The Judgment of the Court was delivered by

F.M Ibrahim Kalifulla, J.:— The applicant-plaintiff is a manufacturer of sweets, savouries and chats, registered in the name and style, ‘M/s. Gangotree Sweets and Snacks Pvt. Ltd.’, whereas the respondent-defendant is also carrying on business in sweets, savouries and chats, etc., in the name and style ‘M/s. Shree Gangotree Sweets, Savouries and Chats’.

2. The parties are herein referred to as applicant-plaintiff and respondent-defendant. Application Nos. 3474 to 3477 have been filed by the respondent-defendant for interim suspension as well as for vacating the interim injunction granted in O.A Nos. 800 and 801 of 2005 filed by the applicant-plaintiff in the suit.

3. The prayer for grant of interim injunction is to restrain the respondent-defendant from committing act of infringement to the applicant-plaintiffs registered trade mark “Gangotree” by use of “Shree Gangotree” or any other mark similar to the registered trade mark and from in any manner committing acts of passing off and enable to pass off the respondent-defendant's sweets, savouries, snacks and chats etc. and for applicant-plaintiff sweets, snacks, savouries and chats, etc. by use of the trade mark “Shri Gangotree” deceptively similar trade mark or by use of similar colour scheme, get-up and layout etc.

4. The brief facts which are required to be stated are that the applicant-plaintiff claims to be a leading manufacturer and merchant of various varieties of sweets, snacks and chats and is in the business of providing food, drinks and beverages and also running a food outlet and restaurant since the year 1990. The applicant-plaintiff claims that to render such goods and services by marketing them under the trade mark and service mark “Gangotree” being a distinctive one. It also claims proprietary right of trade mark label “Gangotree” registered as No. 636356 in Class 30 on and from 9.8.1994 for the goods of sweets and chats. According to the applicant-plaintiff, the registration of the trade mark “Gangotree” is in force and valid and duly registered with the appropriate office in Chennai. The applicant-plaintiff also claims that they are also the proprietors of the service application for “Gangotree” label under No. 1300758 in Class 42 which is stated to have been accepted for advertisement in the trade mark journals. The said application is for providing service of food, drinks, beverages and for running hotel and restaurant and food outlets. The trade mark Registration Certificate has been filed as Document No. 1 and the Service Mark application under Class 42 has been filed as Document No. 4.

5. According to the applicant-plaintiff, they have been using the trade and service mark labels since the year 1990 and have thus acquired exclusive right over the trade mark “Gangotree” by virtue of its long extensive and exclusive use of the said mark with the goods manufactured and sold by them. The applicant-plaintiff has also filed the Auditors Certificate which provides the sales turnover for the years 1999–2000 to 2003–2004, it ranges between Rs. 30,42,694 and Rs. 90,16,306. It is contended that the advertisement cost was also in the order of Rs. 35,000 to 65,000 during the above said years. It is stated that it came to the knowledge of the applicant-plaintiff towards the end of 2004 about the business being carried on by the respondent-defendant in Sweets, chats and snacks, beverages, etc., under the name and style of “Shree Gangotree” at Trichy and inasmuch as such business indulged in by the respondent-defendant amounted to ‘infringement and passing off of the applicant-plaintiffs trade mark of “Gangotree”, a legal notice was issued on 25.11.2004 calling upon the respondent-defendant to desist forthwith from using the applicant-plaintiff trade mark “Gangotree” and also to deliver for destruction of all boxes, labels etc. apart from rendering true accounts of the sales so far effected and also to withdraw any trade service mark application made by them with the Trade Mark Registry.

6. A reply to the applicant-plaintiffs legal notice was sent on behalf of the respondent-defendant denying outright the various claims of the applicant-plaintiff. It was in these circumstances, the applicant-plaintiff have come forward with the above suit for perpetual injunction and also to direct the respondent-defendant to surrender for destruction, of all sweets, snacks, savouries, etc. labels including all other materials carrying “Shree Gangotree” mark deceptively similar to the applicant-plaintiffs registered trade mark.

7. In the Original Application Nos. 800 and 801 of 2005, the applicant-plaintiff has prayed for interim injunction, pending disposal of the suit. On 12.8.2005, an order of interim injunction in both the Original Applications was granted for a limited period of four weeks and subsequently, when the respondent-defendant came forward with Application Nos. 3476 and 3477 of 2005, the said interimorder was suspended initially till 30.8.2005 which has now been extended till 5.9.2005

8. The applications for interim injunction have been resisted by the respondent-defendant in Application Nos. 3475 and 3476 of 2005 wherein, the respondent-defendant sought for vacating the interim injunction. According to the respondent-defendant, the applications cannot be maintained in the absence of necessary leave granted under Clause 12 of the Letters Patent, and that the suit itself is liable to be dismissed for having misjoined the causes of action under Copyright Act as well as Trade Mark Act without obtaining necessary permission of the Court as required under Clause 14 of the Letters Patent. The respondent-defendant also contended that after the issuance of the legal notice in November, 2004, the suit as well as the injunction application having been moved in August, 2005 there is considerable delay involved and, therefore, on the ground of delay, the applications for injunction are liable to be rejected. It was then contended that the respondent-defendant is predominantly dealing with South Indian Sweets and savouries in contradistinction to the applicant-plaintiff who primarily deals with North Indian Sweets and Savouries; that there is absolutely no similarity as between the name of the applicant-plaintiff which is “Gangotree” while that of the respondent-defendant, which is “Shree Gangotree” as also there is distinctive dissimilarity in the style in which the above referred two names are displayed as also the emblem, that the applicant-plaintiffs registered mark “Gangotree” is a generic one referable to a holy river which is a sacred name among the Hindus and not being an invented one in order to enable the applicant-plaintiff to claim exclusive usage of it and even the registration cannot be held to be for the very word except for the styles representation of the said word with the device of a “kalasam” which alone is the registered mark. The respondent-defendant, would therefore, contend that the alleged presumption of applicant-plaintiff of infringement and passing off is baseless and inasmuch as the applicant-plaintiff having its business venture only in the city of Madras, cannot claim any such exclusive usage of word “Gangotree” in order to injunct the respondent-defendant from carrying on its business under the name and style “Shree Gangotree” that too at Trichy. It is lastly contended that the applicant-plaintiff having allowed the respondent-defendant to carry on its business from October 2004 till this date, is not entitled for equitable relief of injunction at this point of time.

9. Mr. K. Rajasekaran, learned counsel appearing for the applicant-plaintiff as well as Mr. P.S Raman, learned senior counsel appearing for the respondent-defendant reiterated their respective contentions.

10. The learned counsel appearing for the applicant-plaintiff relied upon 2001 PTC (21) 300 (SC) : (2001) 5 SCC 73 : AIR 2001 SC 1952 (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd..), (1958) RPC 335 Ch.D (Cluett Peabody & Co. INC. v. Mc Intyre Hogg Marsh & Co. Ltd.), and 2005 (30) PTC 14 (BOM), (Sun Pharmaceutical) Industries Limited v. Wyeth Holdings Corporation) in support of his arguments on ‘infringement’.

11. On the question of jurisdiction, the learned counsel relied upon 1997 (1) MLJ 286 (S.B Jaram & Co., By its Managing Partner v. Krishnamoorthi, Proprietor, ‘Gopi Chemical Industries’ India), and an unreported Judgment of the Division Bench of this Court 24.11.1976 in O.S.A Nos. 78 to 80 of 1976, 1999 PTC (19) 183 (Ramu Hosieries, by Rugeshan v. Ramu Hosieries, by Pandela Ramu). On the question of delay, the learned counsel relied upon 2004 (28) PTC 121 (SO: II (2004) SLT 627 (Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia).

12. The learned counsel appearing for the applicant-plaintiff by referring to Sections 28, 2(m), 2(t) to 2(w), 29(5), 30 and 31(1) of Trade Marks Act, contended that when once the trade mark is registered with the concerned authority, the rights acquired by the applicant-plaintiff under the said registered trade mark would be ‘absolute’ and no one except the Applicant-plaintiff can have exclusive right of use of such trade mark and if anybody attempts to either pass off goods deliberately or even incidentally attempt to infringe such trade mark right, that would entitle the applicant-plaintiff to seek for injunction as against such offending party.

13. Mr. P.S Raman, learned senior counsel on the other hand, contended by the relying upon Rule 62 read alongwith Form-02 that the very Document No. 1 filed by the applicant-plaintiff cannot be relied upon as the above referred to Rule prohibits such reliance in legal proceedings. The learned senior counsel, then contended that the name “Gangotree” being a generic one, cannot create exclusive right in favour of the applicant-plaintiff. In other words, the learned senior counsel contended that since the word “Gangotree” being a generic one and not an invented one by the applicant-plaintiff, the very word itself could not have been validly registered as a trade mark and in the said circumstances, the relief claimed by the applicant-plaintiff cannot be granted. The learned senior counsel by referring to Document No. 1, and the Renewed Certificate contended that even as per the Registration Certificate, the registration was not with reference to the word as it specifically mentions that there was no ‘word mark’ and in the circumstances, the mark registered can at best be referable to the ‘style in which the word is written as well as the other emblem which depicts a kalasam with a coconut on top of it. The disclaimer mentioned in the trade mark details was, however, related only to the Swasthik mark. The learned senior counsel relied upon 2004 (4) CTC 334 (Maya Appliances (P) Ltd. v. Pigeon Appliances (P) Ltd.) para 46 to support his contention based on Clause 12 of the Letters Patent. Reliance was placed upon IPLR 2000 OCT 220 T. 1446 (Kerala Jewellers, Madras Kerala Jewellers, Trichy) which is a decision of a learned single Judge of this Court, for the submission made on the ground of delay. Reliance was also placed upon the decision of the Hon'ble Supreme Court on trade marks', reported “Westinn Hospitality Services Ltd. v. Caesar Park Hotels & Resorts Inc.” to contend that the respondent can be permitted to carry on its business by imposing certain conditions such as by directing the respondent-defendant to specifically mention in its packages that its business venture has no connection with the applicant-plaintiff, namely, “Gangotree”. The learned counsel also relied upon 2005 CLC 1081 (Chennai Hotel Saravana Bhavan v. Hotel Saravana Bhavan), which is a decision rendered by a learned Judge of Andhra Pradesh High Court.

14. In the present case, while the averments and allegations contained in the plaint as well as in the application are based on violation of the rights of Trade mark as well as Copyright, the learned counsel for the applicant-plaintiff restricted his prayer insofar as it related to ‘infringement’ and ‘passing off’ as against the respondent-defendant.

15. The distinction between an ‘infringement action’ and ‘passing off action’ has been clearly stated by the Hon'ble Supreme Court in the Judgment reported in “PTC (Suppl) (1) 175 (SC) : (1969) 2 SCC 727 : AIR 1970 SC 1649 (Huston & Hornby Ltd. v. Zamindara Engineering Co.)”, in paragraphs 4 and 5, it has been held as under:

“4. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows:

“Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiffs good?”

5. But in an infringement action the issue is as follows:

“Is the defendant using a mark which is the same as or which is a colourble imitation of the plaintiffs registered trade mark?”

It very often happens that although the defendant is not using the trade mark of the plaintiff, the getup of the defendant's goods may be so much like the plaintiffs that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiffs mark the getup of the defendant's goods maybe so different from the getup of the plaintiffs goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiffs mark.”

16. It is also held in the said Judgment in paragraph 6 that the action for infringement is a statutory right and it is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Trade Marks Act, 1940 which correspondence with Sections 30, 35 and 36 of the New Act, namely, Trade Marks Act, 1999.

17. In the case on hand, it is beyond the pale of controversy that the applicant-plaintiff has got its mark registered as could be seen from the Certificate dated 15.1.2003 which dates back to the Registration Trade Mark No. 636356B, dated 9.8.1994, the mark registered in Class 30 from 9.8.1994 in respect of sweets and chats, the name “Gangotree” written in a particular style with an emblem by its side depicting a ‘kalasam’ with a coconut on top of it and also a swasthik mark just above the said emblem. The reviewed certificate dated 9.8.2003 further disclose that there was no word mark and the disclaimer shown therein is that the trade mark does not give any right for the exclusive use of the device ‘swastik’. It is also on record that the applicant-plaintiffs application for registration in Class 42, namely, for the purpose of registering it as one of the services, has been issued with an Examination Report for making an advertisement before acceptance/advertisement as accepted for registration in the trade mark journals. The said application which has been accepted for advertisement disclose that the registered trade mark “Gangotree” has been continuously used by the application since January, 1990.

18. The question for consideration is therefore, ‘whether the business of the respondent-defendant carried on at Trichy in selling sweets, savouries and chats could be said to have infringed the applicant-plaintiffs right of its registered trade mark?’ and whether it will amount of ‘passing off the goods in which applicant-plaintiff is carrying on its business of sweets, savouries and chats under its registered trade mark “Gangotree”?’

19. The fact that the respondent-defendant is carrying on its business in sweets, savouries and chats under the name and style of “Shree Gangotree” is not in dispute. According to the respondent-defendant, merely because the applicant-plaintiff has got its registered trade mark as “Gangotree” with the emblem attached to it that by itself would not any way affect the rights of the applicant-plaintiff from doing the very same business in sweets, savouries and chats inasmuch as the word “Gangotree” being generic in nature, registration of it itself could not have been permitted and in any event, since the Certificate itself disclose that the word mark was not registered, there could be no exclusive right in the applicant-plaintiff for alleging any violation under the provisions of the Trade Marks Act, 1999.

20. When the above contentions of the learned counsel of either parties are considered, in the light of the provisions of the Trade Marks Act, under Section 2(m), the definition of “mark” mentions that it would include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Sections 2(t) to 2(w) define ‘register’ ‘registered’ and ‘registered proprietor’ and ‘registered trade mark’ respectively. Section 29 refers to ‘infringement of registered trade marks’. Section 29(5) is to the following effect:—

“29(5). A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services, in respect of which the trade mark is registered.”

21. Section 30 deals with limits on effect of registered trade mark'. Section 31 prescribes that once a trade mark is registered under the Act, that can be taken as prima facie evidence of its validity.

22. A cumulative effect of the above referred to provisions makes it clear that once a trade mark is registered with the Registrar, any infringement of such registered trade mark by any person would entitle the holder of the registered trade mark a statutory right to protect itself from such infringement from such persons. Once such a statutory right is created in favour of such a trade mark holder, the question is as to how far the Court can extend its helping hand to protect such rights in favour of the holder of the trade mark as against such persons who are alleged to have infringed such rights as well as who are stated to be indulging in the act of passing off.

23. The decision relied upon by the learned counsel for the applicant-plaintiff reported in (2001) 5 SCC 73 : AIR 2001 SC 1952 (supra) makes it clear that any action of infringement of trade mark, the test is as between deceptive similarity or dissimilarity in essential features, the dissimilarities cannot be given any importance than similarity. In the said decision, the Hon'ble Supreme Court has held as under in paragraph 19:

“19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara's case (AIR 1963 SC 449) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Shanna's case (AIR 1965 SC 980), it was observed that “in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is a limitation, no further evidence is required to establish that the plaintiffs rights are violated.”

24. In ‘Kerry's-Law of Trade Marks and Trade Names-Thirteenth Edition”, in para 16-71, English decisions reported in “(1973) 54 R.P.C 182 at 185 : (1941) 58 R.P.C 147 at 161 : (1969) R.P.C 78 : (1931) 48 R.P.C 477 at 487 : (1947) 64 R.P.C 125 at 133 : (1966) R.P.C 68 at 74 and (1972) R.P.C 799” have been summed up, for the following proposition of law:

“The importance of aural similarity is expressly recognized in the jurisprudence of the ECJ; the resemblance between two marks must be considered with reference to the ear as well as to the eye. Whether confusion will arise in the course of telephone conversations must also be considered.”

25. In another English decision reported in “(1958) R.P.C 335 Ch.D (cited supra), at page 351, it is held as under:

“Now as to the law. It is well settled that infringement is not, to be tested solely by visual comparison. So judged, of course, there would be no infringement in this case. Evidence of the ear is not to be excluded. Furthermore, a man infringes the mark of another if he seizes upon some essential feature of the plaintiffs' mark. That essential feature may be ascertained by the eye or by the ear in this sense that goods bearing that mark may be likely to become known by a certain name, see De Cordova v. Vicks Chemical Company 68 R.P.C 103 at p. 105. Furthermore, evidence is admissible to establish what is or has become an essential feature but evidence is not essential if the Court feels salified on inspection in coming to the conclusion that some particular feature is a distinguishing feature of the mark allegedly infringed: See Saville Perfumery Ltd. v. June Perfect, 58 R.P.C 147 at p. 174.”

(Emphasis added)

26. Again in the decision of the Hon'ble Supreme Court reported in “2001 (2) CTMR 588 (Laxmikant V. Patel v. Chetanbhat Shah)”, in para 8, the law has been stated as under:—

“8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. Accordingly to Kerly (Law of Trade Marks and Trade Names, 12th Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (trading business or any other) will normally have attached to it a goodwill that the Courts will protect. An action for passing of will then lie wherever the defendant-company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings, the Court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the nama innocently.”

(Emphasis added)

27. A Division Bench of the Bombay High Court in the judgment reported in “2005 (3) PTC 14 (Bom) (DB), in paragraph 32, the Division Bench has set out as to under what circumstances, a deceptive manner of infringement can take place in respect of a trade mark.

28. A reference to the above referred to decisions of the Hon'ble Supreme Court as well as that of the Division Bench of the Bombay High Court and the English decisions, succinctly brings out the position that even if a slightest doubt created in the minds of the public at large by the deceptively use of a trade mark either in its name or other marks by any person other than the registered trade mark holder would by virtue of the provisions of the Trade Marks Act entitle the holder of the trade mark to seek for prevention of such infringement and passing off. Apparently, such a valuable right is created in favour of the holder of the trade mark, having regard to the long usage of such mark which enable the concerned trade mark holder to get such mark registered in its favour. It cannot be said that any infringement or passing off should be tested in the light of minute dissimilarities, on the other hand, the well settled position is, it should be tested in the light of broad similarities found in the person who had attempted such infringement and passing off of a registered trade mark.

29. With the above principles in mind, when the case on hand is analyzed, when the registration of the trade mark “Gangotree” with its emblem attached with it is not in dispute and its only disclaimer is the Swasthik mark, it will have to be held that the use of the word “Gangotree” in any form by the respondent-defendant would amount to the infringement of a statutory right of the trade mark user and similarly the business carried on by the respondent-defendant under the name and style of “Shree Gangotree” would certainly amount to passing off of the goods, namely, sweets, savouries and chats of that of the applicant-plaintiffs business under the name and style of “Gangotree”. The respondent-defendant cannot be allowed to contend that mere use of the word “Gangotree” in its business place alongwith the word “Shree” no infringement has taken place. It is common ground that the business of both the parties is only on sweets, savouries, chats and other food items. In fact, the sample packages placed before the Court at the instance of the respondent-defendant disclose that both are in the business of sweets and chats. When the basic principles set out in “Kerry's Law of Trade Marks and Trade Names Thirteenth Edition” namely, “the resemblance between two marks must be considered with reference to the ear as well as to the eye” is applied, it will have to be held in no uncertain terms that any customer, who intends to buy such special kind of sweets, savouries and chats, is bound to be well carried away by the name “Gangotree” used by the respondent-defendant for that of the applicant-plaintiff. It cannot be disputed that the applicant-plaintiff has been the user of the name “Gangotree” for more than a decade. Therefore, it must have by now gained a set of its own customers in this particular area of business, namely, ‘sweets, savouries and chats’ and the respondent's venture which came to be started in the last quarter of 2004, is certainly bound to create atleast a fading impression as though its products are also that of applicant-plaintiff, by virtue of the use of the same name “Gangotree” for its business place as well as in its packages, etc. The applicant-plaintiff having acquired a statutory right, by virtue of its registered trade mark is certainly entitled to seek for its protection of its infringement in any form. Equally its rights as against any body's attempt to even pass off such goods also entitled to be protected. When according to the applicant-plaintiff, it is the user of word “Gangotree” right from the year 1990, it is entitled to claim that such user has created a presumptive right in its favour under Section 31 of the Trade Marks Act and consequently, the whole burden would shift on the respondent-defendant to dislodge that presumption which may even be available to the respondent-defendant by approaching the appropriate Forum by invoking the provisions contained in Chapter VII of the Trade Marks Act, 1999. Until such remedies are invoked in a successful manner, it will have to be held that infringement of the trade mark of the applicant-plaintiff in any manner and the action of passing off indulged in by the respondent-defendant in the form in which it is alleged and shown as on date would entitle the applicant-plaintiff to seek for injunction as prayed for.

30. As far as the contention based on Clause 12 of the Letters Patent by relying upon the decision of the learned Judge of this Court reported in 2004 CTC 334 (supra), the same cannot be countenanced in the light of the unreported Judgement of the Division Bench of this Court, dated 24.11.1976 in O.S.A Nos. 78 to 80 of 1976 which was also followed by the Division Bench of this Court in the decision reported in 1999 PTC (19) 183 (DB) (supra) (para 8) and also the decision reported in 1977 (1) MLJ 286 (supra) (para 9). In the two Division Bench Judgments, the jurisdiction of this Court to entertain the suit for such actions have been clearly set out as under:

In the Order dated 24.11.1976 in O.S.A Nos. 78 to 80 of 1976, para 17:—

“17………In a suit for infringement of trade marks the plaintiff has to establish a cause of action by showing that he has a proprietary right in a trade mark and that the same has been infringed by the other party. This he can establish only by showing that his trade mark has been registered with the registrar of trade marks. Therefore, the cause of action in such suits can be taken to arise partly at Madras where the trade marks have been registered………”

31. In the Judgment of the Division Bench reported in “1999 PTC (19) 183 (DB), the” position has been clearly set out in para 9, which reads as under:

“9 Where the infringement had taken place Partly in one jurisdiction by way of advertisement and rest in another jurisdiction by marketing the product, then, the registered owner of the trade mark can maintain the suit either at the place where the cause of action arose partly or wholly which includes the place of registration, advertisement or marketing. This can be by showing that his trade mark has been registered with the Registrar of Trade Marks. Therefore, it cannot be said that no part of the cause of action arose at Madras. Thus, the finding of the learned Judge, that unless the goods are actually marketed, it cannot be said that there has been an infringement of the trade mark within the jurisdiction of this Court, is unsustainable. We answer both the questions in the affirmative.”

32. In the light of the above referred to two Division Bench Judgments and the fact that the applicant-plaintiffs trade mark having been registered with the Authority coming within the jurisdiction of this Court, there is no need for the applicant-plaintiff to seek for leave separately under Clause 12 of the Letters Patent.

33. Similarly, the plea based on the alleged delay relying upon the decision of the learned single Judge reported in “IPLR 2000 Oct 220 T 1446 (supra) cannot also be accepted in the light of the decision of the Hon'ble Supreme Court reported in II 2005 SLT 627, wherein in paragraph 5, the Honble Supreme Court has held as under:

“5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.”

(Emphasis added)

34. Having regard to the well settled legal position in the above referred to Division Bench decisions and the decisions of the Honble Supreme Court, it is too late in the day for the respondent-defendant to contend that the applicant-plaintiffs claim for injunction cannot be granted on the mere ground that the leave Was not obtained under Clause 12 of the Letters Patent or that the application came to be filed after a delay of about 10 months. Inasmuch as the applicant is not pressing its claim under the Copy Rights Act in the Interlocutory Application, the submission based on Clause 14 of the Letters Patent is also not relevant at the present juncture. Therefore, the argument based on the said Clause 14 of the Letters Patent is of no consequence for the grant of injunction at this stage.

35. The reliance placed upon the order of the learned single Judge of the Andhra Pradesh High Court reported “2005 CLC 1081 (supra)” can be of no avail inasmuch as the said decision was rendered as between parties where the plaintiff who sought for injunction was not holding a registered trade mark. Moreover, the learned Judge relied upon the decision of the Honble Supreme Court reported in “2000 PTC (20) 297 (SC) : (2000) 5 SCC 573 : AIR 2000 SC 2114 (S.M Dyechem Ltd. v. Cadbury (India) Ltd.”, which has been specifically overruled by the Honble Supreme Court in the subsequent decision reported in (2001) 5 SCC 73 : AIR 2001 SC 1952 (supra).

36. In the light of my finding that the applicant-plaintiff has mode out aprima facie case for grant of injunction based on its registered trade mark as per the Registration Certificate granted in its favour as from 9.8.1994 which has been subsequently renewed by the Assistant Registrar of Trade Marks, Chennai dated 9.8.2003, I do not find any need or necessity to permit the respondent-defendant to carry on its business by imposing any condition as the applicant-plaintiff is not agreeing for adopting any such course. I therefore, do not find any scope to follow the order relied upon by the learned counsel for the respondent-defendant in “Westinn Hospitality Services Ltd. v. Caesar Park Hotels & Resorts INC. case”

37. Therefore, as I find a prima facie strong case of the plaintiff and as the balance of convenience is also in its favour, there is every justification in confirming the injunction pending suit. For the above said reasons, the injunction granted on 12.8.2005 in O.A Nos. 800 and 801 of 2005 is made absolute. Consequently, Application Nos. 3474 and 3475 of 2005 filed for vacating the interim injunction, are rejected and the Application Nos. 3476 and 3477 of 2005 filed for suspension of interim order dated 12.8.2005, are also consequently dismissed. In the result, Original Applications No. 800 and 801 of 2005 are allowed and the Application Nos. 3474 to 3477 of 2005 are dismissed. No costs.