Bhaskar Bhattacharya, J. - (1.) This application is at the instance of a plaintiff in a suit for declaration and injunction alleging violation of registered Trade Mark and copyright and also complaining "Passing Off' and is directed against Order No. 31 dated 27th April, 2004 passed by the learned Judge, 3rd Bench, City Civil Court at Calcutta in Title Suit No. 27 of 2003 thereby rejecting an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure filed by the appellant for restraining the respondents from committing breach of Trade Mark and copyright and passing off his own goods as that of the appellant.
(2.) The appellant filed in the City Civil Court at Calcutta, a suit being Title Suit No. 27 of 2003 thereby claiming the following relief: "(a) Declaration that the plaintiff alone is entitled to use the trade mark and/or the artistic work and/or the name, brand TAJ appearing in the label marked 'A' and annexed to the plaint for carrying on its business in respect of Buckets, Pans, Mugs, Drums and allied goods and/or goods of the same description; (b) Decree of perpetual injunction restraining the defendants, their proprietors, partners, directors, and every person in charge of and for the conduct of the business and each of them whether by themselves or by their servants, agents, dealers, stockists, or otherwise howsoever from infringing the plaintiffs registered trade mark TAJ, as per annexure 'A' hereto or any other mark, name, brand either same and/or visually and/or phonetically similar to the plaintiffs original trade mark TAJ or colorable imitation thereof; (c) Decree of perpetual injunction restraining the defendants, their proprietors, partners, directors and every person in charge of and for the conduct of the business and each of them whether by themselves or by their servants, agents, dealers, stockists, or otherwise howsoever from infringing the plaintiffs copyright in respect of the artistic work (label) TAJ, registered under No. A-56999/99, or any label (artistic work) similar thereto; (d) Decree of perpetual injunction restraining the defendants whether by themselves, their proprietor, partners, directors, employees, servants, agents or otherwise howsoever from in any way manufacturing, selling or offering for sale or marketing or advertising the products viz. Buckets and goods allied thereto bearing the trade mark MAJ as per annexure 'B' hereto, or any other mark which is phonetically and/or visually similar thereto; (e) Decree of perpetual injunction restraining the defendants, their proprietors, partners, directors, and every person in charge of and for the conduct of the business and each of them whether by themselves or by their servants, agents, dealers, stockists, or otherwise howsoever from using, selling, advertising the mark/artistic work TAJ (label) or any name or mark or brand or work being identical with and/or deceptively similar to and/or a colorable imitation of the plaintiffs original trade mark/artistic work TAJ as in annexure 'A' hereto, in any form and manner whatsoever, in the course of business; (f) Perpetual injunction restraining the defendants, their proprietors, partners, directors, and every person in charge of and for the conduct of the business and each of them whether by themselves or by their servants, agents, dealers, stockists, or otherwise howsoever from passing of or attempting to pass off or causing or enabling or assisting others to pass off Buckets, Pans, Mugs, Drums and/or goods of same description in the course of trade with the name/work/mark TAJ as in annexure 'A', and MAJ as in annexure 'B' hereto in any form, get up, manner whatsoever; (g) Delivery up for destruction of all impugned goods, papers, labels and/or documents, packets, wrappers, stickers, in the possession, custody or control of the defendants or any of them which bear the mark/name/work MAJ as in annexure "B" hereto in any form whatsoever; (h) Leave under Order 2 Rule 2 of the Code of Civil Procedure; (i) An inquiry into the damages suffered by the plaintiff and a decree in favour of the plaintiff of such sums as may be found due upon such inquiry; (j) Such other injunction as should afford adequate relief to the plaintiff; (k) Receiver; (1) Attachment; (m) Costs; (n) Further or other relief."
(3.) The case made out by the appellant may be summarised thus: (a) The appellant, at all material time, has been carrying on the business of manufacturing and marketing G.I. Bucket for nearly two decades under the trading style of G. N. Bucket Industries having its principal place of business at Bholanath Rudra Road, Ranaghat, District Nadia. The appellant is one of the leading and reputed manufacturers and merchants in the field of Buckets, particularly, in the Eastern Part of India. (b) For the purpose of identifying and distinguishing his products from those of others in the course of trade, the appellant had conceived of, originated and adopted a composite mark, inter alia, comprising the name and word TAJ written in golden colour within two concentric oval shaped ellipse, with bright red coloured background for use as a label, brand, mark on his products and commenced using the said mark as its trade mark on the products of the appellant from the year 1979. (c) The products of the appellant are manufactured and marketed under the trade mark TAJ and have demand in all parts of Eastern India and the aforesaid products are available and sold throughout the State of West Bengal. (d) The appellant in order to promote and publicize his product with the mark TAJ has caused large scale advertisements in the newspapers, journals and in other form of sales promotion. Those advertisements have received intense attention and have boosted the popularity of the mark TAJ amongst the trading people and the customers and considerable amount of money has been spent each year towards those advertisements and sale promotions of the appellant's products with the mark TAJ. (e) By virtue of very extensive user of the mark / brand TAJ for continuous period of over 23 years, large scale advertisements and appreciable sale of the products of the appellant, the composite mark TAJ became connotative and denotative of the appellant and no one else. (f) The customers and trading community come to denote the petitioner's superior products with the distinctive get up, colour combination, writing arrangement, style of presentation a'nd the name TAJ in the composite label. (g) The appellant besides acquiring Common Law Rights to the said composite trade mark TAJ with a view to further acquire and fortify its right under statute had duly applied for registration of the said composite mark TAJ under the Trade and Merchandise Marks Act, 1958 and on completion of all procedure laid down under the said Act and the Trade and Merchandise Marks Rules, 1959 duly obtained registration thereof. (h) In consequence of appreciable user of the said mark TAJ on Buckets etc. and the advertisement and publicity associated therewith, the appellant has acquired valuable goodwill and reputation in regard to the said mark TAJ with the goods associated and also attached to the business of the appellant. (i) To protect the artistic work, as defined in section 2(c) of the Copyright Act, 1957, the appellant applied for and duly obtained the registration of the label TAJ as a piece of artistic work under the Copyright Act, 1957. (j) The appellant, thus, by virtue of registration of the trade mark mentioned earlier had acquired exclusive right to the use of the composite trade mark TAJ and such right will be deemed to be infringed when any person uses in relation to the same or similar goods in the course of trade, such mark which is identical with and/or deceptively similar to the trade mark of the appellant. (k) As the appellant is the owner of the artistic work including the colour combination, style of writing, get up etc. in its label/composite trade mark TAJ used in connection with its business and since the said artistic work is registered under the Copyright Act, 1957, the appellant has exclusive right to reproduce and publish the said artistic work in any form for the purpose of trade and in case, any person does anything which contravenes the exclusive right conferred upon the owner of the said copyright, the act of the said person should be treated as infringement of copyright. (1) The use of the composite trade mark TAJ and/or any deceptively similar trade mark in relation to the appellant's goods in the course of trade by any other person should be understood by the trade and the public as that of the appellant's products and thereby such products with the falsified mark and infringed copyright would be passed off as and for those of the appellant's product causing confusion and deception in the minds of the unwary and unsuspecting member of the public and the trade. (m) The appellant, therefore, was entitled to all the relief provided in the Trade and Merchandise Marks Act, 1958 and the Copyright Act, 1957 and also for preventing "Passing Off." (n) In the year 1992, the appellant learnt of the use of trade mark TAJA by the respondent Nos. 1 and 2. As the said trade mark TAJA of the respondent Nos. 1 and 2 was considered to be deceptively similar to the trade mark TAJ of the appellant and as there was immense confusion and deception since the said trade mark TAJA of the respondent Nos. 1 and 2 in relation to Buckets was passed off in the markets, the appellant filed a suit being O. Suit No. 13 of 1992 in the Court of learned District Judge at Krishnagar, district-Nadia. The learned District Judge, Krishnagar, after hearing passed an order of ad interim injunction restraining the respondents from using the trade TAJA in relation to Buckets. (o) In the course of the said proceedings, the respondent Nos. 1 and 2 opted for a compromise and in pursuance thereof, a Solenama was filed. In the said compromise petition, the respondent Nos. 1 and 2 agreed and undertook not to use the trade mark "TAJA" or "TAZA" or any name or names visually and phonetically similar thereto and to the appellant's label and mark TAJ annexed to that petition. (p) The respondents also undertook not to sell or offer for sale either by themselves or each of their stockists the Buckets or like products bearing appellant's trade mark or the name TAJA or TAZA or any name or names visually or phonetically similar thereto at any time in future. (q) The said suit was decreed on the basis of said compromise and a token sum of Rs.1001/- was awarded as compensation to the appellant. (r) On 25th June, 2002, the appellant received complaint from the markets that inferior quality of G.I. Buckets are being sold in the different parts of Kolkata and adjoining areas with a mark or brand which is deceptively and confusingly similar to the appellant's registered and reputed trade mark TAJ. Thereafter, the appellant caused enquiries to be made and had obtained Buckets with the falsified label mark MAJ in an identical get up, design, colour combination, style of writing and arrangement as those of appellant's trade mark or label from the shop of respondent No. 3. (s) The appellant had also got information that respondent Nos. 1 and 2 are the persons who manufactured and marketed those products with the falsified mark MAJ and were pushing insidiously their inferior quality of products with the falsified mark MAJ into the markets in order to pass off their goods with the falsified mark as and for the goods of the appellant's original mark TAJ.;