Duroply Industries Limited And Anr vs Ma Mansa Enterprises Private Limited

BEFORE: THE HON'BLE JUSTICE SUGATO MAJUMDAR Date: 25th June, 2025 Appearance: Mr. Debnath Ghosh, Sr. Adv. Mr. Sarosij Dasgupta, Adv. Ms. Mini Agarwal, Adv. Ms. Ratnadipta Sarkar, Adv. Mr. Baijayanta Banerjee, Adv. ...for the Petitioners

Mr. Sonal Shah, Adv. Mr. K. Shah, Adv. Ms. R. Banerjee, Adv. ...for the Respondent

The Court: This is an application filed by the Petitioner/Plaintiff, praying for

restraining orders against the Respondent/Defendant from using the mark ―Duro Touch‖

or ―Duro‖ or any other mark which is deceptively similar or identical in name with the

Petitioners' registered trademark ―DURO‖ marks and ―DURO‖ brand name. Since the

application was part heard, it was taken up for hearing and disposed of by this order.

Sum and substance of the Petitioners' case may be summarized as follow:

Page |2

i. The Petitioner No. 1 is a registered company carrying on business of

manufacturing, distribution, marketing and sale of plywood, paper, tea,

furniture and allied products. The Petitioner No. 1 was incorporated in the

year 1957 under the name and style of M/s Sarda Plywood Industries Ltd. On

and from 13/12/2018, the name of the Petitioner No. 1 has been changed to

M/s Duroply Industries Ltd. The Petitioner No. 2 is a sister concern of the

Petitioner No. 1 and was incorporated on 11/10/1991.

ii. In order to distinguish it's range of plywood products as well as related

products, the Petitioner No. 1 adopted the expression ―DURO‖ way back in

the year 1964 as trade mark and primary brand name. Since then, the

Petitioner No.1 has been manufacturing, distributing, marketing and selling

plywood, decorative and industrial laminates, block boards, doors, shuttering

plywood, teak black board and other goods under its mark ―DURO‖. The

expression ―DURO‖ also forms a dominant and distinguishing as well as

essential part of trade mark and trading of the Petitioner No. 1. This mark

―DURO‖ serves as corporate identity of the Petitioner No. 1.

iii. Over the years, the Petitioner No. 1 obtained several registrations for the

marks ―DUROPLY‖, ―DUROBOARD‖, ―DUROMAC‖, ―DURODERBY‖ and

others. Some of the trademarks having ―DURO‖ prefix, which were originally

registered in the name of the Petitioner No. 1, were assigned to the Petitioner

No.2. In the year 1968, the Petitioner No. 1 applied for and obtained

registration of its first trade mark ―DUROPLY‖ in Class 19. But subsequently,

owing to change in the label of the Petitioner No. 1, that particular

registration was not renewed. The Petitioner No. 1 subsequently obtained

registration for the word mark ―DUROPLY‖, which the Petitioner No. 1 has

been using since 1964. The Petitioner No. 1 has been able to create goodwill Page |3

in respect of DURO marks and is enjoying market reputation in respect of the

word mark.

iv. In the year 2018, the Petitioner No. 1 came to know that the Respondent was

in process to obtain registration of the ―DUROTOUCH‖ mark (logo/label) in

Class 19 for plywood, teak ply and other similar products. The Respondent is

in the same business and in the same industry as the Petitioners in relation to

the identical or similar or related products and has been using a mark

deceptively similar to that of the Petitioners, riding over the goodwill and

market reputation of the Petitioners. It is averred that the Respondent has

blatantly attempted to pass off the Respondent's goods as that of the

Petitioners in various places including the places within jurisdiction of this

Court.

v. The Petitioner No.1, through its' advocates sent a ―Cease and Desist‖ letter

dated 26/03/2018 to the Respondent intimating that the later had been

violating the intellectual property rights of the Petitioners' and asked to

discontinue using the ―DUROTOUCH‖ mark. In reply letter dated

08/05/2018, the Respondent's Advocate intimated that the Respondent had

been using the ―DURO TOUCH‖ mark since 20/01/2006 and had been able

to build up goodwill in the states of Himachal Pradesh, Haryana and

connected areas.

vi. The Petitioners have invested huge amount of money for promotion of its

mark ―DURO‖ and created goodwill and market reputation. The Respondent

has infringed trade mark and is also liable for passing off. But for the alleged

acts of the Respondent, the Petitioners have suffered loss and damage. On

being constrained, the Petitioners have filed the instant suit and also the

instant application praying for restraining orders.

Page |4

The Respondent contested the instant application by filing affidavit-in-opposition.

The nutshell of the contentions in the affidavit-in-opposition are as follow :-

a) The Respondent was incorporated under the Companies' Act 1956 on

25/02/1986 with object of manufacturing plywood, teak ply, shuttering ply,

block-board, flush door, laminated board, panel door, decorative, sun mica,

wooden beadings and core-veneer. In the year 2006, it decided to adopt a

specific brand for its plywood and accordingly named it ―DURO TOUCH‖. The

Respondent obtained registration on 15/08/2016. The Respondent has been

continuously manufacturing and selling its products, as aforesaid, under the

trade mark ―DURO TOUCH‖ since the year 2006.

b) It is further stated that the Respondent is the registered proprietor of the mark

―DURO TOUCH‖ and the only common element in the Petitioner and the

Respondent's mark is ―DURO‖. The Petitioner does not enjoy any proprietary

right in the word ―DURO‖. Hence, the Petitioner's marks and the

Respondent's mark ―DURO TOUCH‖, when compared as a whole are visually,

phonetically as well as structurally dissimilar.

c) The Respondent stated that it is registered proprietor of the mark ―DURO

TOUCH‖ and the only common element between the marks of the parties is

the word ―DURO‖. The mark of the Respondent is visually, phonetically and

structurally dissimilar.

d) The Petitioners had, apart from applying for marks having ―DURO‖ as prefix

registered, had also applied for registration of the mark ―DURO‖ under

application no. 501968 dated 08/12/1988. The said application was opposed

by one Mr. Madan Lal Agarwala on the basis of his registered trade mark

―DUROPLAST‖. The application for registration of the word ―DURO‖ was Page |5

refused in terms of the order dated 10/05/2005, observing that no exclusive

right can be granted to anyone to use the term ―DURO‖ as a trade mark for the

goods in question. This order was upheld by the Intellectual Property

Appellate Board in terms of the order dated 29/12/2006. The order clearly

shows that no entity including the Petitioner can claim exclusive right or

monopoly in respect of the word ―DURO‖.

e) The Petitioner's registered trademarks having ―DURO‖ as prefix can be

divided in two lots - in one lot the marks are all ―proposed to be used‖ even

as on this date while the other lot of registered trademarks are having varied

user the earliest had been in use since 1964. The Petitioners though claim to

have been using its various ―DURO‖ mark since 1964, there is nothing on

record to show its use since that date. This was observed by the Intellectual

Property Appellate Board in its order. Therefore, merely running a case of

prior user without relying upon any figure prior to 2008, does not entitle the

Petitioners to any restraining order as prayed for, specially when the

Respondent has been continually and uninterruptedly using its' own registered

trade mark.

f) It is further averred that a search was conducted on the Trade Marks Registry's

portal which revealed that at least 166 users with Duro Formative marks. A list

of such marks are given in the affidavit-in-opposition. [(Para. 3 (k)]

g) It is averred that the Respondent's mark

―DUROPLY/DUROBOARD/DUROMAC‖ and/or any other DURO prefixed

mark in Class 19 is not confusingly or deceptively similar to the mark

―DUROTOUCH‖. As such, an action of passing off is also not maintainable.

Page |6

h) The Respondent has been using its' mark from the year 2006. But the

Petitioners served cease and desist notice only on 26/03/2018. The

Petitioners kept silent for almost years and made the Respondent to think the

issue between the parties having reached a quietus. Therefore, the principles

of acquiescence, delay, latches and estoppel comes into play. Marks of both

the parties are in co-existence in the market for last 14 years.

i) The Petitioners are aware of the fact of limitations in relation to the word

―DURO‖. The Petitioners specifically undertaken not to claim any right much

less registered proprietary rights over the word ―DURO‖ in one of its

combination-application. Registration No. 246497 was granted to the

Petitioners on specific disclaim of rights over the word ―DURO‖. Thus, the

Petitioners are guilty of fraud by attempting to seek trade mark rights over the

disclaimed portion.

j) It is further averred that though the Petitioners have obtained several

registrations of several trademarks with ―DURO‖ prefix, the Petitioners are not

using most of the marks. Thus, the Petitioners have registered ghost marks

and have attempted to create monopoly on the word ―DURO‖ which they were

unable to achieve through registration of the trade mark ―DURO‖.

k) It is further stated that apart from the Petitioners' mark, there exist many

other registered trademarks with DURO as prefix or a suffix under the trade

description of plywood and also other categories in Class 19. Therefore, it is

not correct to say that the trade mark in question is intrinsically linked to the

Petitioners.

l) In nutshell, it is stated that the instant application should be dismissed.

Page |7

The Plaintiff filed affidavit-in-reply.

Plaintiff argued:

Firstly, Mr. Ghosh, the Learned Counsel for the Petitioner No. 1 argued that the said

Petitioner is prior user of the mark ‗DURO', and has been continuously and extensively

using the same since 1964. The rights of the prior user are superior to registration and are

unaffected by registration obtained under the Trade Marks Act, 1999. It is recognized

principle of common law jurisdiction that rights of passing off is broader than the remedy

against infringement. A person acquires a right by use of the trade mark and such use

generates a goodwill and reputation in the market. A later user of a similar mark cannot

misrepresent his business as that of prior user. Following decisions are referred to:

1. S. Syed Mohideen Vs. P. Sulochana Bai [(2016) 2 SCC 683]

2. Neon Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors.

[(2016) 2 SCC 672]

3. Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai & Ors.

[(2022) 5 SCC 1]

It is further argued by Mr. Ghosh, the Learned Counsel for the Plaintiff that a well-

known trade mark means a mark which has become familiar to a substantial segment of

people who use such goods or receives services; an use of similar mark in relation to other

goods or services would be likely to be taken as indicating a connection in course of trade

between these gods or services and a person using the mark in relation to the first goods or

services. Mr. Ghosh explained the scope of Section 2(1) (zg) of the Trade Marks Act, 1999.

It is further argued that user of a registered word mark can maintain an action for

infringement against the Defendant having a label mark registration. Mr. Ghosh referred Page |8

to Siyaram Silk Mills Ltd. Vs. Shree Siyaram Fab Pvt. Ltd. & Ors. [(2012) 2

MHLJ 49]

It is further argued that disclaimer would not stand on the way of an action for

passing off. Mr. Ghosh referred to Godfrey Phillips India Vs. Girnar Food &

Beverages [(1998) 9 SCC 531]. It is submitted in continuation that disclaimer in one

mark does not affect the other mark. All marks are independent marks. To substantiate

his argument, Mr. Ghosh relied upon Skol Breweries Ltd. Vs. Som Distilleries

(MANU/MH/1110/2011).

Another contention raised is that when the Defendant has applied for registration of

a mark the Defendant cannot allege that the mark is common in trade. Mr. Ghosh referred

to Indian Hotels Company Ltd. Vs. Jiva Institute of Vedic Science [(2008) SCC

OnLine Del 1758].

The last contention of Mr. Ghosh is that any product sold or marks used beyond the

scope of the Memorandum of Association of a Company is ultra vires. Inviting attention of

the Memorandum of Association of the Defendant, Mr. Ghosh submitted that the

Memorandum of Association is silent on carrying of plywood business. Therefore, the

business itself is ultra vires. Mr. Ghosh referred to:

Lakshmanaswami Mudaliar & Ors. Vs. Life Insurance Corporation

of India & Anr. (AIR 1963 SC 1185)

Ashbury Railway Carriages & Iron Co. case [(1875) LR 7 HL 653]

Defendant argued:

Ms Shah, the Learned Counsel for the Respondent argued, at the outset, that the

Petitioner/Plaintiff was incorporated in the year 1957 as Sarda Plywood Industries Ltd.

The said Sarda Plywood adopted the expression ‗DURO' in the year 1964 and sought for Page |9

registration of various marks with ‗DURO' as its principal trade mark either in isolation or

as a prefix. The said Sarda Plywood changed its name to Duroply Industries Ltd. on

13/12/2018. By way of assignment, dated 28/05/2018 Sarda assigned all the marks to

Sujay Management the Plaintiff no.2. Sarda & Duroply are no more the registered

proprietors of the trade marks in question as on the date of institution of the suit. The

present owner is Sujay Management only. On 01/06/2018, the Plaintiff no. 2 entered into a

trade mark licence agreement for only using the marks in respect of the goods with no

trade mark rights on the same. This licence agreement expired on 31/05/2022. Therefore,

Duroply has no locus in the lis either as an owner or user.

Next it was argued that in the year 1968, Sarda Plywood had applied for registration

of ―Sarda Plywood DUROPLY Industries (P) Ltd.‖ in an oval format in Class 19, proposed

to be used in Part B of the Trade & Merchandise Act, 1958. Referring to Section 9 of the

Act of 1958, it was submitted that registration in Part B, is granted when the trade mark

sought for is not distinctive by itself but capable of being distinctive. The Petitioner had

made an application for registration of the word ―DURO‖ being Application No. 501968

dated 08/12/1988 under the Act of 1958. It was observed by the Registrar of Trade Marks,

in terms of the Order dated 10/05/2005 that ―DURO‖ is a Spanish word, therefore, no

exclusive right can be given to anyone. Registration of ―DURO‖ was refused. In another

application being Application No. 542047 the expression ―DURO‖ was disclaimed by the

Registrar and the said disclaimer was accepted by the Plaintiffs. It is submitted that the

word ―DURO‖ is used in common parlance and is laudatory in nature. It confers no

exclusive right. Mrs. Shah referred to:

a. Ultratech Cement Ltd. & Anr. Vs. Dalmia Cement [(2016) SCC

OnLine Bom 3574]

b. Soothe Healthcare - [(2022) SCC OnLine Del 645] P a g e | 10

Next it was argued that the two marks ―DURO‖ formative words and

―DUROTOUCH‖ are in any event not similar. Referring to Section 17(2) of the Trade

Marks Act, 1999, it was submitted that the founding principle of the provision also

disallows the Petitioner from claiming exclusivity on a part of a registered trade mark. Vardhaman Realtech Pvt. Ltd. Vs. Vardhaman Properties Ltd. [(2016) SCC

OnLine Del 4738] was relied upon.

Next it is argued that the Plaintiff has failed to make out a case of passing off.

Neither there is any case of complaint lodged by any consumer alleging deception or

confusion nor a case of diminishing sales figure is made out. Though prior user is a critical

factor in trade mark dispute, that is not a sole determinant in cases involving descriptive

trademarks. The Plaintiff has failed to demonstrate that descriptive trade mark has

become distinctive in fact. Mrs. Shah referred to Pidilite Industries Ltd. & Anr. Vs.

Vilas Nemichand Jain & Anr. [(2015) SCC OnLine Bom. 4801].

It is further submitted that the Plaintiff has referred to number of marks but most of

the marks are to be used or proposed to be used. They are mostly ghost marks.

It is denied that there was no disclaimer. The word ―DURO‖ is in use by various

traders and is common to trade.

DECISION:

Since the suit is pending for adjudication, this injunction application shall be

decided only on the basis of facts, hitherto uncontroverted or admitted or undisputed.

There is no dispute or denial by the Defendant that the Plaintiff is in use of the trade

mark ―DUROPLY‖ since 1964. The Respondent has been using the trade mark

―DUROTOUCH‖ since 2006. Although the Plaintiff applied for registration of the mark

―DURO‖ the same was not registered. The Registration was refused in terms of order

dated 10th May, 2005 on the ground that ―DURO‖ is a Spanish word meaning ‗hard'.

P a g e | 11

Therefore, no exclusive right can be given to anyone. In another application bearing no.

542047, the Defendant disclaimed the expression ―DURO‖. Both the parties have their

respective registered trademarks; there is no dispute on it. The Respondent argued on

disclaimer by the Petitioner or lack of distinctiveness of the trade mark and its descriptive

character; long acquiescence of the Plaintiff in raising any objection to concurrent use of

the two trademarks and co-existing market disentitling the Petitioner to any injunctive

relieve. The Petitioner relies upon long user, common law remedy of passing off as well as

infringement action.

Before adverting to rival arguments, it is necessary to look into certain provisions of the Trade Marks Act, 1999. Section 28 of the Act states as follow:

―28. Rights conferred by registration. -- (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.‖

This section gives exclusive right to use the registered trade mark in relation to goods in

respect of which the trade mark is registered. It also empowers the registered trade mark

holder to bring an action of infringement of trade mark as appears from plain reading of

sub-section(3) when two or more persons are registered proprietor of identical or reasons P a g e | 12

similar trademarks. There is no exclusive right to use of any of the trade mark shall not be

deemed to have been acquired by any of the trade mark owner against the other. In other

words, there is no exclusivity of right. However, rights conferred by Section 28 are not

absolute and unbridled; this right has subject to other provisions of the Act. Section 28,

therefore, cannot be read in isolation. In this context, Section 34 should be considered

which states as follow:

―34. Saving for vested rights. -- Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--

(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.‖

Section 27 of the Act saves the right to sue on the ground of passing off. This Section states

as follow:

―27. No action for infringement of unregistered trade mark.--(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.‖

In S. Syed Mohideen Vs. P. Sulochana Bai [(2016) 2 SCC 683], the Supreme Court

of India considered interplay of Section 27(2) and Section 28(3) of the Act, it was observed

that collective reading of the provisions especially Section 27, 28, 29 and 34 of the Trade P a g e | 13

Marks Act, 1999 would show that the rights conferred by registration are subject to the

rights of the prior user of the trade mark. The Apex Court of the India further observed

that from reading of Section 27(2) of the Act, it is clear that the right of action of any

person for passing off the goods/services of another person and remedies thereof are not

affected by the provisions of the Act. Thus, the rights in passing off are emanating from

common law and not from the provisions of the Act and they are independent of the rights

conferred by the Act. Rights granted by registration in the form of exclusivity are not

absolute but a subject to the provisions of the Act. It was observed that Section 28(3)

nowhere comments about the rights of passing off which shall remain unaffected due to

over-reading effect of Section 27(2) of the Act and thus the right emanating from the

common law shall remain undisturbed by the enactment of Section 28(3) of the Act. The

Supreme Court of India continued to observe that the scheme of the Act is such where the

right of prior user are recognised superior than that of the registration and even the

registered proprietor cannot disturb or interfere with the right of the prior user. The

overall effect of collective reading of the provisions of the Act is that the action for passing

off which is premised on the rights of prior user generating a good-will shall be unaffected

by any registration provided under the Act. To quote the relevant part of the judgment:

―30.3. Section 28(3) of the Act provides that the rights of two registered

proprietors of identical or nearly resembling trade marks shall not be enforced

against each other. However, they shall be same against the third parties.

Section 28(3) merely provides that there shall be no rights of one registered

proprietor vis-à-vis another but only for the purpose of registration. The said

provision 28(3) nowhere comments about the rights of passing off which shall

remain unaffected due to overriding effect of Section 27(2) of the Act and thus

the rights emanating from the common law shall remain undisturbed by the

enactment of Section 28(3) which clearly states that the rights of one registered

proprietor shall not be enforced against the another person.‖ P a g e | 14

In N.R. Dongre & Ors. Vs. Whirlpool Corporation & Anr. [(1996) 5 SCC

714] may be considered. In this case, the Appellant/Defendant had a registered trade

mark ―Whirlpool‖. The Plaintiff/Respondent had been using the trade mark ―Whirlpool‖

throughout the world and had registered the same in this country but subsequently that

was not renewed. Because of non-renewal the Plaintiff/Respondent was not a registered

proprietor of the trade mark ―Whirlpool‖. The Plaintiff had a long prior user name of

―Whirlpool‖ coupled with trans-border, reputation and good-will. No plausible

explanation was offered by the Defendants for recent adoption of the mark ―Whirlpool‖.

The Single Bench granted a temporary injunction in favour of the Plaintiff which was

finally upheld by the Supreme Court of India.

Interplay of Section 28, 29, 30 and 31 of the Trade Marks Act, 1999 by the Supreme

Court of India in Renaissance Hotel Holdings Inc. Vs. B. Vijaya Sai & Ors.

[(2002) 5 SCC 1], in this case, the Appellant's trade mark ―Renaissance‖ was registered

in relation to goods and services in Class 16 and Class 42 and the mark ―Sai Renaissance‖

used by the Respondent/Defendant was identical or similar to the Appellant's trade mark

in relation to the goods and services similar to that of the Appellant/Plaintiff. The

Supreme Court of India observed that there is a clear act of infringement in view of Section

29(9) of the Act. But facts of the instant case is different and demands differential

consideration.

Section 34 of the Trade Marks Act, 1999 was considered by the Supreme Court of

India in Neon Laboratories Limited Vs. Medical Technologies Ltd. & Ors.

[(2016) 2 SCC 672]. The first user rule was explained by the Supreme Court of India in

the context of Section 34 of the Act was explained that the first in the market test has

always enjoyed pre-eminence:

―This section palpably holds that a proprietor of a trade mark does not have the right

to prevent the use by another party of an identical or similar mark where that user P a g e | 15

commenced prior to the user or date of registration of the proprietor. This ―first user‖

rule is a seminal part of the Act. While the case of the respondent-plaintiffs is

furthered by the fact that their user commenced prior to that of the appellant-

defendant, the entirety of the section needs to be taken into consideration, in that it

gives rights to a subsequent user when its user is prior to the user of the proprietor and

prior to the date of registration of the proprietor, whichever is earlier. In the facts of

the case at hand, the appellant-defendant filed for registration in 1992, six years prior

to the commencement of user by the respondent-plaintiffs. The appellant-defendant

was, thus, not prevented from restraining the respondent-plaintiffs' use of the similar

mark PROFOL, but the intention of the section, which is to protect the prior user from

the proprietor who is not exercising the user of its mark prima facie appears to be in

favour of the respondent-plaintiffs.‖

The Supreme Court of India considered Whirlpool's case as well as S. Syed

Mohideen's case (supra) to emphasise that the prior users' rights will override those of a

subsequent user even though it had been accorded registration of its trade mark.

In S. Syed Mohideen's case it was observed by the Supreme Court of India:

―33.2. We uphold the said view which has been followed and relied upon by

the courts in India over a long time. The said views emanating from the

courts in India clearly speak in one voice, which is, that the rights in common

law can be acquired by way of use and the registration rights were introduced

later which made the rights granted under the law equivalent to the public

user of such mark. Thus, we hold that registration is merely a recognition of

the rights pre-existing in common law and in case of conflict between the

two registered proprietors, the evaluation of the better rights in common

law is essential as the common law rights would enable the court to

determine whose rights between the two registered proprietors are better

and superior in common law which have been recognised in the form of the

registration by the Act.‖ P a g e | 16

Passing off is a common law action. In Inter Lotto (UK) Ltd v Camlot Group

Plc, [(2004) RPC 8, 171 (CD)], Laddie J, explaining the origin and development of

passing off and trade mark rights, states the law as follows:

―Two or more centuries ago, the cause of action in passing off was dependent upon proof of fraud. With time, this requirement disappeared, at least in one form of the action, and it became dependent upon proof, inter alia, of misrepresentation. An early example of this is Millington v Fox. As Wadlow points out, by 1842 the term "passing off" was in use and the principles of the cause of action were defined by Lord Langdale MR in Perry v Truefitt, in terms which are familiar to the modern practitioner:

I think that the principle on which both the courts of law and of equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his own goods under the pretence that they are the goods of another man; he can-not be permitted to practice such a deception, nor to use the means which contribute to that end. He cannot therefore be allowed to use names, marks, letters, or other indicia. by which he may induce purchasers to believe, that the goods which he is selling are the manufacture of another person. I own it does not seem to me that a man can acquire property in a name or mark; but whether he has or not a penne the name or mark, I have no doubt that another person has not the right to use that name or mark for the pur-poses of deception, and in order to attract to himself the course of trade, or that custom, which without the improper act, would have flowed to the person who first used, or was alone in the habit of using the particular name or mark.‖

In a series of cases in the middle of nineteenth century, it was considered that there was a

right of property in trade marks. While the common law still required fraud, equity did not

confine itself, to relaxing the standard of dishonesty required before it would intervene. In

S. Syed Mohideen's case three ingredients of passing off were considered, these are:

(i)goodwill, (ii)misrepresentation and (iii)damage. These are classical trinities as essential

ingredients of passing off as per speech of Lord Oliver laid down in Reckitt & Colman

Products Ltd. Vs. Borden Inc. [(1990) 1 WLR 491] which is more popularly known

as ―Jif Lemon‖. Lord Oliver reduced the five guidelines laid down by Lord Diplock in P a g e | 17

Erven Warnink Besloten Vennnoot Schap Vs. J. Townend & Sons (Hull) Ltd.

[(1979) AC 731] (―the Advocaat case‖) to three elements:

(1) goodwill owned by a trader,

(2) misrepresentation and

(3) damage to goodwill.

Thus, the passing off action is essentially an action to deceit where the common law rule is

that no person is entitled to carry on his or her business on pretext that the said business is

of that of another. An action is passing off and ambit of such action had been considered

by the Supreme Court of India in plethora of decisions. To mention a few in Kaviraj

Pandit Durga Dutta Sharma Vs. Navaratna Pharmaceutical Laboratories (AIR

1965 SC 980) the Supreme Court of India considered basic differences between the

causes of action and right to relief in suits for passing off and for infringement of a

registered trade mark. In the matter under consideration before the Supreme Court of

India there were complaints of both an invention of a statutory right as well as passing off.

It was explained by the Supreme Court of India that while an action for passing off is a

common law remedy being in substance an action for deceit, that is, a passing off by a

person of his own goods as those of another that is not the gist of an action of

infringement. The action for infringement is a statutory remedy conferred on the

registered proprietor of a registered trade mark for the vindication of the exclusive right to

the use of the trade mark in relation to those goods. The use by the Defendant of the trade

mark of the Plaintiff is not essential in an action for passing off but is the sine qua non in

the case of an action for infringement. It was further observed:

―In an action for infringement, the plaintiff must, no doubt, make out that the

use of the defendant's mark is likely to deceive, but where the similarity

between the plaintiff's and the defendant's mark is so close either visually, P a g e | 18

phonetically or otherwise and the court reaches the conclusion that there is an

imitation, no further evidence is required to establish that the plaintiff's rights

are violated. Expressed in another way, if the essential features of the trade

mark of the plaintiff have been adopted by the defendant, the fact that the get-

up, packing and other writing or marks on the goods or on the packets in which

he offers his goods for sale show marked differences, or indicate clearly a trade

origin different from that of the registered proprietor of the mark would be

immaterial; whereas in the case of passing off, the defendant may escape

liability if he can show that the added matter is sufficient to distinguish his

goods from those of the plaintiff.‖

In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. [(2001) 5 Supreme

Court Cases 73] the Supreme Court of India again considered the previous authorities

and expounded the principle of passing off. The Supreme Court of India expressed that the

decisions in last four decades had clearly laid down that what has to be seen in the case of a

passing off an action is the similarity between the competing marks and whether there is

likelihood of deception or causing confusion. The Supreme Court of India disagreed with

the proposition that the principle of phonetic similarity has to be jettisoned when the

manner in which competing words are written is different. It was expressed to the

judgment that trade mark is essentially adopted to advertise once product and to make it

known to the purchaser. It attempts to portray the nature and, if possible, the quality of

the product and over a period of time the mark may become popular. It is usually at that

stage that other people are tempted to pass off their products as that of the original owner

of the mark. The Supreme Court of India referred to an observation made in Wander

Ltd. Vs. Antox India (P) Ltd. (1990 Supp SCC 727) :

―16. An infringement action is available where there is violation of specific

property right acquired under and recognised by the statute. In a passing-off

action, however, the plaintiff's right is independent of such a statutory right to P a g e | 19

a trade mark and is against the conduct of the defendant which leads to or is

intended or calculated to lead to deception. Passing-off is said to be a species of

unfair trade competition or of actionable unfair trading by which one person,

through deception, attempts to obtain an economic benefit of the reputation

which another has established for himself in a particular trade or business. The

action is regarded as an action for deceit. The tort of passing-off involves a

misrepresentation made by a trader to his prospective customers calculated to

injure, as a reasonably forseeable consequence, the business or goodwill of

another which actually or probably, causes damages to the business or good of

the other trader.‖

Cadila's case was considered and referred to as well as relied upon by the Supreme Court

of India in Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd. and Ors.

[(2002) 5 Supreme Court Cases 95]. In this case cross suits were filed by the

Appellant and the Respondent claiming proprietorship of the trademarks ―Uniply‖ and

―Uniboard‖ in respect of their plywood products. Issue in this case was who was the prior

user. An important observation was made that some courts indicate even prior, small sales

of goods with the mark are sufficient to establish priority, the test being to determine

continuous prior user and the volume of sale or the degree of familiarity of the public with

the mark. Bona fide test of marketing, promotional gifts and experimental sales in small

volume may be sufficient to establish a continuous prior user of the mark but on some

other occasions the Court have classified small sale volume as so small and inconsequential

for priority purpose. The Supreme Court of India considered the issue inasmuch as the

arrear of the activity and the nature of goods dealt with or business carried on being

identical and the trade mark being of similar nature the only question that needs to be

decided is who is the prior user. In that case, the question to be decided the claim was that

one of the parties that the Respondent alone had been using the trade mark since 1993 and

the Appellant had entered into trade only from 1996. In this case, the Supreme Court of P a g e | 20

India considered the prior user issue in the context that there were couple of year's gap and

small's volume of sale of the goods.

A passing off action observed in Khoday Distilleries Ltd. Vs. Scotch Whisky Assn.

[(2008) 10 SCC 723] and may be brought by those who fulfil the following

requirements:

i) the claimant himself owns or has a sufficient proprietary interest in the requisite

goodwill, and

ii) the goodwill so owned must be the goodwill which is really likely to be damaged by

the alleged misrepresentations.

One argument raised by Ms. Shah, the Learned Counsel for the Defendant should

also be addressed. It is argued that disclaimer by the Plaintiff of the word ―Duro‖ dis-

entitled him to an order of injunction or any other restraining order. This issue was

considered by the Supreme Court of India in Registrar of Trade Marks vs. Ashok

Chandra Rakhit Ltd. (AIR 1955 SC 558). This case was decided in terms of trade

mark Act, 1940. It was observed by the three Judges' Bench of the Supreme Court of India:

―9. The last feature of the section is its proviso. That proviso preserves intact any

right which the proprietor may otherwise under any other law have in relation to

the mark or any part thereof. The disclaimer is only for the purposes of the Act. It

does not affect the rights of the proprietor except such as arise out of registration.

That is to say, the special advantages which the Act gives to the proprietor by

reason of the registration of his trade mark do not extend to the parts or matters

which he disclaims. In short, the disclaimed parts or matters are not within the

protection of the statute. That circumstance, however, does not mean that the

proprietor's rights, if any, with respect to those parts or matters would not be

protected otherwise than under the Act. If the proprietor has acquired any right by

long user of those parts or matters in connection with goods manufactured or sold P a g e | 21

by him or otherwise in relation to his trade, he may, on proof of the necessary

facts, prevent an infringement of his rights by a passing off action or a prosecution

under the Indian Penal Code. Disclaimer does not affect those rights in any way.‖

In Godfrey Phillips India Vs. Girnar Food & Beverages [(1998) 9 SCC 531], this

principle was reiterated.

It was argued on behalf of the Learned Counsel for the Defendant that the word

―DURO‖ is rather descriptive than distinctive, for which the Plaintiff is not entitled to be

protected by injunctive relief. This point of argument is noted above. In Godfrey

Phillips India Ltd. Vs. Girnar Food & Beverages (P) Ltd. [(2004) 5 SCC 257] this

point came up for consideration before the Supreme Court of India. It was observed by the

Supreme Court of India that a descriptive trade mark may be entitled to protection if it has

assumed a secondary meaning which identifies it with a particular product or as being from

a particular source. The issue came up for consideration in a subsequent case before the

Supreme Court of India in T.V. Venugopal Vs. Ushodaya Enterprises Ltd. & Anr.

[(2011) SCC 85]. The word ―Enadu‖ literally means ―today‖ or ―this day‖. The

Defendant's argument was that adjectives are generally descriptive words and nouns are

generic words. It was held by the Supreme Court of India in this case that the word

―Enadu‖ may be a descriptive word but had acquired a secondary meaning or subsidiary

meaning and is fully identified with the products and services provided by the Respondent

Company. In Neon Laboratories Ltd. Vs. Medical Technologies Ltd. & Ors.

[(2016) 2 SCC 672] the Supreme Court of India considered the ―first user‖ rule. This

case was decided in a somewhat different contest of medicinal preparations where

parameters are little different. Yet, the principle set out and discussed has relevance in the

present context. The Supreme Court of India considered and referred to N.R. Dongre Vs.

Whirlpool Corporation [(1996) 4 SCC 714] and Milment Oftho Industries Vs.

Allergan Inc. [(2004) 12 SCC 624]. In Whirlpool's case worldwide prior user was P a g e | 22

given preference may predominance over the registered trade mark in India of the

Defendant. In the Milment case the prior worldwide user had no registered trade mark in

India but the court granted injunctive relief on the basis of the ―first user‖ principle.

Coming to the case in hand, the Plaintiff has been using the trade mark ―DUROPLY‖

and others for several decades prior to use of the trademarks with ―DURO‖ prefix by the

Respondent. there is no traversing of this fact. Because of this long term business on pan-

India Level, the Petitioner has definitely acquired goodwill, reputation and familiarity in

plywood market. The Respondent, on the other hand, has been dealing with the same

business of the plywood bearing names with prefix ―DURO‖ without being so authorized by

its article of association. It is not very clear that the Defendant embarked on business of

plywood without being so authorized by the article of association. The Defendant started

business in the year 2009 as claimed. Even though the term ―DURO‖ is a general one,

because of long user of ―DURO‖ prefixed trade names or trademarks, a secondary meaning

is attributable to the same indicating the source of goods. Since the Plaintiff is a prior user

and started business several decades ago, he must enjoy the privilege of first user rule. At

this interlocutory stage of the suit, there should not be conclusive finding that the classical

trinity rule of passing off is applicable in this case. That is a matter to be decided on

evidence. Still, as stated above, long user must have created a goodwill and reputation of

the trade marks, owned by the Plaintiffs. There is every likelihood by common people to

associate and confuse the trade mark of the Respondent with that of the Petitioners. The

Respondent's use of ―DURO‖ prefix mark is deceptively similar prima facie which may

mislead people to believe that they belong to the house of ―DUROPLY‖. It is basically

riding over the goodwill and reputation of the Plaintiff because of such phonetic similarity

of goods belonging to same class used by the same group of customers. Prima facie, the

case reveals that the Defendants use of the trade mark is deceptively similar that of the P a g e | 23

Plaintiff and prima facie there is an attempt by the Defendant to ride over the goodwill,

build up by the Plaintiff over several decades.

Another limb of argument of Ms. Shah was that the right of the Petitioners to

injunctive relief has been lost on the basis of the principles of estoppel and acquiescence

because of their long hiatus to agitate any dispute or challenge the use of the trade mark by

the Respondent. This argument has its own shortcomings. It is settled principle of law of

torts that every breach of duty is a continuing action; every tortious act give rise to a fresh

cause of action. No prima facie case has been set up by the Respondent that the Petitioner

has acquiesced with or waived their rights against the Respondent. At this stage, there

cannot be any abrupt conclusion on this issue though the Respondent is at liberty to

adduce evidence to establish that point at trial.

Decisions of various High Courts, referred to and relied upon by Ms Shah, the

Learned Counsel for the Respondent, were decided on specific facts and circumstances and

of course subject to the principles laid down by the Supreme Court of India, as mentioned

above.

This is a case where application for injunction is taken up as interlocutory remedy.

Observations of the Supreme Court of India in Wander Ltd. v. Antox India (P) Ltd.,

[1990 Supp SCC 727] where grant of ad-interim order of injunction in trade mark

infringement came up for consideration. The following observations are relevant:

―9. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated P a g e | 24

―...is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the ‗balance of convenience' lies.‖

―The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.‖

The principal governing grant of injunction are well-settled and applicable here

also. The Petitioners are long user as well as first user of the trade mark; the Petitioners are

in use of the trade marks decades ago and use of the trade mark in question by the

Respondent is rather, recent, tentatively from the year 2006. The Respondent's Article of

Association is silent on plywood and related business venture of the Respondent. Although

the word ―DURO‖ is a general or descriptive word, long use of the word as prefix must have

attributed a secondary meaning. A likelihood of deception, misplaced trust as well as

confusion of the customers are strong. It is not very much important whether the

registration was in respect of device mark or word mark. The thing that matters in

consideration of passing off is misrepresentation as goods of one person as those of others.

Associating the goods of one person with those of others. It is a case which affects goodwill

and reputation. The customers may associate the product of the Respondent as that of the

Petitioner. Embarking on plywood business by the Respondent without being so

authorised by the Article of Association does not indicate any bona fide act. If allowed to P a g e | 25

continue, the Respondent may ride over the goodwill created by the Petitioner over decade

and exploit the same for benefit. Therefore, not status quo, but it is a fit case where an

appropriate restraining order should be passed. The above factual position warrants and

justifies a conclusion that the Petitioner is able to establish a prima facie case, showing the

scale of balance of conveniences and inconveniences as well as irreparable loss and injury

weigh in favour of the Petitioners.

In nutshell, for reasons aforesaid, the instant application is allowed.

The Respondent, it's men, servants and agents are hereby restrained from using the

mark ―DURO TOUCH‖ or ―DURO‖ or any other mark, identical or deceptively similar to

the Petitioners' registered trade mark ―DURO‖ in respect of ply boards and other items

mentioned in prayer ―A‖ and ―B‖ of the Petition, in any manner whatsoever, till further

order.

It is clarified that views expressed above are tentative and would not affect the merit

of the suit which would be decided on evidences adduced.

GA 1 of 2020 stands disposed of.

The suit may be placed before the Bench having determination of Intellectual

Property Division.

(SUGATO MAJUMDAR, J.)