Sony Kabushiki Kaisha v. M/S. Mahaluxmi Textile Mills;
2009 (41) PTC 184 (Cal) (FB)
The Plaintiff/Appellant, Sony Kabushiki Kaisha, was a Japanese Co. (also known as Sony Corporation) engaged in manufacturing and selling diverse range of electronic goods including video and audio equipment, televisions, etc. under the trademark ‘SONY’.
Defendant/Respondent (M/S. Mahaluxmi Textile Mills) was selling the products (hosiery goods, briefs and underwear) under the same trademark “SONY” without Plaintiff’s consent. As a result, Plaintiff filed a suit against the Defendant and also applied for an interim injunction. The application for interim injunction was rejected by the Trial Court. On appeal, the Division Bench referred the matter to a larger bench, as the Division Bench was unable to decide due to a judgment (Rustom Ali Molla & Ors. v. Bata Shoe Company Ltd.; AIR 1957 Cal 120) contrary to its views.
Whether the similarity of the goods of rival traders is an essential requisite for maintaining an action for passing off?
‘SONY’ is a world famous mark which has reached such a high level of distinctiveness that even if it is applied to briefs and underwear, the consumers are likely to believe that these products are sold by the Appellant.
Appellant mainly relied on the Supreme Court’s decision in the case of ‘Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.; 2002 (24) PTC 121 (SC)’
There can be monopoly in a trademark only in respect of goods on which the mark is used, and the rights cannot extend to the entire range of goods available in the market. It also questioned the applicability of ‘Mahendra & Mahendra Paper Mills Ltd. (supra)’ to the facts of the present case. It submitted that in this judgment, the issue was the misuse of corporate name, which is different from the application of a trademark on goods.
No, similarity of the goods of the rival traders is not an essential requisite for maintaining an action for passing off.
The meaning of ‘passing off’ was analysed and it was differentiated from ‘infringement’. The main ingredient of passing off is misrepresentation by a trader as regards the source of his goods, which is likely to deceive the consumers. Whereas, infringement is only concerned with the improper use of other’s trademark, irrespective of its ability to deceive the consumers.
The submission of the Respondent was rejected. The decision of the Supreme Court in the case of ‘Mahendra and Mahendra Paper Mills Ltd.’ is on the principle of passing off. A passing off action lies on the allegations of misuse of both corporate name and trademark.
All the authorities considered in the case of ‘Rustom Ali Molla’ proceeded on an underlying reasoning that if the goods of the rival traders were different, there would be no possibility of confusion in the mind of consumers as regards the source or origin of the goods. But from the days of “one company one product” in the nineteenth century, the commercial world has considerably changed. Today, the large corporations operate with multiple products across the globe, where a trademark is not restricted to only those goods in which its proprietor is directly engaged in.
Therefore, it was held that the decision in the case of ‘Rustom Ali Molla’ was no longer good law and the views expressed by the Division Bench were agreed with.
Author: Arunima Bishnoi, Delhi Law Faculty