Kerala High Court · 2010

RFA. 371 of 2007 - 4 -trade mark “Nirapara and Device” under the new nameS.N.Rice Mills Ltd. by inducting his wife Ammini Karnan aspartner. The plaintiffs' products are popularly known withthe name Nirapara and Device. Nirapara has become thetrade name and brand name of plaintiffs' products. Theplaintiffs' products are all of superior quality. They are soldin various parts of Kerala and all other States in India. Theyare marketed in foreign countries also. Because of theirhigh quality and purity, plaintiffs' products popularly calledas Nirapara products are purchased by customers. Thetrade mark itself is attracting customers for buying variousproducts of the plaintiff. It was the plaintiff who first startedto use the trade mark and trade name “Nirapara”. The wordNirapara has become the trade name and brand name of theplaintiffs' products. The plaintiffs are enjoying highreputation and goodwill in respect of their products whichare being identified by the trade mark “Nirapara and RFA. 371 of 2007 - 5 -Device”. No one has the right to use the trade mark“Nirapara” without the knowledge and assignment from thefirst plaintiff. The plaintiffs have expended heavily foradvertising their products through various media both inIndia and abroad. The volume of business of the plaintiffs isincreasing every year. The plaintiffs have acquired rightover trade mark “Nirapara and Device” and the trade nameand brand name “Nirapara” belongs absolutely to theplaintiffs.3. The plaint alleges that the first defendant hasstarted business of rice, rice flours and the various disheslike dosappodi, puttupodi etc. in order to take advantage ofthe popularity, reputation and goodwill enjoyed by theplaintiffs and their products. Even the change of name waswith this objective. The defendants are now using the trademark and trade name identical, similar and deceptivelysimilar to that of the plaintiffs' trade mark “Nirapara and RFA. 371 of 2007 - 6 -Device”. The defendants are creating confusion among thegeneral public and customers. The public and customersare being deceived by the defendants' using of the nameand trade mark which is deceptively similar to that of theplaintiffs. The plaintiffs' trade mark has got registrationfrom the Government of Behrain and Dubai and process forregistration is in progress in other countries also. Theplaintiffs' application for registration of the trade mark ispending with the office of the Registrar of Trade Marks,Chennai. The plaintiffs' trade mark is distinctive and itdistinguishes plaintiffs' products from similar productsmanufactured by others including the products of thedefendants. The defendants intention is to pass off theirproducts as that of the plaintiffs. For this the defendants areusing the trade mark of a Para filled with flour and twocereal like shoots at both ends as their trade mark. Thedefendants are also using the name “Nirapara”. The trade RFA. 371 of 2007 - 7 -mark and name used by the defendants is identical to thatof the plaintiffs. The intention of the defendants is malafide. Even though the first defendant applied forregistration under clause 30 before the Trade Mark Registry,Chennai the application was opposed by the plaintiffs andthe registering authority dismissed the application by theirorder dated 7-3-2005. The defendants have absolutely noauthority to use the trade mark and trade name of theplaintiffs. The defendants' act is illegal. The plaintiffs aresuffering heavy loss because of the defendants' activities.Unless this illegal activities are prevented, the loss to theplaintiffs will be heavier. Hence the suit.4. It was a joint written statement which was filed bythe defendants. It was contended that the suit is notmaintainable. In view of the allegation that K.K.Karnanexecuted an assignment deed selling the entire right of theunregistered trade mark “Nirapara and Device” along with RFA. 371 of 2007 - 8 -the goodwill to Smt.Ammini Karnan for an amount ofRs.1000/- Sri.Karnan has no locus standi to institute the suitagainst the defendants. The South Kerala Food ProcessorsPvt. Ltd. was registered as a private limited company on 12-4-1988. In the year 1995 the Directors of that companypassed a resolution in terms of Section 21 of the CompaniesAct changing the name of the company as Nirapara RollerFlour Mills Pvt. Ltd. From the year 1988 onwards the firstdefendant company is carrying on the business of operatingflour mills for wheat, rice or other grains and deal in suchproducts of grains. One of the main object of the companyis to manufacture, produce, process, purchase, store,import and also deal in food products out of wheat, paddy,rice, barley etc. Ever since the incorporation of thecompany they have honestly adopted the trade mark“Nirapara” since 1990 for its business. To the defendants'knowledge no one is using a similar trade mark in respect of RFA. 371 of 2007 - 9 -wheat products such as maida, sooji and aatta. Thedefendants have been using the trade mark continuously,extensively and with bonafides ever since 25-3-1990 inrespect of the above products. Because of this continuousand extensive use, the defendants have obtained a veryhigh reputation. The defendants' trade mark has becomeexclusively associated with the products of the defendants'company since 1991. The first defendant company filed anapplication before the Registrar of Trade Marks in the nameof South Kerala Food Processors for registration of the word“Nirapara” brand with a device of corn and container full offlour in respect of wheat products such as maida, sooji,aatta, bran and bran flakes. The above application wasnumbered as 543880 under clause 30. The application wasaccepted by amending the goods such as maida, sooji andaatta with disclaimer of word bran device of corn and deviceof container full of flour. The application submitted by the RFA. 371 of 2007 - 10 -defendants was advertised as accepted in the Trade MarkJournal dated 1-7-1996. Though the opposition filed by thefirst plaintiff was upheld by the registering authority, thedefendants have preferred appeal before the IntellectualProperty Appellate Board and the matter has not becomefinal. The defendants have also filed an application forregistration of its trade mark Nirapara brand under clause31 for registering its products with respect to the productionand marketing of bran, bran flakes, cattle and poultry feeds.The Registrar of Trade Mark issued a certificate ofregistration of trade mark for the trade name and deviceNirapara brand. The defendant company is the owner oftrade mark Nirapara brand and the company is enjoying therights conferred by registration as per the the provisions ofthe Trade Mark Act. The registered owner of the trade markhas the exclusive right to use the trade mark in relation tothe goods in respect of which the trade mark is registered. RFA. 371 of 2007 - 11 -Because of the continuous use of the trade mark Niraparasince 1990 it has attained very high reputation and hasbecome exclusively associated with the aforesaid goods ofthe company. Because of the superior quality of the goodsand marketing skills, the defendant company became verypopular and the trade name with its device Nirapara becamedistinctive of its goods. The plaintiffs never obtained aregistration for the trade mark Nirapara either under clause30 or clause 31. From the affidavit filed before the Registrarof Trade Marks it is clear that the plaintiffs have no rightover the trade mark. The trade mark “Nirapara” was notadopted by the plaintiffs as alleged in the plaint. Theagreement dated 27-6-1977 alleged to have been executedbetween K.K.Karnan and K.K.Padmanabhan reveals the factthat the firm name for marketing their rice products wasK.K.Karnan and Company. The plaintiffs have no case ofadoption of the disputed trade mark with respect to the RFA. 371 of 2007 - 12 -defendants' products viz., maida, aatta and sooji. They arealso not making any claim over any of the goods mentionedin clause 31 of the Trade Mark Rules pertaining to bran,bran flakes, cattle and poultry feeds. Even as per theallegations in the plaint adoption of the disputed trade markby their establishment has reached a stage offragmentation. The plaintiffs have no right over the trademark “Nirapara”. They have not established that thedisputed trade name Nirapara was being used with respectto the goods mentioned therein. The trade mark Niraparahas become distinctive and distinguished with thedefendants' products. The defendants have never takenadvantage of the popularity and reputation or goodwillenjoyed by the plaintiffs. Even though the trade mark andtrade name used by the plaintiffs may be identical andsimilar to that of the defendants, they have no mala fideintention to pass off their products as that of the plaintiffs RFA. 371 of 2007 - 13 -by deceiving and confusing the general public andcustomers. In 1996 itself plaintiffs were aware of the use ofthe trade name Nirapara by the defendants. Even though alawyer notice was issued to the defendants regarding this noaction was taken in pursuance of that notice. The plaintiffsare therefore guilty of acquiescence and they are notentitled for a discretionary relief of injunction. At this stagethe plaintiffs are not entitled to initiate any action. Noexplanation is given by the plaintiffs for the inordinate delayof 9 years in filing the suit, especially when the defendantshave been, in the market for more than 15 years and thedefendants sales have gone up to crores of rupees. Thefirst defendant's company's name was changed with theapproval of the registrar of companies. The plaintiffs whowere aware of this change of name did not take any actionunder section 20 of the Companies Act. The first defendantcompany is having an independent entity and reputation in RFA. 371 of 2007 - 14 -the market with large number of customers. The suit isliable to be dismissed. 5. On the basis of the above pleadings the learnedDistrict Judge raised the following issues for trial.1. Whether the suit is maintainable?2. Whether the plaintiffs are the prior users of anunregistered trade mark “Nirapara”?3. Whether the plaintiffs are entitled to the injunction?6. At trial the evidence on the side of the plaintiffsconsisted of the oral testimonies of PW-1 to PW-8 anddocuments Exts.A1 to A49 apart from X-1 and X-2. On theside of the defendants the solitary witness was DW-1 anddocuments B-1 to B-35(A) were marked. The learnedDistrict Judge considered issue No.1 first. It was noticedthat though it is contended in the written statement that thesuit is not maintainable, the defendants have not shown orexplained as to how the suit is not maintainable. The DistrictJudge assumed that the contention regarding maintainability RFA. 371 of 2007 - 15 -is raised on the premise that K.K.Karnan, Managing Partnerof plaintiffs 4 and 5 having already assigned the tradename/trade mark to the first plaintiff has no locus standi tofile the suit. Making a survey of the documents the learnedDistrict Judge found that the claim in the plaint is that thefirst plaintiff has become the absolute owner of the disputedtrade mark “Nirapara”. It was noticed that K.K.Karnanwhose locus standi is disputed is not a party to the suit, buthis name figures in the plaint as the Managing Partner ofplaintiffs 4 and 5 which are partnership firms in which thefirst plaintiff is also a partner. The learned District Judgereferred to Section 39 and held that assignment of anunregistered trade mark is valid. In this context, thelearned District Judge relies on the judgment of theSupreme Court in Dariwal Industries Ltd. v. M.S.S. FoodProducts, 2005 SAR (civil) 244. Mainly on the reason thatKarnan is not a party to the suit in his personal capacity and RFA. 371 of 2007 - 16 -on the reason that no further arguments were raised toshow that the suit is not maintainable, the learned DistrictJudge would answer issue No.1 and hold that the suit ismaintainable. Considering issue No.2 the learned DistrictJudge would notice that Ext.A40 is the pouches containingthe trade name and trade mark of the plaintiffs whileExt.A41 is the pouches containing the trade name and trademark of the defendants. According to the learned DistrictJudge there cannot be any doubt that the trade mark andtrade name shown in Exts.A40 and A41 are similar and anordinary customer will be confused by the similarity of thesetwo. Ext.B28 is partnership agreement dated 27-6-1977executed between K.K.Karnan and his brotherK.K.Padmanabhan. Ext.A4 is the partnership deed dated18-6-1991 executed between Karnan and his wife AmminiKarnan in the name S.N. Rice Mills. Ext.A7 is certificate ofincorporation dated 19-6-2001 in respect of K.K.R. Agro RFA. 371 of 2007 - 17 -Mills Pvt. Ltd. Ext.A6 is an assignment deed dated 12-11-01by which unregistered trade mark “Nirapara” along withgoodwill etc. is assigned by Karnan to Ammini Karnan andthe allegations in the plaint are all noticed by the learnedDistrict Judge to understand that the plaintiffs' case is thatfrom 1975 onwards the plaintiffs were using the disputedtrade mark of “Nirapara”. Ext.A10 certificate of registrationfrom sales tax department in respect of K.K.R.Mills, Ext.A11assessment order dated 13-6-1989 in respect of K.K.Karnanand Company for the assessment year 1987-88, Ext.A12the inspection report dated 10-8-1998 prepared by theSales Tax Officer in respect of the business place ofK.K.Karnan and Company, Ext.A20 sales tax registrationdated 24-8-2000 in respect of K.K.R. Flour Mills, A21 salestax registration in respect of K.K.R. Agro Mills Pvt. Ltd.dated 9-11-2001 onwards, A22 dated 29-3-2003 in respectof K.K.R. Food Products, A23 dated 3-3-1990 showing that RFA. 371 of 2007 - 18 -K.K.Karnan got registration under Sales Tax as dealer ofrice and paddy, A24 inspection report dated 13-3-1990prepared in respect of K.K.Karnan's business place, A26stock register of K.K.Karnan for the year 1989-90 are allrelied on by the learned District Judge to conclude that theplaintiffs establishments were functioning as pleaded by theplaintiffs. Oral evidence of PW-2, partner of M/s. J.V. &Sons, suppliers of jute bags is relied on by the court belowto accept the plaintiffs' case that M/s. J.V. & Sons used tosupply jute bags with trade mark “Nirapara” printed on thesame to the plaintiff. Oral evidence of PW-3, administratorof Okkal Sree Krishna Temple is relied on by the court belowto accept the plaintiffs' case that from 1984 onwardsadvertisement banners of Nirapara rice were being displayedduring the temple festival at the instance of K.K.Karnan.Testimony of PW-4, merchant of rice and rice productsbased at Kollam is relied on to believe the version of the RFA. 371 of 2007 - 19 -plaintiffs that from 1994 onwards they used to purchaseNirapara brand rice from Karnan. The oral testimony of PW-5 Addl. Sales Tax Officer, Perumbavoor during the periodJuly 1989 to January 1991 and Ext.A24 inspection reportand A25 and A26 stock registers of Karnan are relied on toaccept the case that Sri.Karnan was popularly calledNirapara Karnan and his products were popularly called bythe name Nirapara. The evidence of Pw-6 a whole salemerchant in rice and provisions at Palai is believed by thecourt below to prove Exts.A15 andA16 carbon copies of billbooks kept by K.K.Karnan and Company in respect oftransactions on 22-12-1988 and 5-1-1989. Ext.A17 daybook kept by K.K.Karnan and Company reflecting Exts.A15and A16 is also taken into account by the court below toconclude that atleast during the period of 1988-89K.K.Karnan was marketing goods under Nirapara brand.Ext. X-1 notification in Malayala Manorama daily proved by RFA. 371 of 2007 - 20 -PW-7, an employee of Malayala Manorama daily dealing withan advertisement in respect of the installation of the firstautomatic rice mill by S.N.Rice Mills is very much relied onby the court below. According to the court below, Ext. X-1shows that the rice mill started business from 1975 onwardsand its genuineness cannot be doubted since the same wasreleased long before the litigation commenced. Ext.X2notification dated 9-6-1996 in Desabhimani daily in respectof “Niradeepam Rice” manufactured by first defendantcompany is referred to by the court below to find that thetrade mark of the first defendant company is identical to thedisputed trade mark of the plaintiff. The learned DistrictJudge would make a survey of the defence evidenceparticularly the oral testimony of DW-1 and documentsExt.B2 certificate of incorporation dated 12-4-1988 inrespect of South Kerala Food Processors Pvt. Ltd. , Ext.B3dated 23-2-1995 showing the change of the name of Sough RFA. 371 of 2007 - 21 -Kerala Food Processors as Nirapara Roller Flour Mills Pvt.Ltd. Exts.B6 and B7 sales tax assessment orders of SouthKerala Food Processors Pvt. Ltd for 1991-92 and 1993-94,Ext.B8 assessment order for 1995-96 of the first defendantcompany, Ext.B9 stock statement of the first defendantcompany in respect of 1996-97, B10 to B13 assessmentorders for the years upto 2003-04, B14 certificate of salestax registration changing the name of South Kerala FoodProcessors, B19 registration certificate obtained by thedefendant company from the Industries Department, B16sanction order dated 7-12-1988 issued to the South KeralaFood Processors Pvt. Ltd from Vazhappally Panchayat forinstallation of a motor in its business place, B17 licenceissued under Kerala Food Grains dealers licensing order toSouth Kerala Food Processors Pvt. Ltd. B20 Panchayatlicence dated 10-3-2004, B21 receipt for payment of licencefee, B18 licence obtained under the Factories and Boilers RFA. 371 of 2007 - 22 -Act, B33 bill book of South Kerala Food Processors Pvt.Ltd. from 31-10-1990 dealing with sales of wheat and wheatproducts, B34 stock register of South Kerala FoodProcessors for 1991, B35 purchase register and concludethat there is no documentary evidence to show that before1995 the defendants have used trade mark Nirapara for saleof their products. According to the court, though thedefendants have obtained a registration for class 31 of theAct under the trade mark Nirapara for cattle and poultryfeeds as per B5 there is nothing to show that beforechanging their name the first defendant company hadpassed off their goods with the trade mark or trade nameNirapara. The statement in B31 issued on behalf of theplaintiffs that the trade mark Nirapara has been used by theplaintiffs from 1991 onwards highlighted by the defendantsin their arguments against the plaintiffs is considered by theDistrict Judge. According to the District Judge, the RFA. 371 of 2007 - 23 -explanation offered by PW-1 that the above statement is amistake committed by the Advocate while sending thenotice was a reasonable one and there was evidence oraland documentary to show that even before 1991 theplaintiffs were using the trade mark Nirapara. Thus on ananalysis of the evidence the court below concluded thatplaintiffs are the prior users of the trade mark Nirapara.Further, in this context the court below referred to Ext.A42copy of the FIR in crime No.370/2000 registered on thebasis of a complaint filed by PW-1 before the Judicial FirstClass Magistrate, Thiruvananthapuram alleging that histrade mark and trade name Nirapara and logo are beingmisused by the accused persons therein for passing offtheir products by some rival business men. A45 copy of thecomplaint filed by PW-1 against one NSN Reddy and othersbefore the Judicial First Class Magistrate's Court, Paravoorraising accusation similar to those contained in Ext.A42 is RFA. 371 of 2007 - 24 -also referred to. According to the court below when DW-1was examined with reference to Exts.A42 and A45 hisevidence was one of ignorance. This according to the courtbelow, will show that unlike the plaintiffs, DW-1 was notmuch concerned with the infringement of the trade mark byrival traders. Thus the court below concludes that it was theplaintiff who were vigilant in protecting their trade markfrom invasion unlike DW-1. On the basis of the analysis ofthe evidence the court below held that PW-1 and hisconcerns were prior users of the trade marks Nirapara andthe device therein and he assigned it to the first plaintiff byA6 and thereafter she has become the absolute owner of thetrade mark and with her permission the other plaintiffs areusing it. Thus issue No.2 was answered in favour of theplaintiffs.7. Considering issue No.3, grantability of the relief ofinjunction the learned District Judge would refer to various RFA. 371 of 2007 - 25 -judicial precedents and conclude that most customers of theplaintiffs are common men who will be confused by thesimilarity in the trade mark and logo presently used by theplaintiffs and the first defendant. Finding that the firstdefendant is not legally entitled to pass off their goods usinga trade mark which is identical or deceptively similar to thatof the plaintiffs, the court below held that the plaintiffs beingprior users are entitled for relief of injunction. The plea ofacquiescence taken by the defendants was also repelled bythe court below on the basis that the plaintiff was resistingthe defendants' application for registration before theregistering authority and thus agitating though before otherforums for protecting their trade mark. Resultantly thecourt below would answer the third issue also in favour ofthe plaintiffs and passed the impugned decree of prohibitoryinjunction. 8. It was very extensive submissions which were RFA. 371 of 2007 - 26 -addressed before us by Sri.T.Krishnan Unni, learned seniorcounsel for the appellant. According to Mr.Krishnan Unni,essentially passing off action is a common law remedyenunciated by the common law courts in England to redressthe tortious act of the defendant in passing of his goods asthe goods of the plaintiff. The tort lies in themisrepresentation by the defendant aimed at the potentialbuyers of their goods or services who are invited to thegoods or services believing that the goods are that of theplaintiff. This might be done by the use of a confusingly ordeceitful trade name, mark or other indication used by theplaintiff in respect of such goods or services. Passing offaction is based on the common law principle that nobodyhas any right to represent his goods as that of another.Referring to the judgment of House of Lords in ErvenWarnink v. J.Townend & Sons, 1979 FSR 397 Mr. Unnisubmitted that Lord Diplock in that case identified five RFA. 371 of 2007 - 27 -characteristics as the requisites for a valid cause of actionfor passing off – (1) a misrepresentation, (2) made by atrader in the course of trade, (3) to prospective customersof his or ultimate consumers of the goods or servicessupplied by him, (4) which is calculated to injure thebusiness or goodwill of another (in the sense that this is areasonably foreseeable consequence) and (5) which causesactual damage to the business or goodwill of the trade bywhom the action is brought (or in a quia timet) will probablydo so. Mr. Krishan Unni referred to the judgment of theSupreme Court in Cadila Health v. Cadila Pharma,2001 PTC300 SC and in Neinz Italia & another v. Dabur Idia Ltd.,(2007)6 SCC 1 and submitted that the above principle wasendorsed by the Supreme Court of India. According to him,in order that an action for passing off is successfullyestablished, it is necessary that all the aforesaid elementsshould be separately and cumulatively proved and if any RFA. 371 of 2007 - 28 -one of the elements is missing the action for passing off hasto fail. The learned senior counsel referred to the judgmentof the Supreme Court in Cadila Healthcare Ltd. v. DaburIndia Ltd. MIPR 2008 (3) 0162. Mr. Unni went on to arguethat various elements are to be proved by a plaintiff in anaction for passing off. According to him, of the variouselements, the primary and the most essential one is that thereputation and goodwill attained by the plaintiff's mark inthe minds of the potential consumer as on the date of thealleged activity complained off by the defendant. It is theproprietary right in goodwill attained by a mark which issought to be protected under the action for passing off.Therefore the action cannot succeed unless the plaintiffestablishes goodwill for his mark as on the date when thedefendant commenced the activity complained off. Counselreferred to the judgment in Jarman & Platt Ltd. v. I.BargetLtd. & others, 1977 FSR 260. Any future goodwill that may RFA. 371 of 2007 - 29 -arise to the plaintiff's mark after the activity complained offcannot be accounted for sustaining the passing off action.Counsel referred to the judgment in Cadbury Schweppes PtyLtd. v. Pub Squash Pty. Ltd. (1981) 1 All E.R. 213.9. Coming to the element of misrepresentation, Mr.Unni submitted that only actual representations which arecalculated or capable of injuring another's proprietarygoodwill amount to an actionable misrepresentation underthe passing off law. Prior to alleging misrepresentation, theplaintiff ought to establish that his mark has acquired adistinctive character amongst the consumers, i.e., theconsumers identify the mark exclusively with the plaintiff'sgoods in the market. When the mark is essentiallydescriptive in character or is a common word (“Nirapara” asin the present case) the plaintiff should primarily establishthat amongst his consumers his mark has acquired asecondary significance over and above the descriptive RFA. 371 of 2007 - 30 -character or primary meaning of the word adopted as thetrademark. Without this even if a rival trader adopts asimilar or identical mark to that of the plaintiff, the plaintiffcannot succeed in proving the element of misrepresentationin a case of passing off. The judgments in City Link TravelHoldings Ltd. & others v. Lakin & another, (1979) FSR 653,and Cadila Healthcare Ltd. v. Dabur India Ltd., MIPR 2008(3) 0162 were relied on by Mr.Krishan Unni.10. Damages is another essential element elementaccording to Mr. Krishnan Unni. The tort of passing off iscomplete only when the plaintiff proves that he hassustained an injury due to the activity complained off by thedefendant or in a quia timet action is likely to be injured.Mere likelihood of confusion is not adequate to complete thetort of passing off. Confusion should be of such a naturethat the same is capable of injuring or damaging thebusiness, goodwill or reputation of the plaintiff. While in a RFA. 371 of 2007 - 31 -case of long concurrent usage between the rival mark,proof of actual deception is a must, in a quia timet action,probability of deception is sufficient. Counsel referred tothe judgment in H.P.Bulmer Ltd. & Showerings Ltd. v.J.Bollinger SA & Champagne Lanson Pere et Fils, 1978 RPC79 CA and also the commentaries of P.Narayanan onTrademark, Trade name and passing off cases, 2nd Edition,Volume II. According to Mr. Krishna Unni in the instant casenone of the above basic elements of passing off law wasconsidered by the court below while deciding the suit. Themain question that is seen examined by the trial court wasprior use of the rival claimants. Solely on the basis of afinding of prior user in favour of the plaintiff, the suit hasbeen decreed. The plaintiff averred in the plaint that theyadopted the mark “Nirapara” with device in the year 1975in connection with paddy, rice and rice products. But in theoral evidence of PW-1 Sri. K.K. Karnan (proof affidavit) it is RFA. 371 of 2007 - 32 -stated that they have used the mark “Nirapara” with deviceonly since the year 1988. The plaintiff produced Exts.A15and A16 carbon copies of bill books wherein the word“Nirapara” appears against bills relating to the sale of 70kilograms of rice bags to retail dealers of the plaintiff. Abare perusal of the bill books would show that all the itemstherein do not contain the trade name “Nirapara” in auniform manner. Mr. Krishnan Unni pointed out variousother infirmities about Exts.A15 and A16. A15 and A16were sought to be corroborated by PW-6, son of oneGovindan Nair, a rice merchant in Palai who purchased ricebags from M/s. Karnan & Co. in the year 1990. Mr. Unnipointed out various infirmities in PW-6's evidence includingdocuments and submitted that it is unsafe to rely on A15and A16 bill books which are doubtful documents. Counselpointed out that no other documents has been produced bythe plaintiff to substantiate their claim of prior usage than RFA. 371 of 2007 - 33 -the defendants who started using the mark from 25-3-1990as evidenced by documents B-22, B32 and B-33. Mr.Krishan Unni submitted that the finding that there is priorusage from the year 1975 apparently entered by the courtbelow is totally unjustified. It was Ext.X-1 which was reliedon by the court below for substantiating the plaintiff's claimof long use from 1975. Ext. X-1 document pertains toinauguration of a rice mill with modern facilities by S.N.RiceMills stating inter alia that superior quality Niraparabranded rice is being introduced in the market by S.N.RiceMills which has been functioning from 1975 onwards. ButA4 document will show that S.N.Rice Mills came intoexistence only on 18-6-1991. The wording in X-1 also doesnot give any inference that Nirapara was in existence since1975. The admissions in B-31 lawyer notice is highlightedby Mr.Krishan Unni. The Counsel referred to Annexure-A2caution notice issued in the name of KKR Mills produced RFA. 371 of 2007 - 34 -along with IA. 4630 of 2007 wherein it was stated thatNirapara brand rice has been manufactured and distributedfrom the year 1991 and had acquired substantial reputationfor the rice sold under that trade name because of the highgrade export quality referred to in B-1 lawyer notice.Counsel submitted that these evidence will show that themark was adopted some time in early 1991 and the sameacquired reputation and goodwill with introduction of highgrade export quality Nirapara brand rice free frommudstone dust only from 15-11-1991. Thus veracity ofExts.A15 and A16 relied on by the trial court becomesextremely doubtful. Counsel would refer to the testimoniesof PW2, PW3, PW4, PW5 and submitted that the court belowwas not at all justified in relying on the oral testimonies ofthese witnesses for finding prior usage of the mark. Allthese witnesses are interested ones as they are in one wayor other connected with the plaintiff. None of these oral RFA. 371 of 2007 - 35 -evidence are supported by any documents. PW6 hascertainly produced A15 and A16, but they are notconclusive. They are only carbon copies. The originals werenot called for from their custodians. 11. Mr. Unni highlighted that there is no finding onfact by the learned District Judge as to reputation andgoodwill in the year 1990. According to him, the courtbelow overlooked three important pieces of evidence in thisconnection. Ext.B32 auditors report, Annexure-A1advertisement, B19 registration certificate and B22 series ofbills will show that the defendant started his businessactivity with the mark “Nirapara” as on 23-3-1990. It wasthe burden of the plaintiff to establish that sufficientgoodwill and reputation was already acquired over the markas on that date. Mr. Unni submitted that there is noattempt from the part of the plaintiff to establish theirgoodwill as on 25-3-1990. The trial court was carried away RFA. 371 of 2007 - 36 -by the pleadings in the plaint that the “Nirapara” wasadopted by the defendant in 1995 when the company'sname was changed from South Kerala Roller Flour Mills toNirapara Roller Flour Mills. Without discussing or advertingto the pieces of evidence, the court below entered a findingthat the appellant commenced use of the trade mark in1995 and not at any time earlier. But there is clear evidenceregarding usage from 25-3-1990. Therefore the goodwilland reputation of the plaintiff's Nirapara mark ought to havebeen determined as on 25-3-1990. The relevant time tofind reputation of the plaintiff's mark is the time ofcommencement of the defendant's business. Mr. Unnisubmits that the plaintiff has miserably failed in establishingthe goodwill in 1990. He referred to Ext.A9, A15, A16, A25and A26 and submitted that from Ext.A9 turnover statementrelied on by the plaintiff it is not discernible as to what is thesales turnover achieved by the plaintiff using the mark RFA. 371 of 2007 - 37 -“Nirapara” individually. Relying on the judgment of theDelhi High Court in Vijay Kumar Ahuja v. Lalita Ahuja, 2002(24) PTC 141 counsel submitted that mere cumulative salesfigures cannot be said to have proved reputation,particularly when the separate turnover figure attainedusing the mark is not discernible. Counsel submitted that asagainst Ext.A9 and the evidence adduced by the plaintiffregarding turnover for the seven day period in the financialyear 1989-90 the defendant's turnover was Rs.25,460/-.This was over Rs.2 crores 29 lakhs for the financial year1990-91. A9 shows that the plaintiffs have not spent anyamount for advertisement purposes until the financial yearending March 31, 1991. A9 will thus discredit the version ofPW3 who stated that banners of Nirapara rice used to beexhibited in Okkal Sree Krishna Temple festival from theyear 1984 onwards. Mr. Krishnan Unni submitted that theplaintiff in a suit for passing off will have to establish that RFA. 371 of 2007 - 38 -his mark has attained such an extent of distinctiveness thatuse of the mark will be identified by the public as that of hisand his alone as on date of the complained activity by thedefendant. Whether at a particular time a name hasgoodwill of any substantial extent must be a question of actto be determined on the basis of the evidence. A15 andA16 bills books will show that the plaintiffs have only soldrice to retail traders and that too in 70 kilograms bags. Thiswill show that such rice has not been sold to the endcustomers under the trademark “Nirapara” and that endcustomers have never got a chance to identify 'Niraparabranded rice' with the plaintiff. Thus there is no possibilitythat end customers are familiar with the mark Nirapara riceof the plaintiff as on 25-3-1990. Therefore, according toMr.Krishnan Unni it can be straight away said that there isno evidence to satisfy the standard of proof for establishingreputation. Mr. Unni reiterated once against that Ext.X-1 RFA. 371 of 2007 - 39 -advertisement in Malayala Manorama was not evidenceenough to enter a finding that export quality Niraparabrand rice was being manufactured by the plaintiff for aquite long time. Ext.A2 will show that even the plaintiffclaimed reputation only on the basis that high grademudstone free rice introduced only in November 1991.Counsel referred to Ext.B2, B16, B17, B18, B19, B32 andsubmitted that these are all documents which will throwlight into the bonafide and systematic way in which thedefendant company commenced business operations since1988. According to him, there cannot be any comparisonbetween the sales turnover of the plaintiff and thedefendant for the financial year 1990-91. While theplaintiff's turnover was a meagre Rs.36 lakhs and sixthousand the defendant's was Rs.2 crores and 29 thousand.According to Mr. Unni it is highly illogical to say that thedefendants are taking advantage of the goodwill of the RFA. 371 of 2007 - 40 -plaintiff's mark by misrepresenting and passing off theirproducts as that of the plaintiff. Counsel submitted that atthat point of time the plaintiff was confined to manufactureand sale of rice only while the defendant was manufacturingand selling wheat based products under the mark“Nirapara”. Mr. Unni submitted that in order to protect theaccruing goodwill and reputation over the defendant'strademark “Nirapara” by the end of 1990 the defendant tooksteps to register and protect the mark “Nirapara” before thetrademark Registry. A search application was filed inDecember 1990. Subsequently in 1991 applicationNo.543880 was preferred in class 30 in relation to Maida,Sooji, and Atta. The application was opposed by the plaintiff. The plaintiff's objections were upheld finding that theplaintiff is the prior user of the mark relying on the billbooks produced by the plaintiff. However, in appeal theIntellectual Property Appellate Board by Ext.B1 order held RFA. 371 of 2007 - 41 -that the bills produced by the plaintiffs are fabricated andcannot be accepted in evidence. Further on the question ofdeception and confusion it was found that in spite of 15years of concurrent trading the plaintiff could not produce asingle piece of evidence to prove the same. Thedefendants were granted registration to their trademark.Ext.A3 is the certificate of registration. The plaintiffs havecertainly filed a review petition against the order B-1. Butreview is not likely to be allowed since in Godrej Sara Leev. Reckitt Benckiser (India) Ltd. (MIPR 2008(3) 0124) theBoard has taken a view that it has no jurisdiction or powerto review. The plaintiff is also the registered proprietor ofthe mark “Nirapara” in class 31 against Bran, Bran flakes,cattle and poultry feeds vide application No.813396 dated 4-8-1998. The certificate of registration is B5. 12. Counsel submitted that only when reputation andgoodwill is established by the plaintiff, the court will have to RFA. 371 of 2007 - 42 -consider the other ingredients such as misrepresentationand damages. In the case of a distinctive trademark thecourts are free to presume misrepresentation when thedefendant adopts an identical trademark. But where thetrademark is of a descriptive in nature it is for the plaintiff toestablish that the trade mark has acquired a secondarysignificance among the customers and trade as on date ofthe activity complained off. Mr. Unni highlighted thatNirapara is a common word having a definite meaning andsignifies prosperity and is descriptive in connection with thetrade of rice and paddy. That being so, it is for theplaintiff to establish that he has acquired a secondarysignificance over and above the descriptive character orprimary meaning of the word adopted as his trademark.The plaintiff failed to establish the same.13. The counsel submitted that in quia timet actionlikelihood of damages alone is sufficient in a case of long RFA. 371 of 2007 - 43 -concurrent usage between the rival marks, proof of actualdeception is a must. The court below came to theconclusion that the plaintiff need establish only likelihood ofdeception. This conclusion is arrived at as a result of thegross failure to notice that both the parties wereconcurrently trading in the same market for 17 years inrespect of rice ad wheat products. Though admittedlyplaintiff noticed the activity of the defendant in the year1995, even at the trial in the year 2007 the plaintiff couldnot establish a single instance of actual damage caused dueto the alleged activity of the defendant. Thus in this casethe tort of passing off cannot be determined to have beencompleted.14. Counsel submitted that at any rate, there isacquiescence on the side of the plaintiff. Though B31 noticewas sent to the defendants in 1996 the suit is filed only in2005, after a long delay of 9 years. All these years the RFA. 371 of 2007 - 44 -plaintiff stood by and allowed the defendant to develop hisbusiness from 2 crores in 1994 to 13 crores in the year2004. Learned counsel relied on a judgment in AmritdharaPharmacy v. Satyadeo Gupta (PTC (Suppl) (2) 1 at page 10para 18 and 19). Neither the opposition proceedings in theregistry nor the criminal cases initiated against third partieswill be an answer to the contention of acquiescence.According to Mr.Krishnan Unni, the facts and circumstanceswhich have come out in evidence will necessitate the matterto be classified as a special case whereby both marks haveattained independent distinctiveness in respect of theirdifferent products i.e., plaintiff in relation to rice productsand the defendants in relation to wheat products.Concurrent usage can be permitted. Mr. Krishnan Unnirelied on the judgment of the Supreme Court in VishnudasTrading as Vishnudas Kishebndas v. Vazir Sultan TobaccoCo. Ltd. (1996 PTC 16) RFA. 371 of 2007 - 45 -15. Smt.V.P.Seemanthini, the learned senior counselfor the respondent/plaintiffs submitted that there isabsolutely no warrant for interference with the judgmentand decree of the court below. She submitted that Niraparaas mark with a logo as seen in Ext.A-40 belongs to theplaintiffs. Defendant used Ext.A41 mark and logo in respectof their goods. On a comparison of the marks the deceptivesimilarity is clearly established. Smt.Seemanthini pointedout that the pleadings of the plaintiffs referred to thecommencement of the business by the plaintiffs in 1975 andalso to the reputation the plaintiffs earned by use ofExt.A40 mark and logo in connection with the plaintiff'sgoods. She submitted that a defendant/company wasincorporated in the year 1988 and even if the very first billissued by the defendant is assumed to be proved thedefendant started commercial production only from25/03/90. According to Smt.Seemanthini proper issues RFA. 371 of 2007 - 46 -arising from the pleadings raised by the parties were raisedby the court below and correct findings have been enteredby the court on all issues including the issue whether theplaintiffs are entitled to get a decree of prohibitoryinjunction. According to the learned senior counsel, there isno specific ground raised in the memorandum of appeal thatany principle of law as stated in the judgment of the courtbelow is wrong nor is any ground raised that appreciationand evaluation of evidence by the court below is arbitrary orperverse. When the trial court applies the correct legalprinciple and appreciates the evidence correctly and entersa specific finding in favour of the plaintiffs on the issuesraised, the judgment of the trial court is not to be lightlyinterfered with. According to Smt.Seemanthini, the crucialquestion to be decided is the question of the plaintiffsreputation as owner of the trade mark that is to sayplaintiffs title to the mark. Reputation according to her is the RFA. 371 of 2007 - 47 -goodwill belonging to the business of the plaintiff. Thepartnership firm which is the predecessor in interest of thepresent plaintiff commenced on 01/08/75. The firm wasregistered on 29/07/1977. Certificate of CharteredAccountants showing sales turn over and advertisementcharges incurred by the plaintiffs during the period from1976-2003 as well as Sales Tax Assessment are available onrecord. Ext.A11 to A12, A15 and A16 were highlighted bySmt.Seemanthini. Smt.Seemanthini submitted thatreputation like 'Rome is not built in a day' - it is built overthe years. Labels or receptacles go a long way in bringingreputation to the commercial establishments. She referredto the evidence of PW2 and submitted that gunny bagssupplied by PW2 to the plaintiffs carried the wordsNIRAPARA and its device since 1988. Smt.Seemanthinihighlighted the oral evidence given by PW5 former sales taxofficer belong to the area where the production units of the RFA. 371 of 2007 - 48 -plaintiff are situated. According to her, PW5 is not a mereway farer. He is a Government official who knows theplaintiff and his trade. He was intimately connected with theplaintiffs trading activities in his official capacity. He hadoccasion to inspect the books of accounts and other recordsrelating the plaintiffs business for the purpose ofassessment. Ext.A24 inspection report dt.13/03/90 containshis signature. Exts.A15 to A17, 24 to 26 were properlyproved. He has given evidence to the effect thatSri.K.K.Karnan is popularly known since long as NiraparaKarnan. As the local Sales Tax Officer, he had the vocationalnecessity to be in touch with the traders within the areaunder his jurisdiction He is the most competent witness.Nothing was brought out in cross examination to doubt hisveracity. The trial court which had occasion to see him andrecord his evidence, believed him and accepted hisevidence. His testimony is a solid piece of evidence of RFA. 371 of 2007 - 49 -plaintiffs association with the words NIRAPARA long prior to1990. Smt.Seemanthini referred to the testimony of PW6also. She submitted that PW6 has clearly stated thatK.K.Karnan has long since been known as NiraparaKarnanan. About the evidence of PW3, she submitted thatPW3 is a local resident who used to collect advertisementsof Nirapara products during the festival in the local templefrom 1984 onwards. As regards PW4, she submitted thatPW4 is a wholesale merchant from Kollam who used topurchase rice products branded Nirapara from the plaintiff.She submitted that Ext.A17 day book and Ext.A26 stockregister contain the signatures of PW5. She argued that theplaintiff as PW1 has deposed that the originals of the billspertaining to the counter foils in Ext.A15 had been given tothe concerned purchasers. Therefore, according to her, theevidentiary value of Ext.A15 cannot be under-estimated.Thus, according to Smt.Seemanthini, the most crucial RFA. 371 of 2007 - 50 -question in the case, which is regarding the reputation ofthe plaintiff as owner of the trade mark in question, can beanswered only in favour of the plaintiff.16. Smt. Seemanthini further submitted that theconduct of the parties in specific situations justifying theinference that the plaintiff is the true owner of the trademark and genuinely interested in the protection of the markagainst infringement, is also highly relevant. She submittedthat when some persons in Kollam openly infringed thetrade mark “Nirapara”, the plaintiff initiated immediatecriminal action against those persons. She referred toExts.A42 and A45 documents, in this connection. Shehighlighted that as against the above response of theplaintiff, the defendant did not take any action at all toprotect the trade mark (which he claims to be his own) frominvasion.17. Smt. Seemanthini would then submit that the RFA. 371 of 2007 - 51 -jurisdiction to grant a decree of injunction which is invoked,is an equitable jurisdiction and therefore, the generalconduct of the parties will have considerable relevance whiledeciding as to how the court's discretion is to be exercised.According to her, the conduct of the defendant has beensuch that invocation of the discretionary jurisdiction againsthim will be perfectly in order. Smt. Seemanthini pointed outthat the defendant's Company was originally registeredunder the name and style “South India Food ProcessorsPrivate Limited”, on 12.4.1988. But, on 23.2.1995, thename of the defendant Company is changed to “NiraparaRoller Flour Mills Private Limited”. This, according to her, isat a time when the controversy between the parties hadalready erupted. She submitted that change of name by atrader resembling the trade name of his rival is a conductwhich will attract an adverse inference against the trader, inthe absence of any convincing reason for the adoption of the RFA. 371 of 2007 - 52 -name of the trade rival. Referring to Ext.A48, a copy of theF.I.R. in Crime No.247/2000, Smt. Seemanthini submittedthat the defendant is a person, who was involved in aserious case regarding the criminal dealings in relation torationed articles in distribution for the poorer sections of thepeople. Considering the equitable character of the relief, itis only appropriate that the character of the defendant oughtto be kept in mind by this Court, while deciding the suit.She referred to Ext.A49 order of the Assistant Registrar ofTrade Marks, wherein the manipulative exercises resorted toby the defendant are detailed.18. Smt. Seemanthini would then argue that there isno acceptable evidence in this case, regarding thecommencement and continuance of the defendant's dealingswhich establish the link between the trade mark in questionand his products. She submitted that to establish thedefendant's claim that he started business from 25.3.1990, RFA. 371 of 2007 - 53 -the solitary witness examined by him is himself. Theirreconcilable contradictions between the defendant's standin this regard and the documentary evidence has beendetailed in Ext.A49 order passed by the Assistant Registrarof Trade Marks. According to Smt. Seemanthini, while theplaintiff has proved the documents relied on by the plaintiff,by examining the witnesses, what the defendant has done isto merely produce papers purporting to be bills. Unlessthese papers are proved by adducing supporting evidence, itcannot be stated that these are bills as claimed by thedefendant.19. According to Smt. Seemanthini, so many othercontentions raised by the defendant subsequently are onlytechnical contentions, which cannot be accepted in the teethof factual findings entered by the court below, in favour ofthe plaintiff on the basis of evidence actually available inthat case. She referred to the apparent admission in RFA. 371 of 2007 - 54 -Ext.P31, the lawyer notice that the trade mark “Nirapara”has been used since 1991 only. She submitted that it hasbeen explained by PW1 that this is the result of a mistake incommunication with the lawyer. A mistake incommunication, cannot in any way, affect the correctness ofthe finding in the plaintiff's favour, which is based on qualityevidence, which establishes the plaintiff's title to the mark.Referring to Section 31 of the Indian Evidence Act, Smt.Seemanthini submitted that unless an admission operatesas an estoppel, the same will not be conclusive. Thelearned senior counsel referred in this context, to thejudgment of the Supreme Court in Narayan v. Gopal(1960 SC 100) and State of H.P. v. Gujarat AmbujaCements Ltd. 2005(6) JT 298. She relied on thecommentaries of Woodroff and Amir Ali as well as Ratanlalon the Law of Evidence.20. Smt. Seemanthini would refute Mr.Krishnan RFA. 371 of 2007 - 55 -Unni's arguments against the probative value of Exts.A15 toA17. According to her, the stand that Exts.A15 and A16 areonly secondary in evidence is not acceptable, in view of thejudgment of the Supreme Court in Prithi Chand v. State ofHimachal Pradesh (AIR 1989 S.C. 702). She submittedthat in the above decision, it has been held by the SupremeCourt, interpreting Section 62 that carbon copies of bills areprimary evidence. The decision applies in this case, wherebills were proved by examining PW6, recipient of the bills.That Exts.P15 and P16 are originals get corroboration fromExt.A17 day book in the year 1988-89. The last page ofExt.A17 is signed by the Assistant Commissioner of SalesTax. The earlier pages contain Sales Tax Officer's officialsignature. She referred in detail to the various relevantentries made in Ext.A17.21. According to Smt.Seemanthini, the word“reputation” means character imputed to a person by those RFA. 371 of 2007 - 56 -acquainted with him. That by which we are known and isthe total sum of how we are seen by others. Reputation iswhat people think an individual is and what they say abouthim. According to her, the very fact that Mr.K.K.Karnan,who is the Managing Director of the third plaintiff and theManaging Partner of plaintiffs 4 and 5 is identified with thestrange name as 'Nirapara Karnan” throughout the worlditself is more than sufficient to prove that he has establishedhis reputation as a dealer in Nirapara rice products from theyear 1975 onwards. 22. Smt.Seemanthini maintained that Ext.X1 is a verystrong piece of evidence in favour of the plaintiff and thatrefute all the arguments of Sri.Krishnan Unni against Ext.X1.Ext.X1 is of the year 1991, a point of time the controversyhad not surmised. Ext.X1 will show that the plaintiff hadestablished reputation in the trade name “Nirapara”, muchprior to 1990, for which period only the defendants are RFA. 371 of 2007 - 57 -claiming user. 23. Smt.Seemanthini submitted that Nirapara riceproducts of the plaintiff are popular, not only in India, but invarious foreign countries like USA, UAE, U.K., Dubai, SaudiArabia, Oman, Malaysia, Muscat, Bahrain, Qatar, SIA andSingapore. She submitted that the plaintiff has alreadyobtained a Trade Mark Registration in CTM Registry(European countries), UAE, Bahrain etc. In other countries,applications are in process. According to her, plaintiff'sNirapara products have got Trans-Boarder reputation. 24. Smt. Seemanthini relied on a large number ofprecedents in support of various propositions that wereadvanced by her. Strong reliance was placed by her, on thejudgment of the Supreme Court in Ramdev Food ProductsPvt.Ltd. v. Arvindbhai Rambhai Patel (2006 SC 3304) toargue that ordinarily under law, there can only be one mark,one source or one proprietor. Ordinarily again, the right of RFA. 371 of 2007 - 58 -resorting of a trade mark cannot have two regions. Sheargued that if goods are sold on from sources, the samemay lead to confusion in the minds of the consumers and ina given situation, it may also amount to fraud on the public.Thus, ordinarily, two people are not entitled to the sametrade mark unless there exists an express licence in thatbehalf.25. Arguing that in a passing off action, registration ofa trade mark is immaterial, Smt.Seemanthini placed strongreliance on the judgment of the Supreme Court inN.R.Dongre v. Whirlpool Corporation [1996 PTC (16)583 S.C.] and a judgment of this Court in A.C.Krishnan v.Nambisan's Dairy Pvt.Ltd. (1997(1) KLT 163). Answeringthe argument of Mr.Krishnan Unni, based on the principle ofacquiescence, Smt.Seemanthini referred to the judgment ofthe Supreme Court in Midas Hygiene Industries P.Ltd. v.Sudhir Bhatia [2004(28) PTC 121 (SC] and submitted that RFA. 371 of 2007 - 59 -mere delay in bringing action is not sufficient to defeat grantof injunction. Smt.Seemanthini also referred to thejudgment of the Delhi High Court in Syncom Formulationsv. SAS Pharmaceuticals [2004(28) PTC 632 (Delhi)] andin Hindustan Pencils Ltd. v. M/s.Indian StationaryProducts Co. (AIR 1990 Delhi 19). She argued that thedoctrine of acquiescence cannot be resorted to or availed ofwhen there is dishonesty in choosing the mark and ill-designto trade and cash upon the reputation and goodwill of theplaintiff. Smt.Seemanthini placed strong reliance on thejudgment of the Supreme Court in Lakshmikant v. Patelv. Chethanbhai Shah (2002(3) SCC 65) to expatiate theprinciples to be followed in the matter of granting injunctionin the matter of passing off actions. According to her, thisdecision will show that the fact that the defendant hadalready commenced their business under the offendingname would not dis-entitle the plaintiff to grant of RFA. 371 of 2007 - 60 -injunction. She would submit that a passing off action willlie wherever the defendant company's name or its intendedname is calculated to deceive and to so divert business fromthe plaintiff or to cause confusion between the twobusinesses, propensity to divert business or likelihood ofinjury enough even if name adopted innocently will beenough to sustain action for passing off . 26. Lastly, Smt.Seemanthini referred to the judgmentof the Supreme Court in Mahendra and Mahendra PaperMills (P) Ltd. v. Mahindra and Mahindra Ltd. (2002(2)SCC 147) and also the judgment in Lakshmikant V Patelv. Chethanbhai Shah (2002(3) SCC 65) to argue that theappellate court has got very limited power to interfere withthe discretion exercised by the trial court in the matter ofpassing off action.27. I have anxiously considered the rival submissionsaddressed at the Bar in the light of the pleadings raised by RFA. 371 of 2007 - 61 -the parties. I have made a reappraisal of the evidenceavailable in the case. The ratio of the various decisions citedat the Bar by counsel on both sides are also kept in mind. 28. Passing off action is essentially a common lawremedy conceived by the Common Law Courts of Englandfor redressing the grievances of a trader who suffers or islikely to suffer by a wrongful act of his rival trader inpassing off his goods as the case of the plaintiff. The tort orwrongful act lies in the misrepresentation by the defendantaimed at the potential buyers of the goods or services undera belief that the goods or services are those of the plaintiff.This is done by the defendant by using trade name, mark orother indication similar to the one used by the plaintiff. TheHouse of Lords in Erven Warnink v. J.Townend & Sons, 1979FSR 397 through Lord Diplock identified five characteristicsas requisites for a valid cause of action for passing off. “(i)a misrepresentation (ii) made by a trader in the course of RFA. 371 of 2007 - 62 -trade, (iii) to prospective customers of his or ultimateconsumers of the goods or services supplied by him, (iv)which is calculated to injure the business or goodwill ofanother (in the sense that this is a reasonably foreseeableconsequence) and (v) which causes actual damage to thebusiness or goodwill of the trader by whom the action isbrought (or in a quia timet) will probably do so” TheSupreme Court approved the above principles in itsjudgment in Cadila Health v. Cadila Pharma (2001 PTC 300(SC) and in Heinz Italia & another v. Dabur India Ltd.(2007) 6 SCC 1. It was laid down by the Supreme Courtthat in order that a passing off action succeeds all the abovefive characteristics should be separately and cumulativelyproved and if any one of the elements is missing the actionfails. (See Cadila Healthcare Ltd. v. Dabur India Ltd. ( MIPR2008(3) 0162). It is settled by decisions that of the variouselements expected to be proved by the plaintiff in a passing RFA. 371 of 2007 - 63 -off action the primary and the most essential one is that ofthe goodwill and reputation attained by the plaintiff's markin the minds of the potential consumers as on the date ofthe alleged activity complained off against the defendant.Whether the plaintiff's mark attained a goodwill in the mindsof the customer public and whether the plaintiff has attainedproprietory right in the above goodwill is therefore thequestion. The decisions are to the effect that if the plaintifffails to establish goodwill for his mark as on the date whendefendant commenced the activity complained off, cause ofaction for passing of is not established and there is nonecessity for the court to look into other elements ofmisrepresentation and damage. Acquisition of futuregoodwill by the plaintiff's mark after the activity complainedoff is not to be accounted for sustaining a passing of action(see judgment in Jarman & Platt Ltd. v. I. Barget Ltd. &others, (1977) FSR 260, Cadbury Schweppes Pty Ltd. v.Pub RFA. 371 of 2007 - 64 -Squash Pty. Ltd. (1981) All.E.R. 213) and Teleworks Ltd. v.Teleworks Group PLC, (2002) RPC 27).29. The second element expected to be proved by aplaintiff is misrepresentation by the defendant. It is not allmisrepresentations that amount to actionablemisrepresentation under passing off law. Before the plaintiffalleges misrepresentation he will have to establish that hismark has acquired a distinctive character amongst theconsumers, i.e., the consumers identify the mark exclusivelywith the plaintiff's goods in the market. When the mark inquestion is essentially descriptive in character or is acommon word (like “Nirapara” in the present case) in orderthat the plaintiff succeeds it will be necessary that heestablishes that amongst the consumers his mark hasacquired a secondary significance over and above thedescriptive character or primary meaning of the wordadopted as the trade mark. Unless this is done by the RFA. 371 of 2007 - 65 -plaintiff, even if a rival trader adopts a mark similar oridentical to that of the plaintiff, the plaintiff cannot succeedin proving element of misrepresentation in a case of passingoff (See the judgment in City Link Travel Holdings Ltd. &others v. Lakin & another (1979) FSR 653). The thirdaspect is damages. The tort of passing off is complete onlywhen the plaintiff proves that he has sustained an injurydue to the activity of the defendant. In a quia timet action(action for prohibitory relief) the plaintiff need to establishthat he is likely to be injured. Law is trite that merelikelihood of confusion in the minds of consumers is notsufficient. The confusion should be of such a nature that thesame is capable of injuring or damaging the goodwill orreputation of the plaintiff. In a case of long concurrentusage between the rival marks, proof of actual deception isa must, in a quia timet action probability of deception issufficient (See H.B.Bulmer Ltd. & Showerings Ltd. v. RFA. 371 of 2007 - 66 -J.Bollinger SA & Champagne Lanson Pere et Fils – 1978 RPC79 CA). On a careful reading of the judgment of the learnedDistrict Judge, it is seen that the learned Judge has notconsidered all the above basic elements of passing off lawwhile taking the decision in the suit. The learned DistrictJudge actually focussed his attention on the question as towhose was the prior use as between the two rival claimants.The judgment will show that it is essentially on the basis ofa finding of prior use in favour of the plaintiff that thedecision of the learned District Judge turned. The learnedDistrict Judge has entered a finding at paragraph 25 of hisjudgment that the evidence would show that PW1 stated hisbusiness somewhere in 1975 and that since then he hasbeen selling rice and rice products under the mark“Nirapara” and also that there was continuous user of thetrade mark. It is difficult to sustain the above finding. Theaverment in the plaint was that the plaintiff adopted the RFA. 371 of 2007 - 67 -mark “Nirapara” and device in the year 1975 in connectionwith paddy, rice and rice products. But PW1 Karnan wouldstate in his proof affidavit that they have used the mark“Nirapara” with device only since the year 1988. A15 andA16 carbon copies of the bill books where the word“Nirapara” appears against bills relating to sale of 70kilograms of rice bags to retail dealers are the documentsrelied on for proving usage of the mark “Nirapara” from1988. The argument of Mr.Krishnan Unni that the word“Nirapara” has been inserted subsequently into those pagesof A15 and A16 pertaining to sale of boiled rice bags cannotbe lightly brushed aside as one scans these documents.A15 and A16 are sought to be corroborated through oralevidence of PW6 S/0 of Govindan Nair, Rice Merchant fromPalai who claims to have purchased rice bags fromK.K.Karnan and Company against bill Nos. 612, 625 and 630in A-15 and bill Nos. 754, 757, 779, 787 and 789 in A16. RFA. 371 of 2007 - 68 -Bill Nos. 779 and 787 are significantly two bills pertaining topurchase of boiled rice by C.K.Govindan Nair, father of PW6.These bills do not contain the word “Nirapara” which givessome force to the submission of Mr.Krishnan Unni that theword “Nirapara” appearing in several pages of A15 and A16pertaining to sale of boiled rice is a subsequent insertion.Ofcourse, there is a corresponding entry in Ext.A17 daybook in respect of certain bills in Ext.A15 and A17 day bookhas been initialled by the sales tax authorities. But asrightly argued by Mr.Krishnan Unni, A17 at best can onlyprove that the originals of the various bills in Ext.A15 wereactually issued by K.K.Karnan and Company and cannotprove whether the word “Nirapara” is contained in theoriginals of the bills or whether they were subsequentlyinserted. It is difficult to accept Smt.Seemanthini'sargument on the basis of the judgment of the SupremeCourt in Prithi Chand v. State of H.P. (AIR 1989 SC 702) RFA. 371 of 2007 - 69 -that carbon copies are primary evidence of the originals.First of all there is no similarity between the fact situationsin that case and in the present case. The admissibility ofwhat was disputed in that case was the carbon copy ofmedical certificate issued by a doctor who had examined thevictim prosecutrix immediately after the alleged incident ofrape. The carbon copy did contain the signature of theauthor. Since the attendance of the doctor who had issuedthe medical certificate could not be procured due to genuinereasons, another doctor who had acquaintance with thesignature of the author doctor was examined. TheirLordships of the Supreme Court referred to section 32(2) ofthe Indian Evidence Act and stated that when a statementwritten or oral is made by a person in the discharge of aprofessional duty whose attendance cannot be procuredwithout an amount of delay, the same is relevant andadmissible in evidence. Ofcourse, their Lordships referred RFA. 371 of 2007 - 70 -to Explanation – 2 to Section 62 and further observed thatthe document was primary evidence within the meaning ofthat Explanation. Explanation 2 to Section 62 obviouslyprovides only that where a number of documents are allmade by one uniform process, as in the case of printing,lithography, or photography, each is primary evidence of thecontents of the rest; but, where they are all copies of acommon original, they are not primary evidence of thecontents of the original. Same process carbon copies maybe primary evidence of the other carbon copies, but itcannot be argued on the basis of Explanation 2 to Section62 that same process copies are primary evidence of theoriginal. Significantly, even when PW-6 is examined forcorroborating a few bills in Ext.A15 and A16 no endeavour isseen made to bring forth evidence regarding the non-availability of the originals of the bills which were issued toPW6's father. RFA. 371 of 2007 - 71 -30. Ext. X-1 is one document which is relied on verymuch by the court below to conclude that the plaintiff hasbeen using the mark and device from 1975. Ext.X-1 is anadvertisement in Malayala Manorama dated 15-11-1991relating to the inauguration of a rice mill with modernfacilities by S.N.Rice Mills and the claim in Ext.X-1 is thatexport quality Nirapara brand rice with export standards isbeing introduced into the market by S.N. Rice Mills. In theearlier part of this advertisement it is also claimed thatS.N.Rice Mill had been functioning from 1975 onwards. Thisclaim to a certain extent is justifiable since obviouslyS.N.Rice Mill is successor of the original firm by nameK.K.Karnan and Company which was founded on 10-8-1975.But the question is whether Ext.X-1 can be relied on toenter a finding that the mark and logo which is pictoriallyrepresented in Ext. X-1, had been adopted by the plaintiffsway back in 1975 itself. It is difficult to enter into such a RFA. 371 of 2007 - 72 -conclusion based on Ext.X-1 alone as there is no claim inExt.X-1 that Nirapara Brand rice was being manufacturedor marketed by S.N.Rice Mills or its predecessorestablishments prior to 1975. Ext.A4 shows that S.N.RiceMills come into being only in the year 1991. Thus in myopinion it is not safe to enter a decision regarding prior userbased on Ext.A15, A16 and X-1 alone. But then there is theoral evidence adduced by the plaintiffs' witnesses includingPW1 in support of the plaintiffs' case that plaintiffs are theprior users of the disputed mark. It is also true that on theside of the defendant, apart from the self serving oraltestimony of DW1, no other witnesses are examined tosupport their contentions that plaintiffs' claim that theyare the prior user of the trade mark is not correct. ButExt.B32 auditors report will show that the defendantsstarted commercial production under the trade mark“Nirapara” on 25-3-1990 as manufacturers of wheat RFA. 371 of 2007 - 73 -products. Formal inauguration of the defendants' plant wason 6-4-1990. This is clear from Annexures A1advertisement, P19 certificate of registration and B22 seriesof bills. Thus it is clear that the business activity of thedefendant with mark “Nirapara” Ext.A41 commenced on 25-3-1990. I have no doubt in my mind that Ext.A40 of theplaintiffs and A41 of the defendants are deceptively similar.But then it is the plaintiffs duty to establish that as on 25-3-1990 when the defendants started using Ext.A41 which isdeceptively to his mark A40 the plaintiff had acquiredsufficient goodwill and reputation in the minds of thecustomer public over his mark. A9 is perhaps the onedocument produced by the plaintiff with the object ofestablishing goodwill for his mark prior to 25-3-1990. A9 isa statement issued by the plaintiffs' auditors showing thedetails of the sales turnover and advertisement chargesrelating to K.K.Karnan and Company and its associate RFA. 371 of 2007 - 74 -concerns. To begin with in the year 1976-77 the total salesturnover of K.K.Karnan and Company was Rs.5,65,587.77.By 1988-89 when the plaintiffs claim to have used the markNirapara in the sale of their rice products the turnover goesupto Rs.17,31,945.65. By 1989-90 the next year when thedefendant has not entered the fray the turn over goes downto Rs.15,36,107.95. But as rightly argued by M. KrishnanUnni, this turnover statement includes proceeds from saleof products like paddy and bran which are not branded bythe trade mark Nirapara through A15, A16, A25 bill booksand A26 stock register. Importantly Sri.Karnan is describedin all the records as rice and paddy merchant. This meansthat the sales turnover (of rice and rice products) using themark Nirapara separately is not discernible from Ext.A9.Another thing is clear from Ext.A9. The plaintiffs incuradvertisement charges, whether it be for S.N.Rice Mills orfor K.K.R.Mills only from 1991-92. The question that arises RFA. 371 of 2007 - 75 -for consideration is whether the plaintiff was successful inestablishing that his mark Ext.A40 has attained such anextent of distinctiveness that the use of the mark will beidentified by the customer public as that of the plaintiffalone as on the date of the complained activity by thedefendant. According to me, even if it is possible to holdthat the plaintiff is the prior user of Ext.A40 mark in thesense that A40 was adopted by the plaintiff even prior to thedefendant starting commercial production, the evidencepresently available on record falls short of holding that theplaintiff's mark has attained such an extent ofdistinctiveness that the customer public will identify Ext.A40mark as the plaintiff's alone as on the date ofcommencement of the complained activity by the defendant.Significantly, none of the witnesses examined on the side ofthe plaintiff, PW2, PW3, PW4, PW5 and PW6 belong to theultimate consumer class. It is only the ordinary consumer RFA. 371 of 2007 - 76 -of rice products under the mark 'Nirapara' who will be ableto give cogent evidence regarding the reputation andgoodwill attained by the mark as on 25-3-1990 in theirminds. 31. As already noticed, the element of reputation andgoodwill as well as the element of damages, which are theessential elements to be established by a plaintiff in anypassing off action have not been specifically considered bythe court below. At any rate, specific findings are not seenentered by the court below. As for damages, the argumentof Smt.Seemanthini was that the present action is a quiatimet action and the relief is only for injunction andtherefore, it is not necessary to establish sustainment ofactual damages and that probability of damages in future issufficient. The evidence in this case will reveal that therehas been concurrent trading by the parties on the strengthof their respective marks, Ext.A40 and A41, for a period of RFA. 371 of 2007 - 77 -15 years and that being the situation, the probability of theplaintiffs sustaining damages will be best established byproving actual damages. No serious endeavour has beenmade by the plaintiffs to adduce evidence in the context ofdamages. Ext.B31 notice was issued to the defendants,alleging violation of plaintiffs' trade mark rights, in the year1996 itself. The suit is preferred only after nine years. Thecontention of the defendants was that there has beenacquiescence from the side of the plaintiffs in allowing thedefendants to develop their business, which in the year1994 was Rs.2 crores, to Rs.13 crores in 2004. The learnedDistrict Judge would answer the question of acquiescence infavour of the plaintiffs, on the basis of criminal cases filedagainst third parties by the plaintiffs and also the oppositionproceedings in the trade mark registry. I feel that thequestion of acquiescence raised by the defendants demandsreconsideration. RFA. 371 of 2007 - 78 -32. As already noticed, Smt. Seemanthini did make avaliant effort to sustain the impugned judgment and decree.I have already accepted her argument and the finding of thecourt below that Ext.A41 mark and logo of the defendantsare deceptively similar to the mark and logo of theplaintiff. Once the plaintiff establishes the other essentialelements of reputation and goodwill and damages orprobability of damages, the relief will have to be given tothe plaintiffs. But, as already found, the learned DistrictJudge has proceeded to decide the suit solely on the basis ofprior user. For the finding that there has been prior usersince 1975 or that the prior user has been for such aduration of time as to attain goodwill and reputation in theminds of the consumers to the extent that the consumerswill identify Ext.A40 with to the products of the plaintiffsalone, there is no sufficient evidence. Under the abovecircumstances I become obliged to set aside the judgment RFA. 371 of 2007 - 79 -and decree and relegate the suit back to the District Court.The learned District Judge is directed to take a freshdecision in the suit. While doing so, the learned DistrictJudge will enter specific findings on the following aspects :-(1)Whether Ext.A40 mark has attained goodwill andreputation in the minds of potential consumers ofthe plaintiffs' products as on 25.3.1990 andwhether the plaintiffs' mark has acquired adistinctive character in the minds of theconsumers, so that the consumers identify themark exclusively with the plaintiffs' goods.(2)Whether the plaintiffs have sustained any damageson account of the defendants' user of Ext.A41 markduring the period from 25.3.1990 till the date ofinstitution of the suit.(3)The learned District Judge will also reconsider theplea of acquiescence raised by the defendants, inthe context of the delay caused by the plaintiffs ininstituting the suit after Ext.B31 notice was issued.33. The learned District Judge will afford opportunity tothe plaintiffs to adduce whatever further evidence they wantto adduce in support of their case. The defendants also willbe permitted to adduce further evidence. Fresh decision will RFA. 371 of 2007 - 80 -be taken in the suit, in the light of the evidence already onrecord and the further evidence to be adduced.34.Notwithstanding my decision to relegate the suitto the District Court for fresh decision, I feel that a primafacie case is made out by the plaintiffs by the evidencealready adduced by them for the obtainment of interimrelief. The overall impression that I gather on a re-appraisalof the evidence is that the plaintiffs have been dealingmainly in rice and rice products and the defendants, mainlyin wheat and wheat products and therefore, I am of theview that till a final decision is taken in the suit by thelearned District Judge, and order of injunction can begranted in favour of the plaintiffs and against the appellantsin respect of rice and rice products .35. The result of the above discussions is therefore, asfollows :-The impugned judgment and decree are set aside. The RFA. 371 of 2007 - 81 -suit is relegated to the District Court, Kottayam. TheDistrict Court is directed to take a fresh decision, afterentering specific findings on the following questions :-(1)Whether Ext.A40 mark has attained goodwill andreputation in the minds of potential consumers of theplaintiffs' products as on 25.3.1990 and whether theplaintiffs' mark has acquired a distinctive character amongthe consumers, so that the consumers identify the markexclusively with the plaintiffs' goods.(2)Whether the plaintiffs have sustained anydamages on account of the defendants' user of Ext.A41mark during the period from 25.3.1990 till the date ofinstitution of the suit.(3)The learned District Judge will also reconsider theplea of acquiescence raised by the defendants, in thecontext of the delay caused by the plaintiffs in institutingthe suit after Ext.B31 notice was issued. RFA. 371 of 2007 - 82 -4) The learned District Judge will afford opportunity tothe plaintiffs to adduce whatever further evidence they wantto adduce in support of their case. The defendants also willbe permitted to adduce further evidence. Fresh decision willbe taken in the suit, in the light of the entirety of theevidence that comes on record. There will be an interim order of injunction restrainingthe defendants from manufacturing, distributing ordisplaying rice or rice products by using the plaintiffs' trademark “Nirapara” and the device therein and the trade nameand brand name “Nirapara” or by using the trade mark andlogo presently used by the defendants, as shown in Ext.A41or any other trade mark, trade name or brand nameidentical, similar or deceptively similar to that of theplaintiffs' trade mark. In other words, the order of staypassed by this Court in I.A.No.2677/2007 will continue tothe extent the same pertains to wheat and wheat products, RFA. 371 of 2007 - 83 -but, not in respect of rice and rice products.The appeal is allowed by way of remand. The partieswill enter appearance before the court below on 1.7.2010.The learned District Judge will complete the enquiry andpass a revised judgment early and at any rate within sixmonths thereafter. PIUS C.KURIAKOSE, JUDGEksv/tgs/-