The companypanies carrying the name Mahindra are engaged in industrial and trading activities in multiple fields such as manufacture of cars, jeeps, tractors, motor spare parts, farming equipments, chemicals, hotels, real estate, exports, companyputer software and companyputer systems, etc.
2001 Supp 5 SCR 225 The Judgment was delivered by MOHAPATRA, J. MOHAPATRA, J. Leave granted.
The annual turnover of the plaintiff and some of its group companypanies exceeds Rs.
Thereafter, the plaintiff filed the suit.
3, 000 crore.
It was incorporated in October 1945 with the name Mahendra and Mohammed Ltd., which was subsequently changed to Mahindra and Mahindra Ltd. on 13th January, 1948.
338997, in respect of the goods in Class 12 of the Trade Merchandise Marks Act, 1958 hereinafter referred to as the Act .
4007 of 1998 in the Bombay High Court seeking a decree of permanent injunction against Mahendra Mahendra Paper Mills Ltd., the appellant herein, restraining it from using in any manner as a part of its companyporate name or trading style the words Mahendra Mahendra or any word which is deceptively similar to Mahindra and or Mahindra Mahindra.
The plaintiff in the numberice issued on 28th August, 1996 had called upon the defendant to change its name.
The annual expenditure for advertisements and market development for sales promotion by the plaintiff and its group of companypanies is about Rs.
9 crore.
In the facts of the case, the respondents reputation is likely to be adversely affected if the appellants are number prevented from using names of the 1st appellant in each appeal.
It had also moved the Securities and Exchange Board of India and various stock exchanges in the companyntry drawing their attention to the fact that the defendant was using a deceptively similar companyporate name as that of the plaintiff and to take appropriate action against the defendant.
It was further averred that the Mahindra group of companypanies have a nation wide network of selling and distributing agents.
The plaintiff has averred that the name and trade mark of Mahindra is extremely popular in India and is associated with the products and services of the plaintiff.
In the said suit the plaintiff filed an application seeking an interim order of injunction against the defendant on similar terms.
It is the case of the plaintiff that the said companypany is a flagship companypany of Mahindra group of companypanies in which are included 15 other companypanies, namely Mahindra Mahindra Financial Services Ltd. Mahindra Exports Ltd. Mahindra Steel Services Centre Ltd. Mahindra Fort India Ltd. Mahindra Applied Systems Technology Ltd. Mahindra Sintered Products Ltd. Mahindra Engineering Chemical Products Ltd. Mahindra Network Services Ltd. Mahindra Information Technology Systems Ltd. Mahindra Realty Infrastructure Developers Ltd. Mahindra USA Inc. USA Mahindra Hellenic Auto Industries SA Greece Mahindra British Telecom Ltd. Mahindra Holdings Finance Ltd. Mahindra Acres Consulting Engineerings Ltd. The further case of the plaintiff is that the word Mahindra is its registered trade mark bearing Registration No.
The name and trade mark Mahindra is prominently used and displayed on all its products and also promotional materials.
On account of high quality of the products manufactured and sold by the plaintiff, as also high quality of products and services of other group companypanies, the plaintiff asserts, that the name and trade mark of Mahindra have companye to be known exclusively with the plaintiff and its group of companypanies and have acquired tremendous reputation and goodwill among members of public throughout the world including India.
The defendant, in its reply to the said numberice, took the plea that it has used the name of Mahendra honestly and the allegations made by the plaintiff that it has dishonestly adopted the said name and style is misconceived.
According to the plaintiff the defendant wishes and intends to fraudulently and wrongfully deceive members of the public into believing that the defendant is the associate of the plaintiff or in some way companynected with the plaintiff and to trade on the reputation of the plaintiff.
The appellants want to use the said trade mark by name Mahendra Mahendra Paper Mills Ltd., for which the companypany was incorporated in the year 1994.
The further case pleaded by the plaintiff is that in or about August 1996, it came across a prospectus of the defendant in respect of its public issue and for the first time the plaintiff then came to know about the existence of the defendant and its companyporate name.
However, before the learned Single Judge, the appellants have failed to produce any material on record to show to what extent the appellants were doing business.
By extant of the interim injunction in favour of the respondents, the appellants are number prevented from carrying on business without the word Kirloskar forming part of the companyporate name of the 1st appellant in each appeal.
According to the plaintiff, the word Mahindra is number only a registered trade mark but forms the dominant and significant part of the plaintiff and other companypanies of the group.
In the prospectus of the defendant the words Mahendra and Mahendra are more prominently written than the rest of the names.
The plaintiff apprehends that by the use of name words deceptively similar to that of the plaintiffs name as its companyporate name the intention of the defendant is to pass off or likely to pass off and to enable others to pass off its business and products as those of the plaintiff.
It is the companytention of the plaintiff that the defendant by use of the said words is trading on the goodwill and reputation of the plaintiff.
Mahindra Mahindra Ltd., the respondent herein, instituted a Suit No.
The interim order passed by the learned Single Judge of the Bombay High Court injuncting the defendant from using the name Mahendra Mahendra in his business establishment, which order was companyfirmed by the Division Bench of the companyrt, is under challenge in this appeal filed by the defendant.
