S.A. Kader, J.


1. C.S. No. 333 of 1986 has been filed by the plaintiff therein under Section 120 of the Trade and Merchandise Marks Act, hereinafter referred to as the Act, for a declaration that the threat by the defendant against the plaintiff using the trade mark 'COSTAL' in connection with its hosiery goods including banians is unjustified and for a permanent injunction restraining the defendant from continuing the said threat. Application No. 2666 of 1986 has been filed by the plaintiff for an order of interim injunction. An ad interim injunction has been granted, to vacate, which the defendant therein has filed Application No. 3499 of 1986.


2. C.S. No. 479 of 1986 has been filed by the defendant in C.S. No. 333 of 1986 against the plaintiff in C S. No. 333 of 1986 under Section 28 of the Act for infringement of the plaintiffs registered Trade mark 'CRYSTAL' seeking an injunction restraining the defendant therein from manufacturing and marketing hosiery goods including banians and other garments under the offending trade mark 'Costal' or any other mark, which is identical with or deceptively similar to the plaintiff's registered trade mark 'CRYSTAL'. Application No. 3501 of 1986 is by the plaintiff therein for an order of interim injunction pending disposal of suit.


3. The facts of the case, which I shall discuss with reference to C.S. No. 479 of 1986, which is the more substantial, though subsequently filed suit are as follows: M/s Crystal Knitters, the plaintiff herein is a registered firm of partnership carrying on business in the manufacture and marketing of hosiery goods including banians at Tiruppur in Coimbatore District. The defendant M/s Bombay Vesters is also a firm (Plaintiff in C.S. No. 333 of 1986) carrying on business in hosiery goods at Tiruppur. The plaintiff started the manufacture of hosiery goods in 1971 and its turnover in 1986 comes to Rs. 4, 26, 60, 111.24. It has been trading its goods under the trade mark 'CRYSTAL' from the inception. On 27-1-1974 the plaintiff applied for registration of his mark under the Act and registration has been granted on 15-4-1982 with effect from the date of application viz., 27-1-1974. The plaintiff is one of the leading manufacturers of hosiery goods in India. Their entire sale of hosiery goods is under the one and only trade mark 'CRYSTAL'. The plaintiff chose the word 'CRYSTAL' sixteen years ago and by continuous and substantial user, the word 'CRYSTAL' has acquired distinctiveness with respect to the hosiery goods of the plaintiff. The advertisement expenses of the plaintiff also come to Rs. 8, 02, 950.20 for 1986. The defendant started its business only in 1981 and its sales turnover does not exceed 2% or 3% of the plaintiff's turnover as seen from the figures given by the defendant in its plaint in C.S. No. 333 of 1986. Some time in April 1986 the plaintiff's attention was invited to the advertisement in the Trade Marks Journal of the defendant's application for registration of the trade marks 'COSTAL' and 'GOLDRAY' in respect of hosiery goods including banians and other undergarments. Immediately the plaintiff caused its trade nark Attorney M/s DePenning & DePenning to issue a "cease and desist" notice to the defendant on 23-4-1986 stating that the use of the word 'Costal' amounted to infringement of the plaintiff's registered trade mark 'CRYSTAL'. The defendant through its counsel replied on 10-6-1986 denying plaintiff's claim. Thereafter, the defendant filed on 16-6-1986 suit in C.S. No. 333 of 1986 claiming declaration that the threat by the plaintiff against the defendant using the trade mark 'Costal' for its hosiery goods in unjustified and for an injunction restraining the plaintiff herein from continuing the threat. The defendant also filed Application No. 2666 of 1986. The plaintiff has moved the court for vacating the injunction in application No. 3499 of 1986. As the suit in C.S. No. 333 of 1986 and the ad interim ex parte injunction granted in favour of the defendant do not preclude the plaintiff from moving, this court for defending its registered trade mark, this suit is instituted. It is the case of the plaintiff that the defendant's trade mark 'COSTAL' is identical with or deceptively similar to the plaintiff's registered trade mark 'CRYSTAL' and is calculated to cause confusion not only with respect to the trade mark but with respect to the name of the plaintiff as well. The more significant part of the word "CRYSTAL" is the last syllable 'Stal'. This creates a stronger impression on the ear. The word Costal with similar phonetic emphasis 'STAL' is bound to cause confusion in the minds of dealers, consumers and public. It is likely to create an impression that the goods marked 'COSTAL' have a common origin with the goods sold under the trade mark 'CRYSTAL'. Hence the suit and the application for interim injunction.


4. The relevant contentions of the defendant are these. It is denied that the word 'CRYSTAL' has been identified with the goods of the plaintiff. It is not true that the plaintiff's trade mark has acquired considerable distinctiveness over a period of fifteen years continuously. It can never acquire distinctiveness as it is a common dictionary word 'incapable of registration'. The averment that the defendant's turnover is less than 3% of the plaintiff's turnover is meaningless and is wholly out of context. The defendant has been using this trade mark from 1981 and the plaintiff is aware of such user as the goods emanate from the same place. The various invoices, vouchers, bill books and orders placed by the customers, day books and other documents prove the plaintiff's user from 15-8-1981. It is not true that the plaintiff came to know of this defendant's trade mark 'COSTAL' only from the Trade Mark Journal. Admittedly the plaintiff's business place is very close to that of the defendant. The businessmen in a particular trade come to have considerable information about one another. It is therefore preposterous to state that till the plaintiff saw the advertisement in the Trade Marks Journal dt. 1-4-1986 it had not noticed the defendant's user of the word 'COSTAL' in connection with its goods. The plaintiff is therefore, guilty of inordinate delay and laches as it has allowed the defendant to grow all these years during which period the defendant has built up huge business under this trade mark 'COSTAL'. The plaintiff is, therefore, disentitled to the injunction. It is denied that the words 'COSTAL' and CRYSTAL are phonetically similar. The banian boxes and banian neck labels are totally different. The trade Mark Registry has accepted the defendant's trade mark 'COSTAL' for registration in part B of the register since the words COSTAL and CRYSTAL are ordinarily incapable of becoming distinctive. The very fact that the Trade Marks Registry has not even cited the plaintiff's Trade Mark 'CRYSTAL' as conflicting with the defendant's proves that the Registry has not considered the Plaintiff's trade mark as conflicting with the defendant's. Nobody will mistake the word COSTAL for 'CRYSTAL' either visually or phonetically. Nor one would think 'COSTAL' originates from the proprietors of 'CRYSTAL'. Such a thing has never happened all these years. No case has been made out by the plaintiff for grant of injunction. The application, has, therefore, to fail.


5. As already stated, the defendant has filed C.S. No. 333 of 1986 under Section 120 of the Act for declaring that the threat of the plaintiff is unjustified and for injunction for continuing the threat. The ad interim injunction granted in Application No. 2666 of 1986 is sought to be vacated by the plaintiff in Application No. 3499 of 1986.


6. The plaintiff M/s Crystal Knitters is the Registered proprietor of the trade mark 'CRYSTAL' in running hand. This is a firm manufacturing and marketing hosiery goods including banians since 1972 under its only trade mark 'CRYSTAL'. It claims its turnover for 1986 at Rs. 4, 26, 60, 111-42. According to the plaintiff, its advertisement charge for 1986 runs to Rs. 8, 02, 950-20. The defendant is a firm manufacturing hosiery goods and has entered into this field in 1981. It claims to be marketing its goods under the trade mark 'COSTAL' from 1981 itself. But, admittedly it has other trade marks such as Goldray, Bombay vest, Goldmine, Yesco, Doriya, Get-up jetty and Brief. The defendant has applied for registration of its trade mark 'COSTAL' in running hand and 'Goldray' and publication of the same has been made in the Trade Mark Journal dt. 1.4.1986. The fact, that the trademark 'COSTAL' has been published in the Trade Marks Journal or accepted for registration under the Act is no defence for an action for infringement of a registered trade mark as vaguely suggested by the learned counsel for the defendant. It is ultimately for the court to decide whether there is infringement. The only question which, therefore, arises for consideration is, whether the defendant's trade mark 'COSTAL' is an infringement of the plaintiff's registered trade mark 'CRYSTAL'.


7. The word 'CRYSTAL' and the word 'COSTAL', when pronounced, sound similar. There is thus phonetic similarity between the two. Both the words have two syllables, the word 'CRYSTAL' has the two syllables 'CRY' and 'STAL' and the word 'COSTAL' has the two syllables 'CO' and 'STAL'. The last syllable is identical in both. In the pronouncement of there two words the emphasis is on the second syllable 'STAL' and a man of average intelligence and imperfect recollection is apt to ignore the negligible dissimilarity in the first syllable and consider both the goods to be the same. The mark 'COSTAL' therefore, amounts to an infringement of the mark 'CRYSTAL'. I shall now refer to decided illustrations on this aspect. In Colgate Palmolive Limited v. Pattron, 1978 RPC 635 (PC) 635, the word 'TRINGATE' was held similar to Colgate. Similarly VIMCO was held similar to 'SIMCO' (1977 IPLR 191) 'FORMIS' was held similar to 'CHARMIS' (1976 IPLR 40) 'UCOLITE' was held similar to 'COALITE' (1931) 48 RPC 477 Prima facie, therefore, the defendant's trade mark 'COSTAL' is deceptively similar to the plaintiff's registered trade mark 'CRYSTAL' and is an infringement of the same.


8. It is strenuously contended by the learned counsel for the defendant that the defendant has been using this trade mark since 1981, that the plaintiff's factory is very near the defendants in the same town of Tiruppur, that the plaintiff has kept silent all these years allowing the defendant to grow its business under this trade mark and it is only in 1986 after the publication of the trade mark in the Trade Marks Journal the plaintiff has come forward with this suit and it is there 1996 PTC (16) 311 (DB)(Mad)


HIGH COURT OF MADRAS


O.S.A. Nos. 55, 56 59 and 60 of 1995 and O.A. Nos. 179 and 180 of 199 efore disentitled to the discretionary relief of interim injunction. As pointed out by the learned counsel for the plaintiff there are hundreds of hosiery factories in Tiruppur which is a place of All India firms for manufacture of hosiery goods and it is also an admitted fact that the defendant is using not only this trade mark 'COSTAL' but several others as already pointed out, and in the circumstances, it is quite possible that the plaintiff did not come to know of the use of this trade mark by the defendant for its goods. The alacrity with which the plaintiff has issued the notice as soon as the publication appeared in the Trad

e Marks Journal clearly shows that the plaintiff would not have kept quiet had it come to know of the use by the defendant of this mark earlier. There is, therefore, no ground to deny the plaintiff the relief of interim injunction on account of the delay. 9. The plaintiff's only trade mark is 'CRYSTAL' and under this trade mark, his turnover runs to over Rs. 4, 00, 00, 000/-. If the defendant is allowed to use the infringing trade mark, it will certainly hit the plaintiff's trade and put it to irreparable loss and hardship. On the otherhand, the defendant has a number of trade marks and an injunction restraining the defendant from using this particular trade marks 'COSTAL', will not, in any way, hamper the volume of its trade. The balance of convenience is, therefore, unmistakably in favour of the plaintiff. 10. In the result, application No. 3501 of 86 in C.S. No. 479 of 1986 is allowed and there will be an interim injunction till disposal of the suit as prayed for. 11. Application No. 2666 of 1986 in C.S. No. 333 of 1986 is dismissed and Application No. 3499 of 1986 in C.S. No. 333 of 1986 is allowed and the ad interim injunction granted in A No. 2666 of 1986 is vacated. The parties are directed to bear their respective costs.