began its classes in computer ''First Step''. It earned a very good name

and immense popularity. Thereafter it started additional courses ''First Job'', ''First Accountant'' and ''First Office''. Naturally when it gained

immense popularity, it thought of changing the name with the word ''First''. In continuation of these words, the appellant wanted to make use of the

new name ''1st C Logo''. It needed advertisement, and it was because of the good name earned by it, it could enroll nearly 12,000 students for

various courses. Even the plaintiff has no case that the defendant wanted a change of name, with any dishonest motive. When it is found that the

appellant has not changed its name with any dishonest motive, with an intention to deceive or cause confusion in the mind of the public, it cannot be

said that the plaintiff has made out a prima facie case. It is also better to remember that persons who approach the plaintiff for the purchase of

computers and the defendant for training under the defendant are educated people, who cannot get confused since the activities of both the parties

are different. The apprehension of the respondent on the basis of the allegation alone cannot be termed as genuine.

In K. Venkataraman Vs. The State of Tamil Nadu, , the Supreme Court said as to when an injunction could be granted in a passing-off action.

It reads thus :

An infringement action is available where there is violation of specific property right acquired under and recognized by the statute. In a passing off

action, however, the plaintiff''s right is independent or such a statutory right to a trade mark and is against the conduct of the defendant which leads

to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by

which one person through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a

particular trade or business. The action is regarded as an action for deceipt. The tort of passing-off involved a misrepresentation made by a trader

to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or

probably causes damages to the business or goodwill of other trader.

In view of the principles laid down therein, it cannot be said that the action of the defendant is intended or calculated to lead to deception. It is

not an unfair trade competition or an actionable unfair trading, by which, the appellant, through deception, attempts to obtain an economic benefit

of the reputation which another has established for himself in a particular trade or business. There is no deception and there is no misrepresentation

made by the appellant to his prospective customer, calculated to injure as a reasonably foreseeable consequence, the business or goodwill of

another which would actually or is likely to cause damages.

In the above circumstances, we are of the view that the order passed by the learned Judge is required to be modified, and we order as follows

:

We direct the appellant (defendant) that whenever it makes use of the words ''First Computers'' for the purpose of its coaching classes, in all

the advertisement, pamphlets, etc., the appellant will make it clear by appropriate words that it has nothing to do with the business conducted by

the plaintiff, respondent herein. The said safeguard, in our opinion, will be sufficient to remove the apprehension of the respondent. On the facts

and in the circumstances of the case, we are not satisfied that the appellant should be restrained by an order of injunction as sought for.

In the result, the Appeal is allowed, and the injunction application O.A. 151/95 is dismissed with a direction to the defendant in the above

terms. Application No. 1147/95 is allowed. No costs.

Appeal allowed.