M/s. Ganga Foundry v. M/s. Ganga Engineering Works

IN THE HIGH COURT OF JUDICATURE AT MADRASDATED : 29.01.2008CORAM :THE HON’BLE MR. JUSTICE S.TAMILVANANA.S.No.76 of 1997 M/s. Ganga FoundryRep. by its Managing PartnerK.Sama Naidu9/103, Pillaiyar Koil Street,Peelamedu, Coimbatore 641 004. .... Appellant/Plaintiff.vs.1. M/s. Ganga Engineering Works Rep. by its Proprietor V.P.Gangaswamy[Died]2. V.P.Gangaswamy [Died]3. G.Dhanapal .... Respondents/Defendants.(The 3rd respondent G.Dhanapal was brought as LR of the deceased R.1 and R.2 asper the order of Court, dated 08.04.2004made in C.M.P.Nos.19917 and 19918 of 1999Appeal filed under Section 96 CPC against the Judgment andDecree, dated 08.10.1996 made in O.S.No.93 of 1991 on the file of theFirst Additional District Judge cum Chief Judicial Magistrate,Coimbatore. For Appellant : Mr. N.Varadarajan For Respondents: No appearance JUDGMENTThis appeal has been preferred against the Judgment and Decree,dated 08.10.1996 made in O.S.No.93 of 1991 on the file of the FirstAdditional District Judge cum Chief Judicial Magistrate, Coimbatore. https://hcservices.ecourts.gov.in/hcservices/

2. The plaintiff, M/s.Ganga Foundry represented by its ManagingPartner had filed the suit against M/s.Ganga Engineering Works, byits proprietor, the first defendant. According to the plaintiff,M/s.Ganga Foundry is a registered partnership concern, dealing in themanufacture and selling of electric motors and pump sets, powerdriven pump sets mono block pump sets and borewell submersible pumpsets for about 25 years and also got registered trade mark consist oftwo letters 'GF' within a circle and the word "GANGA" in capitalletters below as the registered trade mark and got exclusive rightsto use the trade mark and also obtained ISI quality certificate forits products. According to the plaintiff during February 1990, it wasbrought to the notice of the plaintiff that the defendants are alsomanufacturing pumps, electric motors, electric pump sets andsubmersible pumps and also selling them under the trade mark and name'GANGA' within a hexagon box. The aforesaid plaintiff filed the suitseeking a decree of permanent injunction restraining the defendantsto use the registered trade mark "GANGA" in any manner and also fordamages and other consequential relief from the defendant.3. Per contra, the defendant herein has stated that he hadstarted his business in the name of "GANGA" in the year 1959 and wasdealing with textile business and from 1987, in addition to the same,produced motor pump sets and pumps in the trade name of "GANGA". Inthe additional written statement, it has been stated by thedefendants that the registration of trade mark by the plaintiff doesnot cover submersible pump sets under Section 12 of the Trade andMerchandise Marks Act, 1958.4. The trial court, considering the pleadings of both parties,has framed the following issues :1. Whether the plaintiff Messers Ganga Foundry is a registeredpartnership firm ?2. Whether the plaintiff firm has registered the trade markconsisting of two letters ' GF ' within a circle and the word "GANGA"in capital letters, as shown in the speciman, with regard to theelectric motors, pump sets, power driven pump sets mono block pumpsets and borewell submersible pump sets with the Registry to TradeMarks, Government of India, under Trade and Merchandise Marks Act of1958 ?3. Whether the Defendants M/s. Ganga Engg. Works has infringedthe exclusive right of the plaintiff's trade mark by using the word"GANGA" in Hexagon box, with regard to electric motors, pump sets,power driven pump sets, mono block pump sets and borewell submersiblepump sets ?4. Whether the Defendants are entitled to use the word, "GANGA"to their manufacturing goods, though the plaintiff has registered thetrade mark consisting of two letters 'GF' within a circle and a word"GANGA" in capital letters below it ? https://hcservices.ecourts.gov.in/hcservices/

5. Whether the plaintiff is entitled to a permanent injunctionrestraining the Defendants from using the word "GANGA" to theirmanufacturing goods ?6. Whether the Defendants are liable to produce the lables andname plates, containing the word "GANGA" into court ?7. Whether the plaintiff is entitled to damages, and if so towhat quantum?8. To what relief the plaintiff is entitled to ?5. In support of the case of the plaintiff, apart from examiningP.W.1, Exs.A.1 to A.37 were also marked. On the side of thedefendants, D.Ws.1 and 2 were examined and Exs.B.1 to B.30 weremarked. Considering the oral and documentary evidence and also thearguments advanced by both sides, the Court below partly decreed thesuit by granting permanent injunction restraining the defendants fromusing the word "GANGA" either with or without hexagon, with regard tothe manufacture of electric motors, power driven pump sets mono blockpump sets only with costs and the suit regarding to other relief isconcerned was dismissed. Aggrieved by which, the plaintiff in thesuit has preferred this appeal. 6. In this appeal, the Court has to decide the following pointsfor determination :1) Whether the defendants are entitled to use the registeredtrade mark "GANGA" for their manufactured motors, pumps, power drivenpump sets mono block pump sets and submersible pump sets ?2) Whether the appeal preferred by the appellant has to beallowed ?7. It is not in dispute in the appeal that the appellant /plaintiff is a registered partnership firm in the name and style"GANGA" Foundry. As held by the court below, the evidence of P.W.1and Ex.B.1, dated 08.06.1966, certified copy of acknowledgment ofregistration of firms of the plaintiff "GANGA" Foundry is sufficientto establish that the plaintiff is a registered firm.8. The trial court, considering the oral and documentaryevidence, has held that the plaintiff has a registered trade markconsisting of the 2 letters 'GF' within a circle and the word "GANGA"in capital letters, on 26.09.1980 with regard to electric motors,pump sets, power driven pump sets mono block pump sets, under theRegistry of Trade Marks, as per the Trade and Merchandise Marks Act,1958. Though the defendants had no registered trade mark, as found bythe court below, the appellant / plaintiff has established that thefirm has got registered trade mark on 26.09.1980, for a period ofseven years and the same was also renewed for another seven yearsfrom 26.07.1994. https://hcservices.ecourts.gov.in/hcservices/

9. The supporting documents for the same have been marked asExs.A.2, A.3 and A.13. It is seen that the certified copy of theregistration of trade mark, marked as Ex.A.2 in the suit consistingof two letters 'GF' and a word "GANGA" below it. As per Ex.A.2, theplaintiff has got his trade mark registered for seven years on26.09.1980, in respect of electric motors, pump sets, power drivenpump sets mono block pump sets for a period of seven years. Ex.A.3is the certified copy of the trade mark, dated, 12.01.1987, wherebyunder Section 4(2) of the Trade and Merchandise Marks Act, 1958, theregistration has been renewed by the appellant / plaintiff. 10. After the registration of the trade mark in favour of theplaintiff, notice to public was given by L.R.Swami Co., Trade MarkAttorneys, Chennai, under Ex.A.5, that the trade mark has beenregistered in favour of the plaintiff and also informed that thetrade name should not be used by any other person, except theplaintiff. As per this trade mark warning, it has been duly informedthat the plaintiff has got registered in Trade Mark No.366696 on26.09.1980 with two letters 'GF' and the word 'GANGA" in respect ofelectric motors, pump sets, power driven pump sets mono block pumpsets.11. Under the original of Ex.A.6, the renewal of trade mark infavour of the plaintiff was also advertised by L.R.Swami Co., TradeMark Attorneys. Ex.A.7 is the certified copy of the notice given byL.R.Swami Co., Trade Mark Attorneys preventing other persons fromusing the said trade mark. Ex.A.8 is the certified copy of the decreein O.S.No.197 of 1988, whereby the appellant herein, as plaintifftherein had obtained decree against one Santhosh Kumar Industries andanother, whereby obtained permanent injunction not to use trade markGF GANGA. The certified copy of the Judgment has been marked asEx.A.9. Ex.A.10 is the proceedings of the Deputy Registrar of TradeMarks Registry, Chennai, under Trade and Merchandise Marks Act,1958, in the matter of one opposition by Kirloskar Brothers Ltd.Ex.A.11 is the copy of the notice, dated 11.02.1990 sent by theplaintiff to the defendant. The reply notice, date 08.03.1990 hasbeen marked as Ex.A.13. The said documents show that the appellant /plaintiff has been the registered trade mark holder for the aforesaidtrade mark. 12. The second defendant proprietor of the first defendant hasadmitted in his evidence that the plaintiff had sent legal notice tohim, informing him that the defendant should not use the trade mark"GANGA", since the same has already been registered by the plaintiff.According to the second defendant, he was using the trade name"GANGA" for the machines and pump sets manufactured by him.Admittedly, as per the evidence of the second defendant, asproprietor of the first defendant concern, he has not registered anytrade mark in the name of "GANGA". The trial court has also given thefinding with regard to the same. https://hcservices.ecourts.gov.in/hcservices/

13. The trial court has also hold that the plaintiff's trade nameand the defendants trade name are identical with or deceptivelysimilar with each other and thereby defendants have infringed theexclusive right of the plaintiff's trade mark. It is not in disputethat the plaintiff, as per his registered trade mark is entitled tomanufacture and sell electric motors, power driven pump sets, monoblock pump sets in the trade name "GANGA" and the defendants have noright to use the trade name "GANGA" for their electric motors, powerdriven pump sets mono block pump sets.14. For issue number 5, the trial court has held that theplaintiff is entitled to permanent injunction restraining thedefendants from using the word "GANGA" either with or without Hexagonwith regard to their manufacturing of electric motors, power drivenpump sets and mono block pump sets only and not for the borewellsubmersible pump sets. 15. Mr. N.Varadharajan, learned counsel appearing for theappellant submitted that the registered trade mark of theappellant / plaintiff would also include borewell submersible pumpsets. According to him, the definition of electric motors, powerdriven pump sets and monoblock pump sets would cover submersible pumpsets also. It is not in dispute that the motor pump sets, which areplaced below the ground level or at the water level is known assubmersible pump set and therefore, the trial court could havegranted permanent injunction, as prayed for in the plaint, includingborewell submersible pump sets.16. Learned counsel for the appellant drew the attention of thisCourt to the dictionary meaning of the word "Pump". As per the newOxford Dictionary of English, pump means a mechanical device usingsuction or pressure to rise liquids etc. It is not in dispute thatelectric motors, power driven pump sets, monoblock pump sets andborewell submersible pump sets are being used for similar purposedunder different circumstances. In fact, the pump sets are bringoperated by way of using electric power, mechanical power or solarpower. As there is similarity in the manufacture of electric motors,power driven pump sets, monoblock pump sets and borewell submersiblepump sets, the same were manufactured by the plaintiff as well as thedefendants, due to the similarity in the mechanical device. In suchcircumstances, as contended by the learned counsel for the plaintiff,the interpretation would be just and proper, if it covers all similarmechanical devices, such as electric motors, power driven pump sets,monoblock pump sets and borewell submersible pump sets. 17. As per Section 2 (1) (h) of the trade mark Act, 1999,"deceptively similar" means a trade mark which is deemed to bedeceptively similar to another mark, if it so nearly resembles theother trade mark or which may likely to deceive or cause confusion https://hcservices.ecourts.gov.in/hcservices/ in the minds of the public. As per Section 2 (1) (j) "goods" meansanything which is the subject of trade or manufacture. In the instantcase, as contended by the learned counsel for the appellant, it isseen that the plaintiff has got registered trade mark to manufactureand sell electric motors, power driven pump sets and monoblock pumpsets in the trade name of "GANGA" having trade mark 'GF' within acircle and the word "GANGA" in capital letters below it andregistered under the Trade and Merchandise Marks Act, 1958.18. As per Section 29 (2) (c) of the Trade Mark Act, 1999, aregistered trade mark is infringed by a person, if the goods orservice covered by such registered trade mark is likely to causeconfusion on the part of the public or which is likely to have anassociation with the registered trade mark. In the instant case, itis seen that the defendant's proprietary concern has been using thetrade mark "GANGA", for which no trade mark had been registered bythe defendants. Further, as the trade mark was already registered bythe appellant / plaintiff, the respondents / defendants cannotregister a deceptively similar trade mark, since it may likely tocause confusion on the part of the public and therefore, consideringthe above facts and circumstances, the trial court has rightly heldthat the plaintiff is entitled to get permanent injunction againstthe defendants restraining them from using the word "GANGA" eitherwith or without Hexagon with regard to its manufacturing of electricmotors, power driven pump sets and monoblock pump sets. However, thetrial court has not extended the permanent injunction, so far assubmersible pump sets is concerned. The aforesaid manufactured goodsare similar motors and mechanical devices used as pump sets. The onlydifference for submersible pump set is that it can be placed belowthe ground level or at the water level for pumping water andtherefore, it could be within the purview of electric motors, powerdriven pump sets and monoblock pump sets, so far as it relates to theregistered trade mark is concerned.19. It is not in dispute that the first defendant, sole tradingconcern is also dealing in manufacture of aforesaid electric motorsand pump sets and therefore, so as to avoid the confusion in thetrade mark, they could have obtained some other registered trade markfor their manufacturing goods, for a healthy trend in themanufacturing of electric motors and pump sets. It cannot be disputedthat for each category of similar manufacturing goods, separateregistered trade mark is not required and deceptively similarunregistered trade mark would certainly confuse the public in theidentity of such manufactured goods and therefore, the trial courtcould have granted permanent injunction against the respondentsherein, with regard to manufacture and selling of electric motors,power driven pump sets and monoblock pump sets, including borewellsubmersible pump sets. So far as the prayer seeking damages isconcerned, considering the available evidence, this Court is of theview that there is no error in dismissing the said claim. https://hcservices.ecourts.gov.in/hcservices/

20. Considering the above facts and circumstances, this Court isof the view to hold all the points for determination infavour of the appellant and accordingly, he is entitled to getinjunction restraining the respondents / defendants from using thetrade mark 'GF' and "GANGA" for manufacturing and selling hiselectric motors, power driven pump sets, monoblock pump sets andborewell submersible pump sets. However, it is held that the claim ofthe appellant / plaintiff with regard to damages has not beenestablished.21. In the result, the appeal is partly allowed and thereby,granted permanent injunction, restraining the respondents /defendants in the suit, from using the word "GANGA" either with orwithout Hexagon with regard to manufacturing or selling of theirelectric motors, power driven pump sets, monoblock pump sets and borewell submersible pump sets. So far as the prayer for damages isconcerned, the decision of the trial court is confirmed. However,there is no order as to costs. Sd/-Asst. Registrar./true copy/Sub Asst. Registrar.tsvnToThe First Additional District Judge cum Chief Judicial Magistrate,Coimbatore. Copy To: The Section Officer, VR Section,High Court, Madras. A.S.No.76 of 1997vsv[co]sky/11.3.