S.N Variava, J. (Oral):— This Notice of Motion for injunction is filed by Plaintiffs to restrain Defendants inter alia from (a) infringing Plaintiffs trade mark “Velcro” (b) passing of Defendants' hook Velvet fabric of synthetic material or fastners of Defendants as hook Velvet fabric of Plaintiffs' and (c) using the word “Velcro” or any other name deceptively similar thereto as part of Defendants trading name and style.
2. Admitted facts are that Plaintiffs are the owners of Trade Mark set out in paragraph 4 of the Plaint for the classes set out therein. It is also an admitted position that in 1968 negotiations started between Plaintiffs and Defendants Indian Directors for purposes of entering into a collaboration Agreement. It is clear that it is because of those negotiations that Defendants Company was incorporated on 6.10.1969 with the name “Velcro” as part of its Corporate name. This is also clear from fact that thereafter on 26.11.1969 a Shareholders Agreement, as well as, a Licence Agreement were entered into.
3. The Licence Agreement Exh. ‘C’ specifically provides that on termination of the Agreement Defendants are not to use the word “Velcro” as part of their trade name. Before expiry of this Agreement on 26.11.1981 a second Licence Agreement dated 12.11.1981 (Exhibit ‘E) was entered into. This was operative upto 30.9.1986 Thus till this date Defendants have only acted as Licensees of Plaintiffs so far as manufacture and use of hook velvet fastners of synthetic material is concerned.
4. Thereafter negotiations have taken place but these have not fructified in any further agreement. Plaintiffs have been calling upon the Defendants to stop infringing the Plaintiffs mark and to stop passing of their goods as those of Plaintiffs. Plaintiffs have also called upon the Defendants to stop using the name “Velcro” as part of Defendants Corporate name. Plaintiffs have not earlier moved because of pending negotiations. There is thus no delay or latches on the part of plaintiffs.
5. At this stage it is not possible to accept Mr. Shah's contention that trade mark “Velcro” has lost its distinctiveness and is now associated with all hook fastners in synthetic materials. This is a Registered Trade Mark of plaintiffs and plaintiffs are entitled to protection. In India Defendants have only been manufacturing under licence from plaintiffs. They therefore cannot now claim a right to continue to use the Mark or the name.
6. In my view it is no answer to state that plaintiffs have commited breaches of the Agreements by not fulfilling their commitment to purchase regular quantities. The Defendants' remedy for this, if any, is to fire a suit for damages.
7. It is also not possible, at this prima facie stage, to accept Mr. Shah's argument that, Defendants are entitled to continue to use the name Velcro as part of their Corporate name, because they have independantly developed a reputation in India. As stated above. Defendants were merely acting as Licensees from 1969 to 1986. In my view, the fact that, in Agreement Exh. ‘E\ it is not provided that on termination, Defendants will cease to use “Velcro” as part of its trade name makes no difference. This is a registered Trade Mark. To allow Defendants to use it as part of its Corporate name is to permit Defendants to give an impression to the public that they are still connected with or have a licence from the Plaintiffs. In this behalf it is relevant to note that the reputation, if any, of the Defendants in the Indian Market is obviously from manufacture and sale of hook fastners of synthetic materials which were only under licence. It is relevant that for this they have given sales figures but have given to particulars of details of manufacture and sales of leather and stainless steel watch straps and novelty items which they now claim they manufacture. Significantly not stated when they started manufacturing those items, in what quantities, when and where they are sold, to whom they are sold, how, where and when they were advertised etc. To Court it does appear that these must be negligible and/or started only after termination of Agreement Exhibit ‘E’ and receipt of Notice Exhibit ‘J’. Also relevant to note that in Memorandum of Understanding (Exhibit II to the Affidavit-in-Rejoinder) which was signed as late as 17.3.1988, Defendants accept the position that a new Agreement must be arrived at order to enable Defendants, inter alia, to use “Velcro” as their Trade Name in India.
8. Under the circumstances Notice of Motion is made absolute in terms of prayers (a), (b) and (c). There will be no order as to costs.