Before the Supreme Court of India Civil Appeal No. 7805 of 2001, Citation: (2002) 2 SCC 147 Appellant Mahendra & Mahendra Paper Mills ltd. Respondent Mahindra & Mahindra ltd. Date of Judgement 9th November 2001 Bench Hon’ble Justice D.P. Mohapatra; Hon’ble Justice Shivaraj V. Patil
Introduction-
The trade-marks or trade names used by a company have some goodwill attached to that company. No one can take benefit by using a trademark or trade name which is deceptively similar to another so that it can give an impression to an ordinary man that this product or the company might have some association with another. There is a remedy available for such use and the plaintiff can infringement or Passing off as the case may be. While the suit is pending, the plaintiff generally asks for an interim injunction to restrain the defendant from using such mark or name till the disposal of the suit. The same question arose in the present case that is Mahendra and Mahendra paper mills ltd. v. Mahindra and Mahindra Ltd.[i] where the plaintiff claimed that the name used by the defendant i.e. Appellants is deceptively similar to that of the Plaintiff i.e. the Respondent.
Background-
Before this judgment, numerous Indian and foreign case laws have laid down the law regarding the same law. In this case, also, relying upon the principles already established the Court gave the Judgment and no new law was laid down. In Seven Towns Ltd. & Anr. v. M/s Kiddiland & Anr.,[ii] the court observed that in trade dress issues, points of similarity rather than dissimilarity must be the focal point. It was held in Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd,[iii] that it is the overall impression that the customer gets from the visual impression of color combination, the shape of the container, packaging, etc. If an illiterate and unwary customer gets confused because he gets some other goods in similar packaging or color combination or shape of the product, it amounts to passing off. Hence, if a trademark or trade dress is deceptively similar and similarities outweigh the dissimilarities, it would amount to passing off and the use of such trade dress or mark would not be allowed to be continued.
Statutory provisions discussed-
Sections 106(2)(c) and 105(c) of Trade and Merchandise Marks Act, 1958. Hereinafter referred to as ‘Act’.
Facts of the Case-
Factual Matrix-
The Plaintiff i.e. Respondent ‘Mahindra and Mahindra Ltd.’ is a company that was incorporated in the year 1945 and running its business under the name ‘Mahindra and Mahindra Ltd’ since 1948. It is a flagship company of Mahindra group of companies in which there are 15 other companies. The word ‘Mahindra’ is a registered Trade Mark under the Act. The Defendant company i.e. the Appellant was incorporated in the Year 1994. The Appellant has been carrying on other businesses since 1974 under the name ‘Mahendra’ since it is a household name and many other families are using it across Gujarat. The Plaintiff and Defendants’ products are not similar in any kind. The Plaintiff came to knew about Defendant Company in the year 1996 when he saw the issue for prospectus and felt that the Trade Mark is deceptively similar and the Appellant is trying to ride on the Goodwill of the Respondent. Hence, the Plaintiff (respondent) filed the Suit and also claimed for a temporary injunction.
Procedural History-
The Single Judge granted an interim injunction in the favor of the Plaintiff (Respondent) and restrained the Defendant (Appellant) from using the words “Mahendra and Mahendra” or any word(s) which are deceptively similar to “Mahindra” or “Mahindra and Mahindra”. The Defendant (Appellant) filed an Appeal to Bombay High Court which was also summarily dismissed and Division Bench of High Court upheld the order of the Single Judge. Hence, this appeal was filed before the Supreme Court by Defendant (Appellant).
Issues-
Whether the High Court committed an error in granting the plaintiff’s prayer for an interim injunction?
Arguments by both Parties-
Arguments by the Appellants–
Senior Advocate P. N. Misra appeared for the Appellant. He contended that it is not an action for infringement but it is an action in passing-off the business and services. He also contended that there is no similarity in goods manufactured or sold by the Appellant and Respondent and hence there can be no confusion among customers. He further argued that the Appellant has been using the trade name “Mahendra” for various businesses since 1974. Hence, the Respondent is not an exclusive user of such Trade Name. He said that the test to be applied in case of passing off is probability and the not mere possibility of confusion or deception. He said that the grant of interim injunction in favor of the plaintiff was unwarranted and the High Court should have set aside the order of Single Judge.
Arguments by the Respondents-
Senior Advocate R. F. Nariman appeared for the respondent. He contended that the order of interim injunction passed by the Single Judge is as per law and the High Court was right in upholding that order. He further contended that on perusal of the prospectus issued by Appellant it is clear that the Appellant is trying to ride on the goodwill and popularity associated with the name ‘Mahindra and Mahindra’ of the Respondent. He contended that a man of ordinary intelligence is likely to get the impression that the Appellant is associated with the ‘Mahindra and Mahindra’ group. He also contended that the amount collected by the Appellant by selling the shares of the company was due to the deceptively similar name.No business activity of the Appellant Company has yet commenced. He contended that the plaintiff established a strong prima facie case and refusal of the interim injunction would result in irreparable injury to the Respondents. He submitted that the High Court was right in not interfering with the order of the Single Judge.
Judgment-
The Judgment of Court was delivered by Justice Mohapatra.
He considered various case laws that laid the principles of Trade Mark Law and then he came to the conclusion. The Court considered these cases:
In Corn Products Refining Co. v. Shangrila Food Products Ltd.[iv] It was held that the question of similarity between two marks is one of the first impression and it must be looked from the viewpoint of a man of ordinary intelligence and imperfect collection. In Wander Ltd. v. Antox India (P.) Ltd.,[v] the Court was considering the question of interim injunction in relation to the Copyright Act. The Court held that the Court must weigh injuries of both parties and then should decide where the ‘Balance of Convenience’ lies. It also held that the Appellate Court should not interfere with the order of the Lower Court unless it is manifestly arbitrary or law is not correctly applied.
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.,[vi] the Supreme Court laid down various general factors that should be considered before deciding the case for unregistered trademark i.e. Passing-off. The Factors are Nature of Marks, Degree of resemblance between marks, Nature of Goods, Class of Customers whether educated or people with high care will buy is a factor to be considered, Mode of purchasing or any other factor depending upon the facts of the case.
In the case of Bata India Ltd. v. Pyare Lal & Co.[vii], the High Court observed that ‘the word “Bata” was well known in the market and the use of such a name is likely to cause deception to customers and injury to the plaintiff-company. The fact that the plaintiff and defendant are dealing in different goods is not enough to prevent a passing-off action.
Decision by the Court-
The Respondent has been using the name ‘Mahindra & Mahindra’ in business concerns for a long time of 50 years. The name is now attached to the Respondent and has acquired distinctiveness. Using a similar name to the Respondent Company would cause an impression that it is associated with the Respondent, which may cause irreparable injury to the Respondent. The Court while deciding for Interim Injunction upheld the order of the High Court and said that there is no need to interfere with it. The Appeal was dismissed with a Cost of Rs. 15,000.
Conclusion-
The Court’s decision reiterates the settled law that using a Deceptively Similar mark would amount to Infringement or Passing-off, as the case may be. The Court also made it clear that even if both the parties to the suit are in different businesses but still the Trade Mark or Trade name is deceptively similar, it would amount to passing-off. The Court also reiterated the principles settled down to decide an application for Interim Injunction. The Court said that injury for both the parties must be weighed and then decide where the ‘Balance of Convenience’ lies. A company cannot be allowed to use a similar name to another because it may cause injury to another person. Hence, to prevent this injury interim injunction is granted by the Courts, in which the defendant is restrained from using such name which is similar to that of the Plaintiff’s till the final disposal of the Suit.
“The views of the authors are personal“
Reference
[i]Mahendra and Mahendra paper mills ltd. V. Mahindra and Mahindra ltd., (2002) 2 SCC 147.
[ii]Seven Towns Ltd. & Anr. v. M/s Kiddiland & Anr., (2016) 160 DRJ (SN) 675.
[iii] Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd. (2003) 108 DLT 51.
[iv]Corn Products Refining Co. v. Shangrila Food Products Ltd, 1960 (1) SCR 968.
[v] Wander Ltd. v. Antox India (P.) Ltd., 1990 Supp(SCC) 727
[vi] Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73.
[vii]Bata India Ltd. v. Pyare Lal & Co., AIR 1985 All 242.
