Kamal Trading Co. and Ors. v. Gillette U.K. Ltd.
1988 (8) PTC 1 (BOM)
Respondent was a subsidiary of an American company, Gillette Company, in U.K. The Gillette Company and its subsidiaries had been carrying on worldwide business of manufacture and sale of safety razor blades, safety razors, shaving cream, shaving brushes, etc. since several years. Respondent had been using the registered trade mark ‘7 O’CLOCK’ in connection with its goods since 1913.
Respondent entered into an agreement with Indian Shaving Products Limited, an Indian Company, for manufacture and sale of safety razor blades in India. The agreement of collaboration was entered into because the goods manufactured by the Respondent were not imported in India after the year 1958 because of the import restrictions. Under the collaboration agreement, the Indian company was entitled to use the trade mark ‘7 O’ CLOCK’ but with the addition of the word ‘EJTEK’.
In 1985, Respondent became aware that the Appellants were selling tooth brushes under the trade mark ‘7 O’ CLOCK’. Respondent instituted an action before the District Court for injunction to restrain the Appellants from manufacturing, selling or offering for sale the tooth brush and similar goods bearing the trademark ‘7 O’CLOCK’. Learned District Court Judge granted an interim injunction in favour of the Respondent and restrained the Appellants from using the mark ‘7 O’CLOCK’. The Appellants filed an appeal before the Hon’ble High Court of Bombay.
Arguments on behalf of the Appellants:
The mark ‘7 O’CLOCK’ is not an invented mark.
Respondent is not entitled to relief as the Respondent has approached the Court after a considerable delay from the date of the knowledge of the user of the mark by the Appellants.
The mark is used in respect of tooth brushes (Class 21), whereas the Respondent does not deal in tooth brushes, and his products lie in Class 8. Moreover, the goods manufactured by the Respondent are not sold in India since 1958 and, therefore, the goodwill or reputation which the Respondent may have acquired stands extinguished.
Reliance was placed upon the decision in the case of Erven Warnink B.V. & Anr. vs. J. Townend & Sons (Rull) Ltd. & Anr.  R.P.C. 31, where it was observed that it is essential for the Respondent in a passing off action to show at least the following facts:
a. That his business consists of, or includes, selling in England, a class of goods to which the particular trade name applies;
b. 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;
c. That because of the reputation of the goods, there is goodwill attached to the name;
d. 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;
e. 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.
As the Respondent has not established any of the conditions required, relief should not be granted.
In pursuance of the ad-interim order, the Appellants has altered the mark used in respect of their products and, therefore, it is now not necessary to grant injunction claimed by the Respondent.
Arguments on behalf of the Respondent:
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 Gillette which are the registered owners of the mark ‘7 O’CLOCK’.
Respondent became aware of the user of the mark in November 1985, but the Respondent did not know who were using that mark and that fact has become known only when the goods manufactured by the Appellants were seized. Respondent thereupon, immediately, served notice upon the Appellants advising to cease the user of the offending mark, but the Appellants declined to take any corrective measure, with the result that the suit was required to be instituted by the Respondent in August, 1986.
The user of the mark ‘7 O’CLOCK’ by the Appellants would clearly result in deceiving the customer with the impression that the toothbrushes come from the house of Gillette. 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 medias. 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. There exists a likelihood of deception.
The Court also observed that the conduct on the part of the Appellants indicate that the anxiety was to trade upon the reputation of the mark ‘7 O’CLOCK’ and therefore, when the Appellants are guilty of total dishonesty, it is futile to claim that when the aggrieved party goes to the Court, the Appellants should be permitted to use the mark by making some alteration. Accordingly, the appeal was dismissed.
Author: Aadhya, National Law University, Odisha