1. This is an application filed by the plaintiff under Order 39 Rules 1 and 2 Code of Civil Procedure seeking an order of temporary injunction against the defendant from manufacturing, selling, offering for sale and/or otherwise dealing in Atta, Maida, Pawa, Suji, Besan or any other cereal or any other cognate or allied goods under the mark ‘RED FORT’ or device of RED FORT or any other mark as may be identical or deceptively similar to the plaintiff's trade mark LAL QILLA or device thereof.
2. The plaintiff has filed the suit, inter-alia, seeking decree of permanent injunction restraining defendant from using the trade mark RED FORT or its device in respect of the items referred to above.
3. Plaintiff claims that in the year 1961 it adopted the trade mark ‘LAL QILLA’ (word per se) and the device mark of ‘LAL QILLA’ so as to indicate its connection in the course of trade with the goods of its selection, manufacture and sale and also as a proprietor thereof. It is claimed that the plaintiff is the registered proprietor of the trade mark LAL QILLA and device of LAL QILLA under the provisions of Trade and Merchandise Marks Act, 1958. The word per se LAL QILLA is registered since the year 1961 and the device of LAL QILLA is registered since 1968. The grievance of the plaintiff is that the defendant has adopted an identical and/or deceptively similar mark ‘RED FORT’ with device of LAL QILLA in respect of the goods of its manufacture and sale. According to plaintiff the adoption of mark ‘RED FORT’ and device thereof by defendant is malafide, dishonest and tainted with a view to trade upon the reputation of plaintiff's trade mark' Plaintiff says that the goods in question on which the impugned mark is being used by the defendant are identical or in any case allied and the impugned mark of defendant is also the same as that of the plaintiff's registered trade mark.
4. From facts established on record, it appears that the defendant made an application in the office of the Registrar of Trade Marks seeking registration of trade mark ‘RED FORT’ and device of RED FORT. The application of the defendant was advertised in Trade Marks Journal dated 16th March 1982. An opposition was filed by the plaintiff being opposition No. DEL 3839 on or about 17th June 1982. The said opposition was decided by the Deputy Registrar of Trade Marks on 11th December 1986 and the defendant did not challenge this order which has become final. A photostat copy of the order dated 11th September 1986 has been placed on record. While accepting the opposition the Deputy Registrar came to the following conclusion:
1. The applicants (defendant's) trade mark is deceptively similar to the opponent's (plaintiff's) trade mark.
2. The plaintiff has established that there is a trade connection between the goods of the rival parties.
3. The use of deceptively similar trade mark by the defendant in rrspect of ‘Maida, Rawa, Atta’ is likely to deceive or cause confusion.
4. The adoption of nearly identical or very closely similar trade mark by the defendant cannot be considered as honest.
5. Plaintiff has to establish prima facie case and balance of convenience in its favour so as to be entitled to an order of temporary injunction. For the present purposes it is not necessary to analyse facts in any detail, in view of aforesaid conclusion ofhet Deputy registrar which clearly show that the plaintiff has a strong Prima facie case and that balance of convenience is also in its favour. Learned counsel for the defendant, however, contends that the plaintiff is not entitled to temporary injunction as there has been long unexplained delay in coming to this court. As stated hereinbefore, the plaintiff immediately on mark being advertised in Trade Mark Journal filed its opposition before the Registrar. The said proceedings remained pending till 1986. Admittedly, defendant was not using the trade mark from 198S upto 1988 though defendant contends that it was on account of fire in its factory. All the same the fact remains that the defendant was not using the trade mark from 198S to 1988 and, therefore was no occasion for the plaintiff to file the suit. It appears that soon after the plaintiff learnt that defendant had again started using the impugned trade mark, the present suit was filed, It was not necessary for the plaintiff to immediately rush to this Court without waiting for the outcome of the proceedings pending before the Registrar of Trade Marks. In view of these facts, it cannot be said that the plaintiff was guilty of any delay let alone undue delay in filling the suit. On opposition being filed by the plaintiff, defendant was put on due notice of the intentions of the plaintiff and use of impugned trade mark thereafter by the defendant was at its own risk and consequences. Learned counsel for the plaintiff, Mr. Anand, rightly relies upon Gaxo operations UK Ltd. v. Middlesex, AIR 1984 Delhi 265 for the proposition that if plaintiff had put defendant to notice, the use of the impugned trade mark by the defendant will be at his own risk and peril.
6. The Deputy Registrar has come to the conclusion that the adoption of the impugned trade mark by the defendant cannot be considered as honest. For the purposes of arriving at prima facie conclusion it is safe to rely upon the conclusion of the Deputy Registrar. Mr. Anand is right in contending that the conclusion that the adoption of impugned trade mark is dishonest, is fatal to the defence of the defendant. The judicial discretion cannot be exercised in favour of a person against whom there is a funding of dishonest adoption of a trade mark. The conclusions of the Deputy Registrar apart, to me also, on facts and circumstances of the case, it appears that the adoption of almost similar trade mark by the defendant was not honest and if the adoption is dishonest no amount of user can be put as a defence to such like proceedings (See: In the matter of an application By J.R Parkington Coy. Ltd. AND In the matter of an Opposition thereto by Frederick Robinson Ld. 1946 (Vol. 63) RPC 171 and L.D Malhotra Industries v. Popi Industries, I.L.R 1976 (1) Delhi 278).
7. The other objection of Mr. Ghiraiya, learned counsel for the defendant that defendant has huge sales is of no relevance in the facts and circumstances of this case. The defendant cannot be permitted to take advantage of its own wrong. The plaintiff had put defendant on notice of its intentions without any undue delay. Likewise, the contention of the learned counsel for the defendant that the sale under the impugned mark are being made to leading companies is also of no consequence in as much as it cannot be disputed that the goods in question are used and can be sold to every class of person and, thus, there is every liklihood of deception and confusion being caused.
8. For the reasons aforesaid, I allow the application and restrain defendants from manufacturing, selling or offering for sale and/or otherwise dealing in Atta, Maida, Rawa, Suji or any other cereal or any other cognate or allied goods under the mark (s) RED FORT or device of RED FORT or any other mark (s) as may be identical to and/or deceptively similar to the applicant's trade Mark LAL QILLA or the device thereof and from passing off its goods and business as and for the goods or business of the applicant, till the decision of the suit.