- (1.) THIS reference arises out of an appeal in a suit for infringement and passing off of the trade mark SONY. The plaintiffs in the suit (Title Suit No. 129 of 1997) instituted before the learned District Judge, Alipore, 24-Parganas (South) are Sony Kabushiki Kaisha, a company organised under the laws of Japan (who are also known as Sony Corporation ). In the suit, they alleged violation of their trade mark rights in respect of the trade mark SONY by the defendants/respondents. The appellants being the plaintiffs in the suit, claim to be a multinational company engaged primarily in the business of manufacture and sale of diverse range of goods including video and audio equipments, televisions and other electronic goods under the trade mark SONY. The complain against the respondents is that they were applying the same trade mark on their products, being hosiery goods, briefs and underwear, without the authorisation or consent of the appellants. In connection with this suit, an application for interim injunction was taken out by the appellants before the trial court, seeking restraint order on use of the mark SONY by the respondents. Such prayer was rejected. Against this order of rejection of prayer for temporary injunction by the trial court, appeal before this Court was preferred by Sony Corporation.
(2.) BEFORE the Hon'ble Division Bench hearing out the appeal, a point was taken by the respondents that the class or category of goods of the parties being entirely different, the appellants were not entitled to relief under the principles of passing off. The Hon'ble Division Bench observed: ". we ourselves are of the view that if a person is the holder of a trade mark which has acquired a wide reputation transcending international barriers even though in respect of a specified clause or category of goods, that trade mark cannot be allowed to be violated by another person in respect of different category of goods because in our view that other person will be deliberately using the trade mark of the former with an intent to get some undue advantage because of its reputation and goodwill. "
(3.) ON an identical point, however, there is an earlier decision of an Hon'ble division Bench of this Court in the case of Rustom Ali Molla and Ors. Vs. Bata shoe Company reported in AIR 1957 Cal 120 in which a contrary view has been expressed. Two passages from this judgment were considered by the Hon'ble division Bench in the appeal out of which this reference arises, before referring the matter for being reconsidered by a larger bench. These are contained in paragraphs 9 and 17 of the Report, and the relevant portion of this judgment, as recorded by the Division Bench in the order dated 4th August 1999 are reproduced below: "in our view, the mark 'bata' not having been associated in the public mind with lungis or handkerchiefs, these goods being of a totally different character from those of the respondents' goods, the appellant's user of the said mark or name in respect of lungis or handkerchiefs of their manufacture cannot constitute any passing off of their goods as that of the respondents. " The Hon'ble Division Bench of this Court in the case of Rustom Ali Molla further observed: "in the facts of this case, the correct legal position appears to us to be what was laid down in the following observation of Lord Watson delivering the judgment of the Board in the case of (1887) 12 AC 453, at p. 457 (B ). "the acquisition of an exclusive right to a mark or name in connection with a particular article of commerce cannot entitle the owner of that right to prohibit the use of others of such mark or name in connection with goods of a totally different character and that such use by others can as little interfere with his acquisition of the right. " we would also observe in passing that a similar view was expressed by cotton L. J. in the case of Edwards V. Dennis (1885) 30 Ch. D. 454 at p. 471 (i ). ";