Ciba-Geigy Limited & Anr vs Surinder Singh & Ors on 21 May, 1998

Delhi High CourtDelhi High CourtCiba-Geigy Limited & Anr vs Surinder Singh & Ors on 21 May, 1998Equivalent citations: AIR 1999 Delhi 49, 73 (1998) DLT 535, (1998) 119 PLR 44Author: D JainBench: D JainORDER

D.K. Jain, J.

1. This is a suit for : i) permanent injunction restraining the defendants from using the trademark 'Cibaca' orany other trade mark containing 'Ciba' or the word 'Cibaca' or any other trade mark deceptively similar to thetrade mark 'Ciba' or 'Cibaca'; and ii) rendition of accounts by the defendants to the plaintiffs for the profitsmade by them by the use of trademark 'Cibaca'.

2. Plaintiff no.1 is a Swiss company and the second plaintiff is an Indian Company duly incorporated underthe Companies Act, 1956 in which the first plaintiff holds approximately 40 per cent of the equity sharecapital. The word 'Ciba' forms part of the corporate name of both the plaintiffs. As per the plaint,the firstplaintiff is a registered proprietor of the trademarks 'Ciba', 'Cibaca' and various other trademarks, in whichthesyllable is the word 'Ciba', in respect of various items falling in different classes. The second plaintiff is alicencee and user of various trademarks, possessed and owned by the first plaintiff in relation to goodsmanufactured in accordance with the specifications provided by the first plaintiff. The word 'Cibaca' wasadopted by the plaintiffs and has been extensively used on all goods marketed by them in India. The secondplaintiff claims to have used the trademark 'Cibaca' extensively as licencee of the first plaintiff and hasadditionally spent large sums of money in advertising the goods sold under the said trademarks; by virtue ofthe aforesaid use and the second plaintiff's sales promotion activities, various trademarks, including the mark'Cibaca', mentioned in the plaint, are associated by the public as the trademarks of the plaintiffs and only withtheir goods; the word 'Ciba' and 'Cibaca' also form significant and distinguishing feature of the corporatenames and trading styles respectively of the two plaintiffs; the second plaintiff has been trading in India for solong and so extensively that it is popularly known by the abbreviated form of its name i.e., 'Ciba' and thepublic and the trade also associates all trademarks containing the work 'Cibaca' with the goods only of theplaintiffs.

3. Defendants no.1 and 2 are carrying on business in partnership under the name and style of M/s.Bhatia SalesCorporation. M/s.Link Industries Defendant no.3, is a concern manufacturing filters for motor vehicles whichare sold by M/s.Bhatia Sales Corporation. It is pleaded that on or about December 1991 the second plaintifflearnt that the defendants were selling and offering for sale filters for motor vehicles bearing the trademark'Cibaca'. On 16 March 1992, plaintiffs' Advocates addressed a letter to the defendants calling upon them toforthwith cease and desist from using the trademark 'Cibaca'. No reply was received from Defendant no.3.However, M/s.Bhatia Sales Corporation, vide their letter dated 1 April 1992, sought information aboutplaintiffs registrations for the trademarks 'Ciba' and 'Cibaca' which was duly furnished on 7 April 1992.Thereafter, on 26 May 1992, the plaintiffs received a letter on behalf of M/s.Bhatia Sales Corporation,admitting that the said concern was using the trademark 'Cibaca' but claimed that its use by the defendantswas bonafide. Thus, the defendants did not give up the use of mark 'Cibaca' on the automobile filtersmanufactured and marketed by them. It is alleged that the defendants have deliberately and fraudulentlychosen plaintiffs trademark in order to trade upon the reputation of the plaintiffs and to pass off their filters asthe goods of the plaintiffs; they are representing to the public that their goods have some connection with theplaintiffs whereas no such connection whatever exists, and in this manner they are exploiting their goodwill,passing off goods under the plaintiff's distinctive trade mark and causing damage to the plaintiffs' reputationas manufacturers of high quality goods which cannot be compensated in terms of money and hence thepresent suit for a decree for permanent injunction in the affronted terms, along with an application underOrder 39 Rule 1 and 2, read with section 151 CPC for grant of ad interim injunction.

Ciba-Geigy Limited & Anr vs Surinder Singh & Ors on 21 May, 1998

Indian Kanoon - http://indiankanoon.org/doc/704513/ 1

4. On the said application, an ex parte ad interim injunction was issued on 9 March 1994, restraining thedefendants from offering either directly or indirectly or through their agents or servants for sale or sellinggoods bearing the trademark 'Cibaca' or any other mark deceptively similar there to till the disposal of the suit.

5. The defendants have filed a common written statement, contesting the suit, on the pleas :

i) that the defendants have been using the trademark 'Cibaca' in respect of the filters for use in automobilesfrom 1987 and the said goods are neither cognate nor allied in nature to the plaintiffs' goods in respectwhereof the plaintiffs are claiming their exclusive rights and thus, there is no question of any deception orconfusion in the mind of the public; ii) the turnover of the defendants in the said goods under the trade mark'Cibaca' run into lacs of rupees and thus, the mark 'Cibaca', insofar as automobile filters are concerned, isassociated by the public at large with the goods of defendants only and thus, there is no question of defendantspassing off their goods as the goods of the plaintiffs and iii) the defendants had adopted the trademark 'Cibaca'since 1987 honestly knowing fully well that it was not being used by anyone in respect of automobile filtersand since then they have been using it openly without any interruption from any corner. There is inordinatedelay on the part of the plaintiffs in initiating action against the defendant for perpetual injunction and thus onaccount of inordinate delay, laches, waiver and acquiescence, the plaintiffs are not entitled to any relief in thesuit. In support of its stand that the defendants have been using the mark 'Cibaca' since 1987, affidavits ofsome of their dealers, inter alia, affirming that their concerns have been purchasing filters under the trademark'Cibaca' from the defendants, have been filed.

6. The defendants remained unrepresented on a couple of dates. Consequently on 9 March 1994, they weredirected to be proceeded against ex parte and the plaintiffs were required to lead ex parte evidence by meansof affidavits, which has been done.

7. An affidavit has been filed by the Company Secretary of plaintiff no.2, affirming what has been stated inthe plaint. Documents filed with the affidavit have been exhibited. No formal issues have been settled.

8. I have heard Mr. S.S. Rana, learned counsel for the plaintiff, who has taken me through the pleadings andthe evidence led. Mr.Rana has stated at the Bar that he is not pressing for a decree for rendition of accounts bythe defendants. Thus, the only question for consideration is whether the plaintiffs have acquireddistinctiveness and goodwill in the mark 'Cibaca' and is there any likelihood of confusion in the minds of thecustomers that the filters manufactured by the defendants with mark 'Cibaca' are the goods of the plaintiffs.

9. It is well settled that in a passing off action - a tort to protect commercial goodwill and to ensure thatbusiness reputation of a person is not exploited, the plaintiff has to establish that his business or goods haveacquired the reputation he is claiming by showing that his trade name has become distinctive of his goods andthe purchasing public at large associates the plaintiff's name with them. But the plaintiff is not required toestablish fraudulent intention on the part of the defendant. Even causing of actual confusion amongst thecustomers is also not to be proved by the plaintiff, what it is required to establish is the likelihood of deceptionor confusion in the minds of the public at large. The likelihood or probability of deception depends on anumber of factors, which necessarily is a question of fact in the circumstances of each case. It is true thatwhere two trades are not closely related and the goods are also not analogous, the risk of confusion ordeception is far less as compared to a case where the plaintiff and the defendant have a common field ofactivity but at the same time it cannot be gainsaid that in a case involving noncompeting goods, there is nevera possibility of any confusion in the minds of a customer and, therefore, in such cases there is no question ofpassing off. There have been a catena of decisions wherein the right to use an established trademark in respectof certain classes of goods has been held to extend to goods of a very different nature from the goods sold bythe proprietor of the trademark. For instance, in Daimler Benz Aktiegesellschaft and another Vs. HyboHindustan , the two products involved were



the cars and the undergarments but the defendant was injuncted from carrying on trade in any undergarmentsin the name of "Benz" and "three pointed Human beings in a Ring". It was held that the trade mark law is notintended to protect a person who deliberately sets out to take the benefit of somebody else's reputation withreference to goods, especially so when the reputation extends world wide. It was observed that "Benz" asname of a car would be known to every family that has ever used a quality car; the said name as applied to acar has a unique place in the world and thus the defendants boxes, in which it was selling undergarments,showing thereon a man with his legs separately and hands joined together above his shoulders, all within acircle indicate the strong suggestion of the link between the three pointed stars of "Mercedes Benz" car andthe undergarments sold by the defendant of the above said symbol. It was further held that none should becontinued to be allowed to use a world famous name to goods which have no connection with the type ofgoods which have generated world wide reputation. Similarly in Bata India Limited Vs. Pyare Lal andCompany , the defendant using the mark "Bata foam" on the mattresses, sofa cushions and other articles wasinjuncted from the user of the said mark on the ground that the name Bata was well-known in the market andthe user of such a name was not only likely to cause deception in the mind of ordinary customer but could alsocause injury to the plaintiff company and the fact that the plaintiff was not producing foam was not enough tohold that there could not be passing off action in respect of the user of the name 'Bata' to the productsmarketed by the defendant.

In the light of these pronouncements, the abstract proposition of law pleaded by the defendant that since theyare dealing in entirely different product, there is no likelihood of any confusion or deception in the mind of theconsumer is stated to be rejected.

10. The basic question to be considered is whether the plaintiffs business or goods under the trademark'Cibaca' has acquired such a goodwill and reputation that the mark 'Cibaca' has become distinctive of theirgoods or business and the said mark has reputation attached to it and the defendants conduct is such as to tendto mislead the public to believe that the defendants business or goods are that of the plaintiff.

11. As noticed above, the word 'Ciba' forms an important part of the corporate names of both the plaintiffs.The plaintiffs have been incorporated to carry on diverse business. The word 'Cibaca' was adopted and hasbeen extensively used in respect of the products manufactured by the plaintiffs. It is evident from the plaintthat the plaintiffs are also registered proprietors of trademarks 'Ciba' and 'Cibaca' in respect of the productsmanufactured by them in different classes. The products manufactured by the plaintiffs are of national andinternational repute and standard. From the sale figures reflected in the annual reports for the years 1984-85 to1989-90, exhibits P-1 to P-5, their gross sales range from 1,15,09 lacs to Rs.2,55,48 lakhs. From the saidannual accounts, it is evident that plaintiffs expenses on advertisement and publicity of their business or goodsrun into lacs of rupees in as much as for the year ended 31 March 1990, the advertisement and publicityexpenses were to the tune of Rs.455 lakhs. Thus the extensive business of the second plaintiff standsestablished from exhibits P-1 to P-6. On the contrary the defendants have not given their sale figures in thewritten statement except for a vague assertion that their sale figures run into lacs of rupees. The only evidenceplaced on record by them is in the form of some affidavits of their dealers, indicating that they have beenpurchasing goods from the defendants from years 1987-88 worth a few thousands of rupees. It is significant tonote that though copies of a number of invoices have been placed on record by the defendant starting fromNovember 1987 but the earliest invoices depicting the trademark 'Cibaca' are of December 1990, thus belyingthe stand of the defendants that they have been using the said trademark since June 1987.

12. In my view, the plaintiffs have brought sufficient evidence on record to show that they have not onlyacquired distinctiveness and goodwill in the word 'Ciba' but even in the word 'Cibaca'. With the passage oftime and the reputation acquired, the mark 'Cibaca' has become a household word and is associated with thework 'Ciba' which forms part of the trading name of both the plaintiffs. The mark 'Cibaca' connotesdistinctiveness, reputation, quality and goodwill acquired by the plaintiffs over a number of years and isunderstood by a common man as associated with the plaintiffs.



13. It is pertinent to note that in the written statement/affidavits the defendants have not even attempted toexplain as to why out of tens of thousands of words in English language they happened to hit upon the word'Cibaca'. The answer is obvious.

14. They wanted to derive benefit from the reputation and goodwill enjoyed by the plaintiffs and theirproducts under the said mark, thereby perpetrating fraud and deception on the unwary customers by passingoff their goods as those of the plaintiffs.

15. Thus I have no hesitation in coming to the conclusion that the defendants have adopted the mark 'Cibaca'deliberately with an intention of creating a subtle association between their activity and that of the plaintiffs.Their user of the trademark 'Cibaca' cannot be said to be an honest concurrent user as claimed by them.

16. Before parting, I may also deal with the stand of the defendants that there is inordinate delay on the part ofthe plaintiffs in coming to the court, which is fatal to the present action and as such they are not entitled to anyrelief. In the written statement, it is asserted that the defendants have been using the trademark 'Cibaca' since1987 to plaintiffs knowledge but they took objection to such user only in December 1991 and filed the presentsuit in the year 1992. The question for consideration is whether this period can be said to amount to consent,waiver or acquiescence on the part of the plaintiffs as alleged, so as to disentitle them to the relief ofinjunction against the defendants.

17. Apart from the fact that the question of delay is relevant in the matter of concurrent honest user (see:Apple Computer Inc. Vs. Apple Leasing & Industries 1992 (1) Arb.L.R. 93 (Delhi), which, as already held, isnot the case here and mere lapse of time does not amount to laches. In Power Control Appliances & ors Vs.Sumeet Machines Pvt. Limited 1994 (2) S 448, it has been held that to avail of defense of acquiescence undersection 30(1) (b) of the Act, the acquiescence must be such as to lead to the inference of a licence sufficient tocreate a new right in the defendant. In the present case, there is nothing on record to derive an inference of alicence sufficient to create a new right in the defendant. Besides, as noticed above, the defendants have notplaced on record any evidence in support of their stand that they have been using the trademark 'Cibaca' since1987. As noted above, the invoices filed by them with the affidavits of their dealers show that the saidtrademark was adopted by them only in December 1991, as alleged by the plaintiffs and thus there is no delayon the part of the plaintiffs in approaching the court. I reject this defense.

18. For all these reasons, I am satisfied that the plaintiffs have successfully established the likelihood ofdeception or confusion in the minds of public at large, if the defendants continue to use the trademark 'Cibaca'on their automobile filters.

Accordingly, a decree for permanent injunction is passed in favour of the plaintiffs and against the defendants,restraining the defendants from using trademark 'Cibaca' or any other trademark containing the word 'Ciba' orthe word 'Cibaca' or any other trademark deceptively similar to the trademarks 'Ciba' or 'Cibaca'. No costs.

