MANU/MH/0828/1987

Equivalent Citation: 1988(8)PTC 1(Bom)

IN THE HIGH COURT OF BOMBAY

In Appeal No. 1092 of 1986 in Notice of Motion No. 1922 of 1986 in Suit No. 2288 of
1986
Decided On: 25.09.1987
Appellants: Kamal Trading Co. and Ors.
Vs.
Respondent: Gillette U.K. Limited
Hon'ble Judges/Coram:
M.L. Pendse and M.P. Kenia, JJ.
ORDER
1. This is an appeal preferred by the original defendants against the order dated
November 20, 1986 whereby the learned Judge granted an injunction restraining the
defendants from manufacturing, selling, offering for sale or otherwise dealing in
tooth brushes and the like goods bearing the trade mark 7 O'CLOCK on any other
trade mark deceptively similar thereto as to pass off or as would be likely to pass off
or enable others to pass off the defendants' goods as and for the goods of the
plaintiffs. The facts which gave rise to the passing of this order are as follows. The
plaintiffs are a Company incorporated under the laws of the United Kingdom and are
a subsidiary of the Gillette Company, U.S.A. The Gillette Company and its
subsidiaries have been carrying on worldwide business in the manufacture and sale
of safety razor blades, safety razors, shaving cream, shaving brushes, etc. since last
over several years. The plaintiffs have been using the trade mark 7 O'CLOCK upon
and in connection with its goods since the year 1913 in India and certain neighboring
countries and the plaintiffs have acquired an extensive reputation all over the world.
The plaintiffs had recorded a declaration of ownership of the trade mark 7 O'CLOCK
on March 17, 1915 and subsequently, the plaintiffs have obtained registration of the
trade mark in India in respect of various articles in class 21, 8 and 3. The registration
of the marks are valid and subsisting, the plaintiffs entered into an agreement with an
Indian Company called Indian Shaving Products Limited, a company registered under
the Companies Act, for the purpose of manufacture and sale of safety razor blades in
India. The agreement of collaboration was entered into as the goods manufactured by
the plaintiffs were not imported in India after the year 1958 because of the import
restrictions. Under the collaboration agreement, the Indian company is entitled to use
the trade mark 7 O'CLCOK' but with the addition of the word 'EJTEK; The plaintiffs
have granted licence to the Indian Company to use the trade mark 7 O'CLOCK in the
manner as set out in the agreement dated December 28, 1984.
2. In November 1985, the plaintiffs became aware that tooth brushes were sold in the
Bombay market under the trade mark of 7 O'CLOCK'. The trade mark appeared with
the letter 'R' in a circle thereby indicating that the mark is a registered trade mark.
The plastic pouch in which the tooth brush is encased also bears the expression
"Hollywood-London-Paris". The mark used on the tooth brush as well as on the pouch
is deceptively similar to the registered trade mark of the plaintiffs. The tooth brush or
the pouch in which it is sold did not state who are the manufacturers, with the result

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the plaintiffs filed a complaint before the Metropolitan Magistrate against an unknown
person. The complaint was filed on November 22, 1985 and in pursuance of the
complaint, the Magistrate issued an order for investigation and enquiry under section
202 of the Code of Criminal Procedure. The crime branch of C.I.D. Bombay conducted
the enquiry and seized the goods from the premises of defendants Nos. 1, 5 and 6.
Thereafter, the plaintiffs became aware as to who are the manufacturers and
distributors of the tooth brush with the deceptively similar mark. The plaintiff
thereupon served notice upon the defendants to cease the user of the mark, but
having failed to receive any positive response, the suit was instituted in this court on
August 21, 1985 for an injunction restraining the defendants from manufacturing,
selling or offering for sale the tooth brush and the like goods bearing the trade mark
7 O'CLOCK; The action instituted by the plaintiffs is on the basis that the defendants
are passing off the goods with a view to trade on the reputation acquired by the
plaintiffs.
3 . There is one fact which is required to be noticed at this juncture. On May 31,
1982, the defendants had applied to the Registry of Trade Marks for registration of
their trade mark 7 O'CLOCK' in respect of tooth brushes in Class 21. The Registrar
accepted the mark on March 16, 1986 and the application was duly advertised in the
trade mark journals. The plaintiffs filed opposition to the proposed registration of the
mark and the opposition is pending hearing.
4. On institution of the suit, the plaintiffs took out Notice of Motion No. 1922 of 1986
for interim relief and in support of the application Vidya Bhushan Mehrish,
Constituted Attorney of the plaintiffs, filed affidavit in support. The defendants filed
affidavit in reply of Vinod Kumar, C. Kumar, a pattern of defendant No. 1 and the
defendant claimed that they are using the mark from July 24, 1982. The defendants
resisted grant of interim relief on the ground that the mark 7 O'CLOCK is a word mark
and not an invented mark. It was also claimed that the mark was used in respect of
safety razor blades and the goods manufactured by the plaintiffs are not sold in India
since the year 1958 and, therefore, the goodwill or reputation which the plaintiffs
may have acquired has stood extinguished. The defendants further claimed that the
mark is used by the defendants in respect of tooth brushes which are not
manufactured by the plaintiffs and there is no likelihood of any deception in the mind
of the customer. The defendants have set out in Exhibit '1' to the affidavit in reply
particulars of sales of tooth brushes, and sales expenditure on advertisement
publicity for the period commencing from 1982 till the end of year 1986-87. The
maximum sales are to the tune of Rs. 2, 52, 196.08 and the minimum sales are to the
tune of Rs. 20,391.08.
5 . The learned trial judge, after considering the affidavit filed on behalf of the
defendants, felt that the plaintiffs had made out a case for grant of interim relief and
accordingly, interim relief in terms of prayer (a) of the Notice of Motion was granted.
The order of the learned Single Judge is under challenge.
6 . Mr. Desai, learned counsel appearing on behalf of the appellants challenged the
correctness of the order by raising four contentions. The learned counsel urged that
the interim relief should have been refused to the plaintiffs on the ground of delay. It
was contended that the plaintiffs have not established that the customers are likely to
be deceived by the use of mark '7 O'CLOCK' by the defendants in respect of their
product 'tooth brush'. The learned counsel further urged that the plaintiffs had no
goodwill in mark '7 O'CLOCK' as the goods manufactured by the plaintiffs are not
available in India since 1958 and the goodwill, even if any, stood extinguished,

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while, on the other hand, the defendants acquired goodwill in respect of the mark '7
O'CLOCK' from 1982. The learned counsel also submitted that in pursuance of the ad-
interim order passed by the Appeal Court while admitting this appeal, the defendants
have altered the mark used in respect of their products and, therefore, it is now not
necessary to grant injunction claimed by the plaintiffs. In our judgment, none of the
submissions are of any merit and the appeal is devoid of any substance.
7 . The first contention urged by Mr. Desai is that the plaintiffs are not entitled to
interim relief in view of the fact that the plaintiffs have approached the Court after a
considerable delay from the date of the knowledge of the user of the mark by the
defendants. It was submitted that grant of injunction pending the suit is a
discretionary relief and the plaintiffs have disentitled themselves from seeking such
relief in view of the delay which remained unexplained. We are not prepared to
accede to the submission urged by the learned counsel. It is undoubtedly true that
the Court would be reluctant to grant interim discretionary relief in case the plaintiffs
have slept over their right and approached the Court after a considerable delay, but in
the present case the facts clearly disclose that the plaintiffs are not, at all, guilty of
any laches. As mentioned hereinabove, the plaintiffs became aware of the user of the
mark in November 1985, but the plaintiffs did not know who were using that mark
and that fact has become known only when the goods manufactured by the
defendants were seized. The plaintiffs thereupon, immediately, served notice upon
the defendants advising to cease the user of the offending mark, but the defendants
declined to take any corrective measure, with the result that the suit was required to
be instituted by the plaintiffs in August 1986. In these circumstances, we fail to
appreciate how the defendants can suggest that the relief should be refused to the
plaintiffs on the ground of delay. The first submission of Mr. Desai, therefore, must
be turned down.
8 . Mr. Desai then urged that the plaintiffs have not established that there is any
likelihood of the customer being deceived by the use of the mark '7 O'CLOCK' in
respect of defendants' product 'tooth brushes'. The learned counsel relied upon the
decision of Lord Fraser in the celebrated case of Erven Warnink B.V. and another vs.
J. Townend & Sons (Rull) Ltd. and another reported in 1980 R.P.C. 31, Lord Fraser in
his speech in the House of Lords observed that it is essential for the plaintiff in a
passing off action to show at least the following facts:
"1) That his business consists of, or includes, selling in England, a class of
goods to which the particular trade name applies;
That the class of goods is clearly defined, and that in the minds of the public,
or a section of the public, in England the trade name distinguished that class
from other similar goods;
That because of the reputation of the goods, there is goodwill attached to the
name;
That the plaintiff, as a member of the class of those who sell the goods, is
the owner of goodwill in England which is of substantial value;
That he has suffered, or is really likely to suffer, substantial damages to his
property in the goodwill by reason of the defendants selling goods which are
falsely described by the trade name to which the goodwill is attached."
Relying on this observation, Mr. Desai submitted that the plaintiffs have not

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established any of the conditions required for grant of interim relief. It was submitted
that the goods manufactured by the plaintiffs and the defendants are different in
nature; the plaintiffs manufacture blades, while the defendants manufacture "tooth
brushes". The goods of the plaintiffs and the defendants are not available in the same
shop and the customers of these goods are different. The goods sold by the plaintiffs
are blades and fall in Class 8, while those of the defendants are tooth brushes which
fall in Class 21. Relying on these circumstances, it was contended that there was no
likelihood of any deception. We are unable to see any merit in this submission. In the
first instance, the assumption of the learned counsel that the class of customers for
purchase of safety blades and tooth brushes are different and these goods are not
available in the same shop is wholly misconceived. We take judicial notice of the fact
that these goods are available in every shop including a small shop and each and
every person is required to purchase these goods. The safety blades and tooth
brushes are items of daily requirement and are required by every person. It is
impossible to accept the submission that as the goods being different and as the
goods are set out in different Classes in Schedule to the Act, there is not any
likelihood of customer being deceived.
9 . Mr. Tulzapurkar very rightly submitted that the trade mark '7 O'CLOCK' had
acquired worldwide reputation and any customer purchasing the goods with that
mark would immediately connect the goods to the house of Gillets which are the
registered owners of the mark '7 O'CLOCK'. It cannot be overlooked that it is not
necessary for the plaintiffs to establish that in fact any customer was deceived, it is
enough if it is shown that there is likelihood of deception. We have no hesitation in
concluding that the user of the mark '7 O'CLOCK' by the defendant would clearly
result in deceiving the customer with the impression that the tooth brushes come
from the house of Gillets. A faint submission was advanced by Mr. Desai that the
plaintiffs cannot use trade mark '7 O'CLOCK' simplicitor in India and it is not
necessary to add to word 'Ejtek' while selling the razor blade. We fail to appreciate
how additional word would make any difference and how it will enable the
defendants to pass of their products by using the mark '7 O'CLOCK' simplicitor.
1 0 . Mr. Desai then submitted that even assuming the plaintiffs have acquired
reputation and goodwill in respect of mark '7 O'CLOCK', that reputation and goodwill
stands extinguished because the goods manufactured by the plaintiffs are not
available in India from the year 1958 onwards because of import restriction. It was
contended by the learned counsel that as the goods are not available, the goodwill
stands extinguished and in support of this submission reliance was placed on the
decision in the case of Anheuser-Busch Inc. v/s. Budejovicky Budvar N.P. (trading a
Budweiser Budyar Brewery) and others reported in Fleet Street Reports (1934) page
413. In this case, the plaintiffs were brewers of beer in the United States and their
beer was sold since 1875 under "Budweiser" trade mark which extensively advertised
throughout North America as "the King of bears". The defendants No. 1 were brewers
of beer in Ceske Budejovice, a town in Czechoslovakia and the business was carried
out from the year 1895. In the year 1911, the defendant No. 1 objected to the
registration in the United States of "Budweiser", but the plaintiffs compromised this
objection by entering into agreement and whereunder the plaintiffs were given right
to the trade mark for all countries outside Europe, while the defendants were free to
use the word "Budwesier" in all jurisdictions as a description of the geographical
origin of beer brewed by them at Budweis. The defendants prior to 1973 sold
significant quantity of beer in the United Kingdom, while the plaintiffs exported no
beer to United Kingdom for normal commercial sale and domestic consumption. After
1974, the plaintiffs sold minimum quantity in the United Kingdom, In the year 1979,

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the plaintiffs instituted action and sought injunction preventing the defendants from
selling or dealing in any beer by the name of "Budweiser". The defendants by
counter-claim sought injunction to prevent the plaintiffs from selling or dealing in
any 'Budweiser' beer unless it was brewed by the defendants. The learned trial Judge
dismissed both the claim and the counter-claim and the plaintiffs carried an appeal.
The Appeal Court observed that the question in its simplest form which arose before
the Court was how far is it an essential ingredient of successfully claiming passing
off, that the plaintiffs should have established in United Kingdom, the business in
which his goods or services are sold to the general public on the open market. The
Court of Appeal after referring to the decision of House of Lords in Advocate's case,
held that the plaintiffs could not legitimately claim that before the defendants' entry
into the market, they had acquired a reputation as the brewers of the beer with a
substantial section of the public. The court of Appeal felt that the reputation could not
have been associated with the beer, which for practical purposes, nobody could buy
in United Kingdom. The Court of Appeal felt that the beer was sold only to Military
and diplomatic establishments of America situated in England, and, therefore, it could
not be claimed that the plaintiffs were carrying on business activity. The Court of
Appeal referred to the classic statement of Lord Macnathten in C.I.R. Versus Miller &
Company reported in (1901) Appeal Cases 217 to the effect that goodwill has no
independent existence and it cannot subsist by itself but must be attached to a
business. Destroy the business and the goodwill perishes with it, though elements
remain which may perhaps be gathered up and be revived again.
11. We must express our dissent with the view taken in this case. In our judgment, it
is not possible to conclude that the goodwill or the reputation stands extinguished
merely because the goods are not available in the country for some duration. It is
necessary to note that the goodwill is not limited to a particular country because in
the present day, the trade is spread all over the world and the goods are transported
from one country to another very rapidly and on extensive scale. The goodwill
acquired by the manufacturer is not necessarily limited to the country where the
goods are freely available because the goods though not available are widely
advertised in newspapers, periodicals, magazines and in other. The result is that
though the goods are not available in the country, the goods and the mark under
which they are sold acquires wide reputation. Take for example, the Television and
Video Cassette Recorders manufactured by National, Sony or other wellknown
Japanese Concerns. These Televisions and V.C. Rs. are not imported into India and
sold in open market because of trade restrictions, but is it possible even to suggest
that the word 'National' or 'Sony' has not acquired reputation in this Country? In our
judgment, the goodwill or reputation of goods or marks does no depend upon its
availability in a particular country. It is possible that the manufacturers may suspend
their business activities in a country for short duration but that fact would not destroy
the reputation or goodwill acquired by the manufacturers. An identical view was
taken by Division Bench of Mr. Justice S.K. Desai and Mr. Justice Bharcuha in a
judgment dated July 24, 1986 in Appeal No. 368 of 1986. The question for
consideration before the Division Bench was whether the goodwill in the trade mark
"7 O'CLOCK" stood extinguished because of non-availability of blades with the mark
in India after year 1958. The Division Bench turned down the claim by pointing out
various reasons and we are in entire agreement with the observations made in the
judgment on this aspect. In our judgment, it is not possible to follow the view taken
in the case of 'Budweiser'. Finally, Mr. Desai submitted that while admitting this
appeal on December 12, 1986, the Division Bench granted interim relief pending the
hearing of the appeal by putting certain conditions before which the defendants could
use the trade mark "7 O'CLOCK". It is the claim of Mr. Desai that the defendants have

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carried out the conditions set out by the Division Bench and, therefore, there is no
occasion now to grant interim injunction. The conditions put by the Division Bench
were that number will not be written within the circle of Letter 'O'; that the letter 'O'
in the mark would be plain; that the device of a tower or any other mark to convey
any connection to any foreign country will not be used; that letter 'R' within a circle
to represent that the mark is registered trade mark will not be used; that the
appellants would put the words "Made in India" below the words "Tooth Brush" and
also the words "Manufactured by Kamal Trading Company" on the plastic pouch and
the manufacture or sale of tooth brushes will not exceed 20,000. We fail to
appreciate how grant of this relief pending the appeal can create any right in the
defendants to insist that the same order be passed at the hearing of the appeal. We
have heard Mr. Desai very extensively and we find that not only there is no merit in
the appeal but the entire conduct of the defendants is totally dishonest and fraudulent
in using the mark "7 O'CLOCK". To begin with, the defendants are unable to explain
how the mark was invented by them. The mere perusal of the tooth brush and the
plastic pouch in which it was sold clearly reveals the dishonest conduct of the
defendant. The mark used on the tooth brush and the plastic pouch is also not
identical. The plastic pouch mentions the word "R" in a circle to suggest that the
mark used by the defendants is a registered mark. In addition, a picture of tower
possibly Fifet Tower, is printed on the pouch to suggest that the goods are
manufactured in Paris. The defendants also used the words as "Hollywood-London-
Paris" to suggest that the goods are of the foreign made. This conduct on the part of
the defendants clearly indicate that the anxiety was to trade upon the reputation of
the mark "7 O'CLOCK" and not to leave any chance for customer to detect the mis-use
of the mark, further effort was made to give an impression that the mark is a
registered mark and that goods are manufactured in foreign country. It is hardly
required to be stated that when the defendants are guilty of total dishonesty, then it
is futile to claim that when the aggrieved party goes to the Court, the defendants
should be permitted to use the mark by making some alteration. When confronted
with the conduct of the defendants, the only excuse Mr. Desai can think of is that the
defendants are illiterate and the commencement of the mark was without taking legal
advice. In our judgment, the conduct reveals the mind of the defendants and the
conduct by no stretch of imagination can be said to be either bonafide or innocent.
We also cannot overlook the fact that the defendants did not bother to produce any
invoice in support of the claim that the goods were sold from 1982 onwards and the
sale figures annexed as Ex. '1' to the affidavit in reply were correct figures. We
enquired from Mr. Desai as to how the amounts were spent on the advertisement and
the answer was that the advertisement boards were put up in shops where the tooth
brushes are sold. No affidavit of any trader or any distributor is filed in support of the
claim, nor did the affidavit of partner sets out the names of any distributors to whom
the advertisement material was handed over. In these circumstances, we are unable
to accept the claim made by the defendants by setting out certain figures in Ex. '1' to
the affidavit on the facts and circumstances of the case, the learned single Judge was
perfectly right in granting relief to the plaintiffs and there is no infirmity whatsoever
in the impugned order.
Accordingly, appeal fails and is dismissed with costs.
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