Ruma Pal, J. - (1.) The petitioner is the sole proprietor of a concern by the name of Lucknow Zarda Factory. The concern was initially a partnership concern of the petitioner and the respondent no.4. The business of the firm was to manufacture and sell different forms of chewing tobacco which included Zarda and Kimam. As far as the kimam is concerned, the sale was effected in small containers with a silver foil wrapping round it. On the silver foil the words, "Gulabi Kimam" in Hindi, Urdu, Bengali and English appear against a purple background ringed in red. This small container was then packed in a cardboard carton with the dimension of about 1" x 1". On the four sides of the cardboard carton the words, "GULABI KIMAM" appear in 4 languages already referred to against a red background within a yellow ring. The petitioner also claims that the firm also sold Zarda in a loose form in pouches. The pouch is about 4" x 4" square with white margin and is red labelled with the words, "125 Gms." written in a circle at the top left-hand corner on a white background. The words, "S.M. Ashraf Ali's" are written in italics in white over the word, "ZARDA" which is in bold print written in red on a white background diagonally across the pouch. At the bottom right-hand corner the words, "LUCKNOW ZARDA FACTORY" with an emblem carrying letters 'L', 'Z' and 'F' entwined appear. The word, "LOOSE" again in bold letters is written in red on a white background at the bottom of the pouch.
(2.) The petitioner's case is that the firm had built up a wide reputation in respect of Kimam and Zarda and the petitioner has given the sales figures in respect of both the products for the last 5 years. On 5th February, 1993 the firm of Lucknow Zarda Factory applied for registration of the Trade Mark, "GULABI KIMAM". In the application the date of user has been indicated as "Since January, 1977".
(3.) On 22nd October, 1993 the firm of Lucknow Zarda Factory was dissolved by a Deed of Dissolution. From the Deed of Dissolution it appears that the business was being carried on since 29th March, 1973 in partnership. The relevant clauses of the Deed are Clauses 4, 5 and 6 which read as follows :- "4. The party of the Second Part will be entitled to the goodwill of the firm including exclusive right to use the name of M/s. Lucknow Zarda Factory as the name of the business to be carried on by him as the sole proprietor or otherwise from the date of these presents and the name S.M. Ashraf Ali as brand/trade name and will be entitled to use the following brand names for the goods manufactured by him :- (a) S.M. Ashraf Ali's Zarda. (b) S.M. Ashraf Ali's Zarda Summer Quality. (c) S.M. Ashraf Ali's Gulabi Kimam. (d) S.M. Ashraf Ali's Mushky Kimam. (e) S.M. Ashraf Ali's Kasturi Kimam. (f) S.M. Ashraf Ali's Bahar No. 19. 5. The party of the first Part will not use the firm's name of "Lucknow Zarda Factory" or the name, "S.M. Ashraf Ali" as Brand/Trade Name or the Brand Names as mentioned in Clause 4 hereof. The party of the First Part shall not be entitled to use the name "S.M. ASHRAF ALI" either deceptively similar and/or in part or full, i.e., by adding for deleting any symbol and/or word at the affix or prefix to the aforesaid name of S.M. ASHRAF ALI. 6. Subject to the compliance of the terms and conditions contained in the above Clause and also the terms and other conditions contained in the Memo. of Understanding this day the party of the First Part will take over exclusively the assets which are enumerated in Schedule "A" hereunder written and the party of the Second Part will take over exclusively the assets which are listed in the Schedule "B" hereunder written." ;