- (1.) THIS is an appeal preferred by the original defendants against the order dated November 20, 1986 whereby the learned Judge granted an injunction restraining the defendants from manufacturing, selling, offering for sale or otherwise dealing in tooth brushes and the like goods bearing the trade mark 7 O'CLOCK on any other trade mark deceptively similar thereto as to pass off or as would be likely to pass off or enable others to pass off the defendants' goods as and for the goods of the plaintiffs. The facts which gave rise to the passing of this order are as follows:
(2.) THE plaintiffs are a Company incorporated under the laws of the United Kingdom and are a subsidiary of the Gillette Company, U.S.A. THE Gillette Company and its subsidiaries have been carrying on worldwide business in the manufacture and sale of safety razor blades, safety razors, shaving cream, shaving brushes, etc. since last over several years. THE plaintiffs have been using the trade mark 7 O'CLOCK upon and in connection with its goods since the year 1913 in India and certain neighboring countries and the plaintiffs have acquired an extensive reputation all over the world. THE plaintiffs had recorded a declaration of ownership of the trade mark 7 O'CLOCK on March 17, 1915 and subsequently, the plaintiffs have obtained registration of the trade mark in India in respect of various articles in class 21, 8 and 3. THE registration of the marks are valid and subsisting, the plaintiffs entered into an agreement with an Indian Company called Indian Shaving Products Limited, a company registered under the Companies Act, for the purpose of manufacture and sale of safety razor blades in India. THE agreement of collaboration was entered into as the goods manufactured by the plaintiffs were not imported in India after the year 1958 because of the import restrictions. Under the collaboration agreement, the Indian company is entitled to use the trade mark 7O'CLCOK' but with the addition of the word 'EJTEK; THE plaintiffs have granted licence to the Indian Company to use the trade mark 7 O'CLOCK in the manner as set out in the agreement dated December 28, 1984. In November 1985, the plaintiffs became aware that tooth brushes were sold in the Bombay market under the trade mark of 7 O'CLOCK'. The trade mark appeared with the letter 'R' in a circle thereby indicating that the mark is a registered trade mark. The plastic pouch in which the tooth brush is encased also bears the expression "Hollywood-London-Paris". The mark used on the tooth brush as well as on the pouch is deceptively similar to the registered trade mark of the plaintiffs. The tooth brush or the pouch in which it is sold did not state who are the manufacturers, with the result the plaintiffs filed a complaint before the Metropolitan Magistrate against an unknown person. The complaint was filed on November 22, 1985 and in pursuance of the complaint, the Magistrate issued an order for investigation and enquiry under section 202 of the Code of Criminal Procedure. The crime branch of C.I.D. Bombay conducted the enquiry and seized the goods from the premises of defendants Nos. 1, 5 and 6. Thereafter, the plaintiffs became aware as to who are the manufacturers and distributors of the tooth brush with the deceptively similar mark. The plaintiff thereupon served notice upon the defendants to cease the user of the mark, but having failed to receive any positive response, the suit was instituted in this court on August 21, 1985 for an injunction restraining the defendants from manufacturing, selling or offering for sale the tooth brush and the like goods bearing the trade mark 7 O'CLOCK; The action instituted by the plaintiffs is on the basis that the defendants are passing off the goods with a view to trade on the reputation acquired by the plaintiffs. There is one fact which is required to be noticed at this juncture. On May 31, 1982, the defendants had applied to the Registry of Trade Marks for registration of their trade mark 7 O'CLOCK' in respect of tooth brushes in Class 21. The Registrar accepted the mark on March 16, 1986 and the application was duly advertised in the trade mark journals. The plaintiffs filed opposition to the proposed registration of the mark and the opposition is pending hearing.
(3.) ON institution of the suit, the plaintiffs took out Notice of Motion No. 1922 of 1986 for interim relief and in support of the application Vidya Bhushan Mehrish, Constituted Attorney of the plaintiffs, filed affidavit in support. The defendants filed affidavit in reply of Vinod Kumar, C. Kumar, a partern of defendant No. 1 and the defendant claimed that they are using the mark from July 24, 1982. The defendants resisted grant of interim relief on the ground that the mark 7 O'CLOCK is a word mark and not an invented mark. It was also claimed that the mark was used in respect of safety razor blades and the goods manufactured by the plaintiffs are not sold in India since the year 1958 and, therefore, the goodwill or reputation which the plaintiffs may have acquired has stood extinguished. The defendants further claimed that the mark is used by the defendants in respect of tooth brushes which are not manufactured by the plaintiffs and there is no likelihood of any deception in the mind of the customer. The defendants have set out in Exhibit '1' to the affidavit in reply particulars of sales of tooth brushes, and sales expenditure on advertisement publicity for the period commencing from 1982 till the end of year 1986-87. The maximum sales are to the tune of Rs. 2, 52, 196.08 and the minimum sales are to the tune of Rs. 20,391.08. The learned trial judge, after considering the affidavit filed on behalf of the defendants, felt that the plaintiffs had made out a case for grant of interim relief and accordingly, interim relief in terms of prayer (a) of the Notice of Motion was granted. The order of the learned Single Judge is under challenge.;