Hon'ble Smt. Justice Prabha Srideven:— This matter has been urgently moved for grant of stay after service on the Counsel for the respondent.
2. The application is for removal of the mark “Babal Hind” under No. 1359845 in Class 30. According to the applicant, the applicant adopted the mark “Gateway of India” in 1988 in respect of export and sale of rice. According to the learned Counsel, this mark is exclusively identified with the applicant's quality products. According to the applicant, he also adopted the mark “Babal Hind” in the year 2003. “Babal Hind” is the Arabic translation of the mark “Gateway of India”. It is the grievance of the applicant that the respondent has adopted an identical mark “Babal Hind”. The applicant has alleged that the user was wrongly published with regard to respondent's application No. 846009. There is another registration in the name of the respondent in application No. 1120956. Applications have been filed by the applicant in respect of other marks and they are all prevailing. The respondents knowing fully well that “Babal Hind” means “Gateway of India” and/or “India Gate” filed the application without complying with the mandatory provisions of the law or informing the Registrar about the meaning of the word “Babal Hind”. The mark proceeded to registration without the respondent providing translation of the word “Babal Hind” or imposing any disclaimer. The respondent has filed a Civil Suit against the third parties who have prior registered rights in the trade mark “India Gate” where the respondent has alleged that they are the registered proprietor of the mark “Babal Hind” which is the impugned mark. According to the applicant, their rights are superior to the rights claimed by the respondent because of prior adoption of the mark. Therefore they prayed for removing the registration. The applicant has obtained registration on 28.4.2000 with effect from 14.12.1990 of the mark “Gateway of India” with device. It was published in the Journal in 1996, the user was claimed from 1.3.1988 The respondent preferred an application for device in 2006 applied for on May 27, 2005 as a “proposed to be used” mark. In the written statement filed by the respondent herein in the Suit C.S (O.S) No. 1180/2009 they have stated that “Babal Hind” in Arabic means “India Gate”. It is also stated that the respondent has been using the mark since 27.5.2005 and the Suit is not maintainable Inter alia under Section 32 (e) of the Act. The respondents trade mark has been widely advertised in prominent journals and the applicants have been aware of it.
3. The respondents application for “India Gate” in application No. 846009 dated March 17, 1999 claiming user from 1.1.56 was advertised in the journal on December 20, 2004. They have filed a TM 16 application for amendment of the counter statement claiming that the user was wrongly mentioned. The Learned Counsel appearing for both the sides reiterated their respective stand and the learned Counsel for the respondent relied on several decisions.
4. The decisions cited basically set out the position that—
(i) 2001 PTC 797 (Del)(DB) - B.L & Co. & Others… v. Pfizer Products Incl.…., Respondent - “…while the delay in institution of a suit for an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex-parte/interlocutory injunction”.
(ii) 2000 PTC 326 - Om Prakash Gupta, Plaintiff v. Parveen Kumar, Defendants: The attempt to obtain interim injunction which is delayed cannot be granted.
5. Allegations of fraud were also made against each other. But the main trump card of the applicant is an order of stay granted by us in M.P No. 170 of 2011 in ORA 160/2011.TM/DEL (Modern Flour Mills Pvt. Ltd., Applicant v. KRBL Ltd., Respondents). There the mark was the same mark. Three matters have been filed where the controversy is almost identical. ORA/145/2011/TM/DEL - KRBL Limited, Applicant v. Vikram Roller Flour Mills Limited, Respondents was filed by the respondent herein. The mark was “India Gate”. We refused to grant stay because prima facie the evidence was unreliable. This order is dated 7.10.2011 in M.P No. 152/2011 in ORA/145/2011/TM/DEL. The respondents in ORA/145/2011/TM/DEL also filed rectification application. In M.P No. 170/2011 in ORA/160/2011/TM/DEL filed by Modern Flour Mills Pvt. Ltd., the following extract from the order is relevant:
“5. ……. But considering the submissions made we are prima facie of the opinion that had the respondent disclosed BABAL HIND meant India Gate in Arabic, the Registrar may have seen all the cited marks India Gate and his decision to grant registration may have been different.
6. Therefore, we dispose of the miscellaneous petition as follows:
The effect of the registration of the mark Babal Hind shall be stayed as regards applicant on the basis of the registered mark “BABAL HIND” which is the subject matter of the present rectification proceedings.”
The applicant herein claims that he is entitled to an identical order. In ORA/156/2011/TM/DEL filed by Vikram Roller Flour Mills Ltd., Applicant v. KRBL Limited, Respondent, an undertaking was given by the respondent herein and the extract are the following:
“4. However, to avoid protracted litigation the learned counsel for respondent came forward to give this undertaking and the same is recorded:
“The respondent will not seek any relief against the applicant on he basis of the registered mark “BABAL HIND” which is the subject matter of the present rectification proceedings”.
It is made clear that this undertaking will not preclude the respondent from asserting any common law rights that they may have on the basis of their alleged user of the mark “INDIA GATE” with or without device from 1993. Recording this, the miscellaneous petition No. 167/2011 is disposed of. No order as to costs.”
In ORA/156/2011/TM/DEL and ORA/160/2011/TM/DEL the mark was “Babal Hind”. In both those cases, the relief was restricted to the respective applicants. We have to see whether the applicant herein deserves the grant of stay.
6. An interim order of stay is a matter of discretion and it will depend on the facts of the particular case and merely because interim stay was granted in favour of another party in respect of registration of one mark it does not automatically follow that anyone attacking the same mark will obtain an order of stay. We will have to assess the prima facie case, balance of convenience, irreparable hardship and irretrievable injury. Contrary stands have been taken in the Suit and the ORA, both by the applicants and the respondents. When the applicant wants a stay, the Court should be moved at the earliest juncture. In this case the applicant has taken his own time to move the stay application. The applicant has approached this Board after two years. They had knowledge of the respondents registration in the year 2009 when the respondents filed their Written Statement in the suit filed by the applicant. The respondent had stated about the impugned registration. The respondent had filed an application in ORA/150/2009/TM/DEL for rectification of the applicants trade mark under No. 541858 in Class 30 where again the impugned registration was mentioned. Having not taken any steps for two years, we do not think there is any urgency for any interim relief to be granted. The balance of convenience is not in favour of the applicant. We may arrive at a conclusion based on the evidence and the pleadings. But right now we are concerned with the application for interim relief. The applicant does not deserve the discretionary relief of stay and it is therefore dismissed.