Introduction: The case of Metro Playing Card Co. vs Wazir Chand Kapoor, decided by the Delhi High Court on April 5, 1972, is a seminal decision in Indian trademark law, illustrating the principles governing interim injunctions in cases of trademark infringement and passing off. This dispute centered on the use of a tractor device and the word "tractor" as a registered trademark by the respondent, Wazir Chand Kapoor, for playing cards, which the appellant, Metro Playing Card Co., allegedly infringed by using a similar tractor device and the word "Ferguson" on its playing cards. The case highlights the judiciary’s approach to protecting registered trademarks, the significance of visual similarity in infringement claims, and the limitations of defenses based on pending trademark applications or concurrent use. The Delhi High Court’s affirmation of the interim injunction underscores the robust protection afforded to registered trademarks under the Trade and Merchandise Marks Act, 1958, and the importance of establishing a prima facie case in interlocutory proceedings.
Detailed Factual Background:The respondent, Wazir Chand Kapoor, was a manufacturer and seller of playing cards, operating under a registered trademark comprising the device of a tractor and the word "tractor." This trademark was registered on February 8, 1968, under No. 233581 in Class 16, which pertains to paper goods, including playing cards. The registration granted Kapoor exclusive rights to use the trademark in relation to his playing cards, which were packaged in cartons bearing the tractor device.
The appellant, Metro Playing Card Co., also engaged in the manufacture and sale of playing cards. In early 1971, Kapoor discovered that Metro was marketing playing cards under the trademark "Ferguson," with a tractor device printed on the back of the cards. While the cartons containing Metro’s playing cards bore only the word "Ferguson" and lacked the tractor device, the cards themselves prominently featured the tractor, which Kapoor alleged was deceptively similar to his registered trademark. Metro claimed to have used the "Ferguson" mark since February 1966 and had applied for its registration in Class 16 at the Trade Mark Registry in Bombay. The application was accepted and advertised in the Trade Mark Journal No. 531 on July 16, 1971, to which Kapoor filed an opposition on September 11, 1971.
Kapoor contended that Metro’s use of the tractor device and the word "Ferguson" infringed his registered trademark and constituted passing off, as it could mislead consumers into believing Metro’s cards were his. He argued that "Ferguson," a well-known tractor brand, was synonymous with "tractor" in common parlance, exacerbating the likelihood of confusion. Metro countered that its use of the tractor was merely ornamental, not a trademark, and that the distinct packaging (cartons without the tractor device) eliminated any risk of confusion. Metro also asserted its prior use of "Ferguson" and the pending registration as defenses against the infringement claim.
Detailed Procedural Background:The dispute arose when Kapoor filed a suit in the Delhi High Court, seeking a permanent injunction to restrain Metro from infringing his registered trademark and passing off its playing cards as his, along with claims for damages and rendition of accounts. Concurrently, Kapoor moved an application under Order 39, Rules 1 and 2, read with Section 151 of the Code of Civil Procedure (CPC), requesting an interim injunction to prevent Metro from manufacturing, selling, or dealing in playing cards bearing the "Ferguson" mark and the tractor device during the pendency of the suit.
Metro opposed both the suit and the interlocutory application, arguing that its trademark application for "Ferguson" had been accepted, its use predated Kapoor’s registration, and the differences in packaging negated any infringement or passing off. The matter was heard by a learned Single Judge, P.N. Khanna, J., on the original side of the Delhi High Court. On November 29, 1971, the Single Judge granted an interim injunction, restraining Metro, its agents, and representatives from manufacturing, selling, or dealing in playing cards printed with the tractor device or any mark resembling Kapoor’s registered trademark. The injunction was limited to the tractor device on the cards, as the court found no infringement in the use of "Ferguson" on the cartons.Aggrieved by this order, Metro filed a First Appeal from Order (F.A.O. (OS) No. 1 of 1972) before a Division Bench of the Delhi High Court.
The court addressed the following key issues in adjudicating the appeal: Whether Kapoor established a prima facie case of trademark infringement to justify the interim injunction against Metro’s use of the tractor device on its playing cards. Whether Metro’s use of the tractor device was likely to cause confusion or deceive consumers, infringing Kapoor’s registered trademark rights under the Trade and Merchandise Marks Act, 1958. Whether Metro’s pending trademark application for "Ferguson" and its claim of prior use constituted a valid defense against the interim injunction. Whether the suit should have been stayed pending the outcome of Metro’s trademark registration application, or whether Kapoor should have been subjected to terms in case the suit was dismissed. Whether the scope of Kapoor’s registered trademark extended to the tractor device on the playing cards themselves, or was limited to the carton packaging.
Respondent’s (Kapoor’s) Submissions: Kapoor argued that his registered trademark, comprising the tractor device and the word "tractor," was infringed by Metro’s use of a similar tractor device on its playing cards. He contended that the visual similarity between the two tractor devices was patent, likely to confuse consumers purchasing playing cards. Kapoor emphasized that playing cards are often inspected before purchase, and the presence of the tractor device on Metro’s cards could lead unwary buyers to mistake them for his products. He further argued that "Ferguson," being a well-known tractor brand, was synonymous with "tractor" in common parlance, reinforcing the likelihood of confusion and supporting his passing off claim.
Kapoor relied on Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958, asserting that his registration conferred exclusive rights to use the trademark in relation to playing cards, including both the cards and their packaging. He maintained that Metro’s unregistered use of the tractor device violated his statutory rights, as Metro had not challenged the validity of his registration. Kapoor also argued that Metro’s pending application for "Ferguson" did not confer any rights until granted, and its advertisement in the Trade Mark Journal was irrelevant to the infringement claim. He urged the court to uphold the interim injunction to protect his trademark during the suit’s pendency.
Appellant’s (Metro’s) Submissions
Metro contested the interim injunction on several grounds. First, Metro argued that Kapoor failed to establish a prima facie case, as the tractor device on its cards was merely ornamental, not a trademark, and the cartons bore only the word "Ferguson," distinguishing them from Kapoor’s packaging. Metro asserted that playing cards are sold in sealed cartons, and consumers rely on the carton’s labeling, reducing the risk of confusion.
Second, Metro invoked Section 12(3) of the Trade and Merchandise Marks Act, 1958, which allows concurrent registration for honest use or special circumstances. Metro claimed that its application for "Ferguson" had been accepted and advertised, and Kapoor’s opposition was pending. It argued that the suit should be stayed until the Registrar decided on its application, citing Edwards v. Elkan (1888) 5 R.P.C. 70, where an interim injunction was deferred pending a defendant’s registration application due to prior use.
Third, Metro claimed prior use of "Ferguson" since February 1966, predating Kapoor’s 1968 registration, and argued that this entitled it to continue using the mark. Metro also contended that the injunction was overly broad, as Kapoor’s registration covered the tractor device on cartons, not the cards themselves, citing the statutory definitions in Section 2(2) of the Act.
Metro cited several precedents to support its case. In Mitchell v. Henry (1880) 15 Ch D 181, an injunction was refused due to dissimilar goods, which Metro analogized to the distinct packaging of its cards. Bravingtons Ltd. v. Barrington Tennant (1957 RPC 183) and Tavener Rutledge Ltd. v. Specters Ltd. (1957 RPC 498) were cited to argue that injunctions should be denied where similarity is doubtful or there is delay, though Metro did not allege delay by Kapoor. Metro also relied on D. Adinarayana Setty v. Brooke Bond Tea of India Ltd. (AIR 1960 Mys 142) and an English case (1932 RPC 597) to urge that the suit be stayed or terms imposed on Kapoor, such as security for potential dismissal of the suit.Finally, Metro argued that its pending application, advertised in July 1971, warranted a stay or conditional relief, as concurrent use could be recognized if its registration was granted.
The parties cited several precedents, primarily by Metro, to support their respective positions on trademark infringement, interim relief, and concurrent use:
Edwards v. Elkan, (1888) 5 R.P.C. 70 (Chancery Division, England): Cited by Metro to argue that the suit should be stayed pending its trademark application. In this case, the defendant used the mark "Our Boys" for watches before the plaintiff’s registration, and the court deferred the interim injunction until the defendant’s registration application was decided, as prior use was unchallenged. The Delhi High Court distinguished this case, noting that Metro provided no evidence of prior use of the tractor device, and its application was for "Ferguson," not the tractor, which was the subject of the injunction.
Mitchell v. Henry, (1880) 15 Ch D 181 (Chancery Division, England): Cited by Metro to argue that dissimilar goods negate infringement. The plaintiff’s registered trademark for worsted goods with a specific selvage was not infringed by the defendant’s differently colored goods, despite a similar thread. The court refused an injunction due to lack of similarity. The Delhi High Court rejected this analogy, finding that the tractor devices on both parties’ playing cards were patently similar, unlike the distinct goods in Mitchell.
Bravingtons Ltd. v. Barrington Tennant, (1957 RPC 183) (Chancery Division, England): Cited by Metro to argue that doubtful similarity or delay precludes interim relief. The court refused an injunction where the defendant’s use of “Barrington” was unlikely to deceive customers compared to “Bravington,” and the plaintiff delayed action. The Delhi High Court found this inapplicable, as there was no delay by Kapoor, and the tractor devices’ similarity was clear, unlike the trade names in Bravingtons.
Tavener Rutledge Ltd. v. Specters Ltd., (1957 RPC 498) (Chancery Division, England): Cited by Metro to support its claim that delay and lack of similarity justify refusing an injunction. The plaintiff alleged that the defendant’s sweet canisters infringed its trademark and copyright, but the court denied relief due to delay and dissimilar labels. The Delhi High Court dismissed this precedent, noting no delay by Kapoor and the evident similarity of the tractor devices, unlike the distinct canisters in Tavener.
D. Adinarayana Setty v. Brooke Bond Tea of India Ltd., AIR 1960 Mys 142 (Mysore High Court): Cited by Metro to argue for a stay or imposition of terms on Kapoor. The Mysore High Court’s decision involved trademark disputes, but specific details were not elaborated in the Delhi High Court’s judgment. The court rejected this precedent, finding no basis to stay the suit or impose terms, as Metro’s appeal and original reply lacked such a prayer.
English Case, (1932 RPC 597): Cited by Metro without specific details, likely to support its stay argument. The Delhi High Court dismissed its relevance, stating that it was not attracted to the present case’s facts, without further elaboration due to Metro’s failure to demonstrate prior use or applicability.
Detailed Reasoning and Analysis of Judge: The Division Bench, upheld the Single Judge’s interim injunction, providing a clear and reasoned analysis rooted in trademark law principles. The court’s reasoning addressed Metro’s contentions systematically:
On the prima facie case, the court found that Kapoor established a strong case for infringement. The tractor device on Metro’s playing cards was “patently similar” to Kapoor’s registered trademark, satisfying the visual similarity test for infringement under Section 29 of the Trade and Merchandise Marks Act, 1958. The court rejected Metro’s argument that consumers rely solely on carton packaging, noting that it is “common knowledge” that playing cards are inspected before purchase, making the tractor device on the cards a critical factor in consumer perception. The court declined to opine on whether “Ferguson” itself infringed, as the injunction was limited to the tractor device, but acknowledged Kapoor’s argument that “Ferguson” is synonymous with “tractor,” suggesting potential for further scrutiny in the main suit.
Regarding Metro’s pending trademark application, the court held that mere acceptance or advertisement of an application confers no rights, as per Section 28, which grants exclusive rights only upon registration. Metro’s application for “Ferguson” was irrelevant to the injunction, which targeted the tractor device, not the word. The court dismissed Metro’s reliance on Section 12(3) for concurrent use, noting that until registration is granted, Kapoor’s registered trademark prevails, and Metro had not challenged the registration’s validity. The court distinguished Edwards v. Elkan, as Metro provided no evidence of prior use of the tractor device, unlike the defendant’s established use in Edwards.
On Metro’s claim that the tractor device was ornamental, not a trademark, the court found this unpersuasive, as the device’s placement on the cards mirrored Kapoor’s registered use, likely to influence consumer perception. The court also rejected Metro’s argument that Kapoor’s registration was limited to cartons. Citing Sections 2(2), 28, and 29, the court clarified that a registered trademark applies to the goods (playing cards) and their packaging, encompassing the tractor device on the cards themselves.
The court addressed Metro’s request for a stay or terms, finding no basis for either. Metro’s appeal and original reply lacked a prayer for terms, and the precedents cited (e.g., D. Adinarayana Setty) were inapplicable, as they did not align with the case’s facts. The court emphasized that Kapoor’s statutory rights under a valid registration took precedence, and Metro’s claim of concurrent use lacked prima facie evidence.
The court concluded that the balance of convenience favored Kapoor, as the interim injunction protected his registered trademark without unduly harming Metro, pending the suit’s resolution. The injunction’s scope, limited to the tractor device, was proportionate, leaving Metro free to use “Ferguson” on cartons, subject to the main suit’s outcome.
Final Decision: The Delhi High Court dismissed Metro Playing Card Co.’s appeal (F.A.O. (OS) No. 1 of 1972) with costs, affirming the Single Judge’s interim injunction of November 29, 1971. The injunction restrained Metro, its agents, and representatives from manufacturing, selling, offering for sale, or dealing in playing cards printed with the device of a tractor or any mark resembling Kapoor’s registered trademark, pending the disposal of the suit.
Law Settled in This Case: This case clarified several principles in Indian trademark law, particularly for interim injunctions in infringement disputes:
Protection of Registered Trademarks: A registered trademark under Section 28 of the Trade and Merchandise Marks Act, 1958, confers exclusive rights, and unregistered use of a similar mark constitutes infringement unless the registration’s validity is challenged.
Visual Similarity in Infringement: Patent similarity between marks, especially on goods inspected by consumers (e.g., playing cards), establishes a prima facie case of infringement, regardless of differences in packaging.
Pending Trademark Applications Confer No Rights: Acceptance or advertisement of a trademark application does not grant rights or justify staying a suit, as only registered marks enjoy statutory protection.
Concurrent Use Defense: Claims of concurrent use under Section 12(3) require evidence of honest use or special circumstances, which must be substantiated at the interim stage to counter a registered trademark’s rights.
Scope of Trademark Registration: A registered trademark applies to the goods and their packaging, encompassing marks on the goods themselves (e.g., playing cards), not just their containers.
Case Title: Metro Playing Card Co. Vs Wazir Chand Kapoor
Date of Order: April 5, 1972
Case No.: F.A.O. (OS) No. 1 of 1972
Neutral Citation: AIR 1972 Del 248
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Hon’ble Chief Justice Hardayal Hardy and Hon’ble Mr. Justice Prakash Narain
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
