Shri Atul Rawal vs S.B. Equipments

Badar Durrez Ahmed, J.—By way of this application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as ''CPC''), the plaintiff seeks an ad interim injunction restraining the defendant from manufacturing, selling, marketing, advertising or in any manner whatsoever using the trademarks ''SUPER BRIGHT'', ''SUPER BRIGHT EL'', ''SUPER BRIGHT EL-C'', ''SUPER BRIGHT EL-81'', ''SUPER BRIGHT had ULTRA'' and ''SUPER BRIGHT Bleach'' or any other trademark which is deceptively similar or confusingly similar to the above trademarks. It is claimed by the plaintiff that it is the proprietor of the said trademarks. The suit has been filed on the allegation that the defendant is passing off its goods as those of the goods of the plaintiff by utilising the aforesaid trademarks for its goods.

The plaintiff is in the business of manufacturing and selling various detergent products. It is the plaintiff''s case that it has developed several unique and novel detergent products solely on the basis of its own research and development and all these products have been marketed and sold under the trademark ''SUPER BRIGHT'' followed by suffixes, such as EL, EL-C, EL-81, had ULTRA, etc. to identify specific detergent products. It is alleged that the trademark ''SUPER BRIGHT'' was first coined and adopted by the plaintiff''s sister concern M/s Asian Laboratories in the year 1978 and was put to use first in point in India in respect of detergent chemicals. It is stated that sales under the aforesaid trademarks continued to grow and in the year 1990, by reason of a family settlement, the use of the said trademark was transferred to the plaintiff who has since been manufacturing and marketing its detergent chemicals under the trademark ''SUPER BRIGHT''. On the basis of material placed before this Court at time of hearing of this application, it can be granted to the plaintiff that, prima facie, the plaintiff has been using the mark ''SUPER BRIGHT'' since 1990 in respect of its detergents. The documents on record indicate sales of its ''SUPER BRIGHT'' detergents to various hotels and hospitals, including Hotel Le Meridian, Taj Mahal Hotel, Grand Intercontinental Hotel, Escorts Heart Institute, Moolchand Hospital, etc. right through the early 1990s till date.

The plaintiff has averred in its plaint that in the year 1999, the plaintiff developed two different product ranges with variation of chemical components and formulae as per the demand of its clients and marketed the products as ''SUPER BRIGHT ULTRA'' and ''SUPER BRIGHT EL-81''. The plaintiff has also stated that in the year 2001, it applied for and initiated talks for supply of its ''SUPER BRIGHT'' range of detergents to the Armed forces for use in various Army hospitals all over the country. The plaintiff is stated to have developed special formulations for the Army and that as of today, the only detergent chemical that has been approved for use by the Army hospitals is that of the plaintiff under the mark ''SUPER BRIGHT''.

It is alleged that recently, the plaintiff came to know that the defendant is engaged in the manufacture and supply of detergent products under the trademark ''SUPER BRIGHT'' which is identical to the plaintiff''s mark. It is further stated that on enquiry, it was found that not only had the defendant adopted the identical trademark ''SUPER BRIGHT'', but it had also adopted the identical suffixes used by the plaintiff, such as ''SUPER BRIGHT EL'', ''SUPER BRIGHT EL-C'', ''SUPER BRIGHT EL-81'', ''SUPER BRIGHT had ULTRA'' and ''SUPER BRIGHT Bleach''. It is stated that the factum of the defendant''s use of the said trademarks has come to the knowledge of the plaintiff in the month of June, 2007 when it learnt that the defendant has also submitted a bid for supply of ''SUPER BRIGHT'' range of the chemicals to the army hospitals. According to the plaintiff, the aforesaid act of offering its products under the trademark ''SUPER BRIGHT'' to the Armed forces, which is one of the major clients of the plaintiff, is an attempt by the defendant to mislead and pass off its goods as those of the plaintiff. The plaintiff caused the legal notice dated 06.07.2007 to be served upon the defendants to refrain from using the plaintiff''s trademark and refrain from passing off its goods as those of the plaintiff''s. Since no response has been received, the plaintiff has been compelled to file the present suit.

This case raises interesting questions relating to passing off. This is so because, according to the defendant, the Army has invited tenders from time to time in respect of various kinds of ''SUPER BRIGHT'' detergents. The defendant has submitted its bids for the said detergents on the understanding that ''SUPER BRIGHT'' is only used as a description Along with suffixes so as to identify the products according to the specifications given in the tender invitations. The defendant has never regarded ''SUPER BRIGHT'' as a brand name or a trademark. Interestingly, the defendant does not supply or sell any of its products in the open market under the mark ''SUPER BRIGHT''. The only supplies that are made, are to the Army on the basis of tenders invited by the Army. The interesting question of passing off that arises is - whether in such circumstances, where a single consumer invites tenders for a particular product using the mark ''SUPER BRIGHT'' Along with its suffixes and several persons submit their bids for the same products, do such persons intend to pass off their products as those of others ? On the one hand, as noticed above, there is prima facie evidence that the plaintiff has been using the mark ''SUPER BRIGHT'' Along with various suffixes in respect of its detergent products since 1990. On the other hand, the defendant does not market its products under the said mark ''SUPER BRIGHT''. What is happening is that the Army is inviting tenders using the words ''SUPER BRIGHT''. Various persons, including the plaintiff and the defendant, respond to those tenders and the Army has been awarding the tenders mostly to the plaintiff and lately in larger shares to the defendant. Does it mean that when the defendant responds to the Army''s notice inviting tender which uses the words ''SUPER BRIGHT'', the defendant is intending to and, in fact, passing off its products as those of the plaintiff''s ? This is a debatable question and cannot be decided at this stage without examining the evidence that may be led by the parties.

However, it must be noted that, as pointed out by the learned Counsel for the defendant, it is not as if the plaintiff has recently come to know of the defendant''s bids in respect of the tenders invited by the Army. A detailed chart had been handed over by the learned Counsel for the defendant during the course of arguments indicating the dates of tender document, descriptions of stores and total quantity, names of bidders and status of contracts. Ten such instances have been detailed. Only a few of them would be necessary for the purpose of this case. In the first instance, the tender document of 20.12.2004 can be considered. This was in respect of ''SUPER BRIGHT EL'' (Oil and Grease Stain Remover). The Army invited tenders for 41,064 Kgs of this product. As many as seven persons submitted their bids, including the plaintiff and the defendant. The bids were opened on 12.01.2005 and the award was made on 23.06.2005. The successful bidders were the defendant for 16,425 Kgs and the plaintiff for the rest. Again by a tender document of the same date, i.e., 20.12.2004, bids were invited for 71,640 Kgs of ''SUPER BRIGHT had ULTRA''. There were four bidders, including the plaintiff. The defendant did not bid. The entire quantity was awarded to the plaintiff. I now come to the last of the tender documents which were dated 02.01.2007. Bids for 31,242 Kgs of ''SUPER BRIGHT EL'' (Oil and Grease Stain Remover) were invited. There were three bids submitted, including the plaintiff and the defendant. The entire quantity was awarded to the defendant. Nothing to the plaintiff. It has been contended by the learned Counsel for the defendant that the trend indicates that initially all orders were being placed on the plaintiff and all supplies were being made by the plaintiff. However, subsequently, the defendant has been able to get a foothold and part orders were placed on the defendant. Lately, in 2007, the defendant has virtually edged out the plaintiff insofar as the Army tenders are concerned and that is the reason why the plaintiff has come to court in 2007 and not earlier.

Considering what has been stated by the learned Counsel for the defendant and taking a prima facie view of the matter, it cannot be said that the plaintiff was not aware of the fact that when tenders were invited by the Army for products under the name of ''SUPER BRIGHT'', there were other parties, including the defendant, who were submitting their bids and that at times the tenders were not being awarded in part or in whole to the plaintiff. Such knowledge would relate to the period beginning end of December, 2004. The plaintiff, if it was aggrieved by the alleged factum of passing off, ought to have approached the court without any delay. The fact that the plaintiff has not approached this Court immediately but has waited for a considerable length of time, would definitely disentitle the plaintiff to an interim injunction and the plaintiff would have to wait for a final decision in the suit. It must, however, be noted that the learned Counsel for the defendant assured this Court that it is only supplying its detergents in response to the Army tenders which indicate the words ''SUPER BRIGHT'' and that the defendant by itself does not market or sell any detergents in the market to any other consumer under the mark ''SUPER BRIGHT''. The defendant shall abide by this undertaking and assurance till the disposal of the suit. It is also made clear that the non-grant of an injunction to the plaintiff qua supplies being made to the Army by the defendant would not, in any way, prejudice the plaintiff''s case in respect of any other customers or the public at large and would not create any special equities in favor of the defendant qua the proprietorship of the mark ''SUPER BRIGHT''.

With these observations and directions, this application is dismissed.