Y.K. Sabharwal JUDGMENT
Y.K. Sabharwal, J.
1. The appellants are plaintiff's in the original suit (hereinafter referred to as 'Plaintiffs'). Plaintiff No. 1 is a Corporation organised under the laws of New Jersey, U.S.A. Plaintiff No. 2 is a Company incorporated under the Companies Act, 1956. Plaintiffs' trade mark is STAYFREE'. The plaintiff's have brought a passing off action. According to the plaint, since June 1978 plaintiff No. 1 has permitted plaintiff No. 2 to use the said trade mark 'STAYFREE' in respect of sanitary napkins manufactured by them and since then they have used the said mark in respect of sanitary napkins manufactured and marketed by them in India under a licence granted by plaintiff No. 1. The plaintiff's claim that the mark 'STAYFREE' has acquired a wide reputation and goodwill in India and has come to be associated by the traders and members of public in India exclusively with the plaintiff's. Along with the plaint a statement showing sales figures of the goods sold under the mark 'STAYFREE' in India from 1978 till Dec. 1985 has been filed. Another statement showing amounts spent on advertisements and publicity has also been filed. They claim that the mark 'STAYFREE' has acquired a vast and enviable reputation and goodwill and has become distinctive of their goods.
2. Plaintiff No. 1 applied for registration of the trade mark 'STAYFREE' under application No. 369841 dt. 18th Dec, 1980 in respect of sanitary napkins and personal hygiene products used in menstruation claiming user since 1978. The application was advertised in the Trade Marks Journal on 16th Aug. 1984. On 26th Nov., 1984 defendant No. 1 filed a notice of opposition to the said application. The said proceedings are pending. It has been further averred in the plaint that since June, 1978 the plaintiff's have adopted polythene packs having distinctive colour scheme of blue, pink and white getup which is easily recognisable by the customers. On the packing, the mark 'STAYFREE' has been prominently displayed and the catchy legend 'NO BELTS; NO PINS; NO STRINGS' is printed. It is claimed that in or about Feb., 1986 the plaintiff learnt that the defendants have also used the marks 'STAYFREE' in respect of sanitary napkins and have substantially copied the plaintiff's' pack and the mark 'STAYFREE'. According to the plaintiff's, the defendant No. 1 also adopted their packing which has a deceptively similar getup and colour scheme as that of the packing of the plaintiff's viz. blue, yellow and white combination. They further claimed that the defendants have fraudulently and blatantly adopted the same wordings viz. 'No Belts, No Pins, No Strings' with the whole aim and intention to trade upon the enviable reputation and goodwill acquired by plaintiff No. 2 in respect of their goods and to make dishonest and illegal gains. The suit is pending.
3. Pending the disposal of the suit the plaintiff's by an application under O. 39, Rr. 1 and 2 read with S. 151, C.P.C. sought temporary injunction restraining the defendants, their servants and agents from in any manner using the mark 'STAYFREE' or the impugned legend 'No Pins, No Belts, No Strings' on any packing for sale of sanitary napkins. The respondents are defendants in the original suit (hereinafter referred to as 'the defendant'). In opposition to the claim made by the plaintiff's various preliminary objections have been raised by the defendants in their reply. The defendants opposed the application for grant of temporary injunction primarily on four points. Firstly, that their trade mark is 'Comfit Always' and not 'Stayfree'. Secondly, that the word 'STAYFREE' is a common descriptive word for the product and is incapable of distinguishing the goods; thirdly that the words 'STAYFREE' is a common dictionary word and was in existence much before either of the plaintiff's came into existence and lastly that there is no likelihood of any confusion or deception.
4. The learned single Judge has dismissed the application of the plaintiff's for grant of temporary injunction. The learned single Judge has come to the conclusion that there is no likelihood o........