Hariram vs Mysore Polymers and Rubber Products Limited

Aravind Kumar, J.

Heard Sri. S. Basavaraj, learned counsel appearing for appellant-defendant and Sri. Sivaraman Vaidyanathan, learned counsel appearing for caveator-respondent. By consent of learned advocates appearing for the parties, appeal is taken up for final disposal.

Appellant who is defendant in O.S. 3438/2014 being aggrieved by order dated 16.08.2014 passed by trial court allowing I.A. 1 and 2 filed by plaintiff under Order 39 Rules 1 and 2 read with section 151 of C.P.C. whereunder appellant-defendant, his successors, assignees, representatives, associates, dealers, agents, servants or anybody claiming through them having been restrained from using, in relation to tubes, tyres, retreading materials for all types of land vehicle or any other allied cognate goods under the trade marks "HYPOL/HI-POL" or any other trade mark which is identical or deceptively similar with the plaintiffs registered trade mark "MYPOL" under No. 520571 in class 12 and also passing off their trade mark by granting an order of temporary injunction and as such defendant''s are before this court questioning the same.

Facts in brief which has led to filing of this appeal can be crystalised as under. Parties are referred to as per their rank in the trial court.

Plaintiff has filed a suit against defendant in O.S. 3438/2014 for the following reliefs:

"(a) An order and decree of perpetual injunction restraining the defendant and his successors, assignees, representatives, associates, dealers, agents, servants and anybody claiming through him from infringing the plaintiffs registered trademark MYPOL under No. 520571 in class 12 by using the deceptively similar trademarks HYPOL/HI-POL or any other identical and/or deceptively/confusingly similar trademark in relation to the goods for which the plaintiffs trademark MYPOL is registered namely tubes, tyres, retreading materials for all types of land vehicles or any other allied and cognate goods;

(b) An order and decree of perpetual injunction restraining the defendant and his successors, assignees, representatives, associates, dealers, agents, servants and anybody claiming through him from passing off the plaintiffs trademark MYPOL by using the deceptively similar trademarks HYPOL/HI-POL or any other identical and/or deceptively/confusingly similar trademark in relation to the goods manufactured and marketed by the plaintiff namely tubes, tyres, retreading materials for all types of land vehicles or any other allied and cognate goods;

(c) An order and decree directing the defendant to pay to the plaintiff a sum of Rs. 25,000/- as interim damages and further render a true and faithful account of profits earned by the defendant by infringing and passing off the plaintiffs trade mark, and the defendant be further directed to pay such amounts as may be found due to the plaintiff on such accounts being taken, as damages;

(d) An order and decree directing the defendant to pay the costs of this suit, and this Hon''ble Court may be pleased to pass such further order(s) and grant such other relief(s) to the plaintiff as it may deem fit and proper under the circumstances."

Contending inter alia that plaintiff is having various offices spread over length and breadth of the country and even abroad and is carrying on its business through its office situated at Bengaluru and "MYPOL" is the house mark of plaintiff, being used on all its products manufactured by it and also on other advertising and promotional materials/letter heads and stationery materials etc., and has got the said trade mark registered under class 12 of Trade Marks Act, 1999 bearing No. 520571. It is also contended that plaintiff has earned goodwill and reputation for its mark "MYPOL" and said mark has been honestly coined and has adopted this unique trade mark from the year 1982. It has also been contended that said trade mark forms most prominent trade mark and house mark used in relation to all its products and it is exclusively asserted that plaintiff has gained enormous goodwill and reputation among members of trade, public and investors.

It is contended that during October, 2012 plaintiff became aware that defendant was infringing and passing off plaintiffs registered trademark "MYPOL" by using almost deceptively similar mark "HYPOL" for identical goods as those manufactured and marketed by plaintiff and thereby resulting in plaintiffs customers being diverted to the products manufactured by defendant. It is also contended that defendant''s trade mark application for mark "HYPOL" has been filed recently before Registrar, Trademarks and as such plaintiff caused a legal notice on 22.10.2012 calling upon the defendant to desist from infringing and passing off plaintiffs trade mark and defendant by reply dated 26.11.2012 gave a evasive reply and asserted that packaging of defendant is different from that of plaintiff. It was also contended that there were exchange of notices and application filed by defendant on 24.12.2012 seeking registration of mark "HYPOL" which came to be advertised in trade marks journal No. 1568 has been opposed by plaintiff by filing opposition to said application on 01.02.2013 which has since been numbered as 798307 before the Registrar of Trade Marks, Chennai and same is under adjudication. On account of defendant continuously using said trade mark and passing off the goods manufactured by it and same being proceeded unabated plaintiff filed the suit for reliefs as noted hereinabove. Along with plaint an application under Order 39 Rules 1 and 2 of C.P.C. read with section 151 of C.P.C. also came to be filed to restrain the defendant by grant of order of temporary injunction.

Defendant on service of suit summons appeared and filed its written statement denying the averments made in the plaint and specifically denying that by virtue of first and prior adoption in use and by virtue of registration plaintiff would get exclusive right to use trade mark "MYPOL" in relation to its goods, tubes, tyres, retreading materials for all types of vehicles. The averments made in the plaint that plaintiffs e-mark "MYPOL" commends unparallel goodwill and reputation amongst members of trade and public was denied in toto. It was contended that defendant is engaged in the business, manufacture and marketing of tyres and tubes for use in Motor Land Vehicles for past several years and during course of its business it has adopted trade mark "HYPOL" and in order to distinguish its good from that of others the mark "HYPOL" was adopted by defendant way back in the year 2008. As such defendant contend that said trade mark is unique and distinct. It was further contended that trade mark ''HI-POL'' has been in continuous use since the year 2008 and lot of goodwill and reputation has been generated in trade mark ''HY-POL''. As such defendant claimed to be the proprietor of said trade mark for "tyres and tubes for use in motor land vehicles" within the meaning of provisions contained in Section 18(1) of the Trade Marks Act, 1999. By denying averments made in plaint in its entirety, defendant sought for dismissal of the suit. Written statement filed by defendant was also adopted by it as objections to the interlocutory applications filed by plaintiff under Order XXXIX Rule 1 and 2 CPC by filing a memo on 27.06.2014.

In this background, trial court took up for consideration I.A. Nos. 1 and 2 for being adjudicated and after considering the pleadings of parties, rival contentions raised at the Bar and also taking into consideration the Judgments relied upon by respective learned advocates, trial Court has found that plaintiff has established prima facie case and held in the event of temporary injunction is refused, it is plaintiff who would be put to irreparable loss and injury and found balance of convenience is in favour of plaintiff. Hence, trial court allowed both the applications by order dated 16.08.2014 the correctness and legality of which has been questioned in this present appeal by defendants.

Sri. Basavaraj, learned counsel appearing for appellant/defendant has vehemently contended that trade mark of plaintiff and defendant are neither deceptively similar nor identical and they are different on all aspects like physically, phonetically, visually and structurally. He would elaborate his submission by contending that mark ''POL'' being common to the trade and having been derived from generic word ''POLIMER'', plaintiff as such cannot claim any exclusive right to use of word ''POL''. He would also contend that remaining part of mark ''MY'' and ''HY'' is different and it makes ocean of difference. He would also hasten to add that even to show the bonafides, defendant agreed to change the wrapper ever from ''HY-POL'' to ''HI-POL'' and this aspect has not been considered by trial Court in proper perspective. He would also contend that defendant''s mark ''HY-POL'' is a coined word which is adopted from the quality of raw material used by defendant by high grade POLYMER and contends that general public are clever and intelligent enough to differentiate between ''MY-POL'' and ''HY-POL'' and there is not a single reported incident of any confusion created in the minds of customers till date and plaintiff''s mark is not a well known trade mark as falsely claimed by them and to eliminate any competition and unable to digest phenomenal growth of appellant over a short span of time, plaintiff has now sought to scuttle the business of defendant by filing the suit in question and as such, order passed by trial court would not stand the test of scrutiny and hence he prays for dissolving the order of temporary injunction granted by trial Court by dismissing I.A. Nos. 1 and 2.

Per contra, Sri. Shivaraman Vaidyanathan, learned counsel appearing for the respondent-plaintiff would not only support the order passed by trial Court but also would contend that words used by defendant in its product would clearly suggest its intent which in effect is to deceive the customers and it is an attempt made by defendant to pass off its product as though it is the product of plaintiff, which is evident from the very colour scheme of wrapper paper and words used by defendant on its product and same would clearly indicate that visually, and even phonetically they are similar and the courts while examining claim for grant of temporary injunction, in respect of trade marks, either on the ground of registered trade mark or when its alleged passing off, it would view from point of view of user and when so viewed, it would not detain this court to uphold the order passed by trial court since the defendant is using registered trade mark of plaintiff or in other words defendant''s mark is deceptively similar to that of plaintiffs registered trade mark. Hence, he prays for dismissal of the appeal.

Having heard the learned counsel appearing for parties and on perusal of the pleadings, as well as documents which have also been filed along with the appeal memorandum, it would clearly indicate that plaintiff has obtained registration of trade mark ''MY-POL'' from Registrar of Trade Marks, as evident from certificate issued by Trade Marks Registry. Perusal of said certificate would clearly depict that Trade Mark Registry has indicated in the certificate of registration issued to plaintiff that plaintiff has been using its trade mark since 11.12.1982 and trade mark ''MY-POL'' has been registered with effect from 30.11.1989 which has been subsequently renewed and in force as on date. As against this claim of the plaintiff, when claim of defendant is examined, it would indicate that defendant has submitted its application for registration of the trade mark ''HI-POL'' on 28.10.2011 in respect of the goods ''Tyres and Tubes for use in Motor land vehicles'' under No. 2226271 in Class-12, whereunder the defendant has claimed that it has been continuously using said trade mark with effect from 1.4.2008 and for registration of word ''HI-POL'', application has been submitted by it on 31.10.2012. When this application is perused along with registration certificate issued by Trade Mark Registry in favour of plaintiff, it would clearly indicate that plaintiff has claimed use since 11.12.1982. This factum of prior use would suffice for considering claim for grant of temporary injunction in favour of plaintiff and it is this precise exercise which came to be undertaken by trial Court and held in favour of plaintiff. Hence, this court would not go into other details as to prior use or otherwise, at this juncture, inasmuch as Section 12 of the Trade Marks Act, 1999 enables Trade Mark Registry to consider claim for registration dehors prior use. Undisputedly plaintiff has lodged its opposition to defendant''s trade mark registration and said issue is now being under consideration by Trade Marks Registry. Hence, any opinion expressed by this court on this aspect, at this stage, is likely to prejudice rights of either parties. Same is left open to be adjudicated by the said Authority and both parties would be at liberty to urge their grounds in support of their prayer.

Now turning my attention back to the issue in question, namely as to whether trial Court was justified in granting an order of temporary injunction, it requires to be noticed that undisputedly plaintiff in the instant case is having a registered trade mark in its favour as evidenced from the certificate of registration issued by Trade Mark Registry, which is valid and current. Said certificate has been issued for words ''MY-POL'' and for colour scheme and for packing the product manufactured by plaintiff. Defendant is claiming its prior use from the year 2008. Relevant materials produced by plaintiff before trial Court like, invoices, bills, extract of books of accounts to substantiate its claim that said trade mark is being used by plaintiff from long number of years and end user has accepted the said trade mark as that of plaintiff and same being associated with the products manufactured by plaintiff by not only visual comparison but even phonetically. However it came to be held these materials are sufficient to grant an order of temporary injunction in favour of plaintiff. Trial Court having noticed as to what are visual similarities as well as phonetic similarities between the names used by plaintiff and defendant which is ''MY-POL'' and ''HYPOL'' respectively has granted an order of temporary injunction in favour of plaintiff. Though defendant in the course of proceedings before the trial court made a valiant attempt to contend that by changing the word ''HY-POL'' to ''HI-POL'' was sufficient enough to allay the fear expressed by plaintiff trial court has rightly found that by itself is not sufficient enough to refuse an order of temporary injunction in favour of plaintiff.

From the view point of the end user, the phonetical similarity will have to be examined in the case of passing off and when so examined by this court, since this is an appeal which is continuity to original proceedings, it would not detain this court too long to reject the contention of defendant and accept the contention of plaintiff, inasmuch as product involved in the present appeal relates to tubes being used in two wheelers and as such the normal user of the products being vulcanising shops or dealers who sell the said product to personnel engaged themselves in replacing tubes from existing ones and it is they who purchase the product from dealers and chances of the said persons being sold products manufactured by defendant as that of the goods manufactured by plaintiff is fairly large. The words ''HI-POL'' and ''HY-POL'' are deceptively similar to ''MY-POL'' and as such, order passed by trial court by recording a finding that there is prima facie case in favour of plaintiff and balance of convenience is also in favour of plaintiff cannot be held as contrary to facts. That apart, trial court has rightly held that in the event of temporary injunction being refused, it is the plaintiff who would be put to irreparable loss and injury and as such, trial court has rightly restrained the defendant from using the said mark or passing off its product to customers, since the name, mark and the colour scheme reflected on the wrapper of the products manufactured by it is deceptively similar to that of plaintiffs registered trade mark. Hence, this court is of the considered view that no infirmity can be found in the order passed by trial court for the reasons indicated hereinabove. It is made clear that any opinion expressed by trial Court or by this court for the limited purpose of considering the applications for temporary injunction only and trial Court without being influenced by the same shall proceed to adjudicate the claim, on merits, in accordance with law. Defendant would be at liberty to revive its claim if it is established that any such changed circumstances exist and if such prayer is made plaintiff would be at liberty to file objections and/or object to it or in other words it would be subject to objections of plaintiff, if any and in that regard no opinion is expressed. All contentions are left open.

Hence, the following:

ORDER

(i) Appeal is hereby dismissed.

(ii) Order passed by XVIII Additional City Civil Judge, Bengaluru dated 16.08.2014 in O.S. 3438/2014 is hereby affirmed."

In view of appeal having been dismissed, I.A. I/2014 does not survive for consideration and stands dismissed.