Goodwill means an intangible asset taken into account in assessing the value of the enterprise and reflecting its commercial reputation. One cannot be allowed to make use of the reputation and goodwill of the other by adopting his trade mark or a deceptively similar trade mark for his product. On the same principle he cannot be allowed to take advantage of the pendency of litigation between the one whose rights he has infringed and the third party. This was so reiterated in and Coolways India v. Princo Air conditioning and refrigeration (1993 PTC (Suppl) (1) 470 (Del.)) and repeated once again in Visakha Chemicals v. Mala Ram & Sons (2006(32) PTC 441 (Del.)) by the Delhi High Court.
In the instant case the petitioner had filed a suit along with application for interlocutory relief for infringement of trademark, passing off, infringement of copyright, rendition of accounts and delivery in respect of trademark and packaging of products ‘ROCHAK’ and ‘AM PACHAN’ which were churan and tablets for digestive purposes, against the defendant who were using the same names. The plaintiff had adopted the name ‘ROCHAK’ in 1982 and ‘AM PACHAN’ in 1985. Ad interim orders were granted in favour of the plaintiff. The defendant averred that no trademark rights or significance could be attached to the word ‘AM PACHAN’ as it was not a trademark and was descriptive as well as generic and laudatory in nature commonly used in relation to churan tablets. He also claimed that the plaintiff had changed the trademark/label ‘ROCHAKA’ to ‘ROCHAK’ when opposed on advertisement, on 12.10.2001 and also that the trademark ‘AM PACHAN’ originally belonged to a third party from Nepal which was registered there.
The court comparing both the two packagings held firstly, that the defendant clearly attempted to pass off the goods and replicate the packaging of the plaintiff. It was the total impact, which is seen, and not merely particular colour combination. Visual perusal of the smaller and the larger packagings itself showed that a common man who consumed the product, was bound to fall into a deception that the products of the defendants emanated from the plaintiff. Secondly, with respect to prior use it followed the principle as laid down in Century Traders v. Roshan Lal Duggar & Co. & Ors., (AIR 978 Delhi 250) wherein it was held that ‘the registration of said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trademark registry does not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks’. Thus in an action of passing off, prior use of the mark in point of time is the relevant test. Thirdly, the only material placed was of registration of the mark stated to be carried out in Nepal for ‘AM PACHAN’. The present suit was held to be pre-trial and the adjudication had to be based on prima facie view of the matter. The impact of the registration of mark, if it was done in Nepal, was to be considered at the stage of trial. Fourthly, the factum of any proceedings initiated in respect of the trademark ‘ROCHAKA’ and the resultant registration of ‘ROCHAK’ in view of the objections did not affect the present case apart from the fact that the same related to a third party and the instant case was also one of passing off.
Thus, the interim orders, which restrained the defendants from infringing copyright in the artistic work of the plaintiff, was made absolute during the pendency of the suit.
© Lex Orbis 2006
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