In Ahmed Oomerbhoy & Anr v Gautam Tank & Ors 2008 (36) PTC 193 (Del) an order was filed against plaintiff no 1, a partnership firm, who had taken over the possession of the partnership business assets of a company which was trading as M/s Ahmed Mills; stipulating that they safeguard all trade marks and take action against any unauthorized usage. The first plaintiff had been carrying on the business of manufacture, distribution, sale and dealing in edible oils for more than 50 years under its various trade marks including Postman, registered under the Trade and Merchandise Act, 1958. The firm also has a copyright for the artistic labels under the Copyright Act, 1957. The trade mark registrations are still valid while the design registered with effect from March 29 1989 expired in 2004. Also, the mark and device of Postman have acquired substantial reputation and goodwill in the market on account of use of its mark continuously and extensively up to 2000.
In December 2004, the plaintiff realized that the second defendant , Jagdamba Vegetable Products Private Limited, had commenced manufacture, distribution, sale and marketing of refined groundnut oil under the name and design of Super Postman. The Delhi High Court on May 30 2005 granted an interim injunction favouring the plaintiffs and restraining the defendants from using the mark Super Postman. The defendants objected, contending that the trade mark Postman had ceased to exist as it has not been used for a period of five years and three months and that they had already filed petitions for cancellation/rectification of said registrations which were pending. Moreover the defendants' stated that their sales, from inception in 2004, were more than Re2 million ($473,000) thus proving establishment of their own goodwill and reputation.
The court considered the principle of balance of inconvenience – who will suffer more inconvenience if the decision prayed for is granted (keeping in mind the goods were of a perishable nature) – on the lines of the apex court's decision in Wander Ltd and an v Antox india (P) Ltd. The defendants, while applying for their registration, had given an undertaking that should the plaintiffs raise any objection, they would withdraw the application at once. This, the court held, suggested that the defendants cannot claim any rights, prima facie, on the basis of registration of their trade mark. Also, it was concluded that the mark used by the defendants is similar, the goods are the same and the area of trade is also common. If these three factors are the same or quite similar, then the second manufacturer should not be allowed to sell its product under the same name. This triple identity principle has been invoked in a number of cases like Lal Sons Machines v Sachar E & M Stores, 1986(6) PTC 41 (Del); M/s AV International Ltd v AV Footwear Industries, AIR 1991 Del 22. The defendants' contention that the trade mark of the plaintiffs has not been used since 2000 was also found to be false as the plaintiffs' products, despite disputes in partnership since 2000, continued to be sold in the market till late 2001.
On the above grounds, the Court, on December 20 2007 confirmed the injunction order and decreed against defendants one and two, restraining them from selling or offering for sale edible oils under the mark of Super Postman and also from violating the copyright of the first plaintiff in the packaging, label, colour and scheme of the Postman product during the pendency of the suit. No costs were awarded to either party.
The decision, though not the final adjudication in the matter, is still quite ground-breaking in the respect that despite the plaintiff's product not being in the market for a number of years and the defendants product, having been passed off in the said period, turning out to be extremely successful, the learned Judge still considered that the interests of the plaintiffs in the matter should be protected. This is of utmost importance as partnership disputes leading to successful companies getting involved in unprecedented legal entanglement, which adversely affects their products, are a frequent occurrence in today's business community. It is the duty of the judiciary to prevent any unscrupulous elements from exploiting such a situation to their own unfair advantage through unauthorized use of the very same or similar trade marks, even if their activities have gone unchecked for a considerable period of time. The consideration as to degree of success of their products in the said period or the principle of balance of inconvenience in the case of any dispute is immaterial because the act of the defendant in such a case is primarily one of theft of intellectual property or piracy.
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