Vikramajit Sen, J.:— By this order I.A Nos. 10580/97, 1970/99 and I.A 7460/99 in Suit No. 2296/97 and I.A 9865/97 in Suit No. 2138/97 shall be disposed off. It is not in dispute that the business of Cosmetics in the style of Bagla & Co. was started by the parties' father, namely, Shri Nanu Mal Bagla as far back as 1925. The father, regretfully has been missing since 1968, his estate has not been petitioned.

2. In Suit No. 2138/97, the Plaintiff is stated to be partnership concern of which Shri Naveen Kumar Bagla and Pawan Kumar Bagla, both sons of Jaininder Kumar Bagla, are the partners. It is further averred that the trade name and trade mark ‘Bagla Cosmetics’ has been in the sole and exclusive use of Shri Jaininder Kumar Bagla, son of late Shri Nanu Mal Bagla since 1975. In support of this contention it is submitted that Shri Jaininder Kumar Bagla had obtained central sales tax registration in 1975 and had also registered under the Delhi Shops and Establishment Act, 1954. The plaint further discloses that the trade mark and trade name ‘Bagla Cosmetics’ was first coined, adopted and used since the year 1975 by Mr. Jaininder kumar Bagla, who retired from the firm in 1996. It is submitted that the mark ‘Bagla Cosmetics’ is represented in a noval artistic design, get up and colour combination, the copyright of which vests solely and exclusively with the plaintiff. Registration thereof under the Trade and Merchandise Marks Act, 1958 has also been pleaded. The springboard of the litigation is an advertisement in the Nav Bharat Times dated 30.9.1997 in which the defendant had given a caution notice that it was the proprietor of the trade name ‘Bagla Cosmetics’.

3. In their Written Statement the defendants had pleaded that they are carrying on the business of manufacturing and marketing of nail polish, chemicals and colours to be used in nail polish under various trade marks and trade name ‘Bagla & Co.’ since 1968. They have challenged that the plaintiffs are not be owners of the impugned trade name/trade mark ‘Bagla’ with any suffix or prefix. It has been denied that the plaintiff have been using the trade mark ‘Bagla Cosmetics’ since 1975 and that they had full knowledge that the defendants were transaction business in the name of ‘Bagla & Company’. It has then been stated that the word ‘Bagla’ was first employed in 1925 when the father of the defendant late Shri Nanu Mal Bagla started using this word in respect of cosmetics as ‘Bagla & Company. The defendant, namely, Shri Ganeshi Lal Bagla has pleaded that he was helping in this business since 1960 and when his father disappeared in 1968 he started handling the firm ‘Bagla & Company’, with the consent of all the family members including the plaintiff. It is, however, admitted that the plaintiff started using the trading style. Bagla Cosmetics, for the first time in 1975, but on the defendant's objection, the plaintiff discontinued business activities in the name ‘Bagla Cosmetics’ till the year 1996. Immediately legal notices were issued by the defendant to which no reply was received. The plaintiff's application for the trade name ‘Bagla Cosmetics’ in the Drug Department was rejected in the year 1996 and thereafter they continued in the name of Aliga Cosmetics. It is asserted that the plaintiffs are using false drug licence numbers, variously as Nos. 255 and 254. Although, it has been admitted in the Written Statement that the word ‘Bagla’ has been used in respect of cosmetics for more than 70 years, it is pleaded that the plaintiff has no right of any kind to use the word ‘Balga’ as a trade mark or as a part of trading style. In respect of the advertisement dated 30.9.1997 the defendant has averred that since he intended to open a sister concern in the name of ‘Bagla Cosmetics’ the public notice was inserted.

4. In the Replication it has been denied that the defendants have been carrying on business of manufacturing and marketing of Nail Polish under the trade name ‘Bagla & Co.’ since 1968. The factum of Shri Nanu Mal Bagla, the grandfather of the Plaintiff and the father of the defendant having commenced business under the trade name ‘Bagla & Co.’ since 1925 has been admitted. Till 1968 both his sons Shri Jaininder Kumar Bagla (father of the plaintiffs) and his younger brother Ganeshi Lal Bagla (defendant) had jointly carried on business of manufacturing and trading in cosmetics under the name of ‘Bagla & Co’. This statement was not controverted by learned counsel for the defendant in the course of arguments. They continued to transact business jointly till 1975 when differences arose between the two brothers. Thereafter, it has been alleged in the Replication, it was agreed by them that the firm “Bagla & Co.” would be dissolved and the father of the plaintiffs would open a separate business under the trade name “Bagla Cosmetics”. It is further averred that the trade name “Bagla & Co.” was discontinued. It is reiterated that the word “Bagla Cosmetics”, was first invented and adopted by the plaintiffs in the year 1975 and since then been used continuously and openly by the plaintiff. Allegations against each brother have been exchanged in respect of the piracy of the word “Bagla”. S. No. 2296/1997 has been filed by Shri Ganeshi Lal Bagla (the younger son of Shri Nanu Mal Bagla) as the sole proprietor of Bagla & Co. The factual narration, in this suit is, as is to be expected, on the lines adopted in the Written Statement of the S. No. 2138/1997. It has been prayed inter alia that the defendant should be injuncted from manufacturing and selling nail polish and other cosmetics goods under the trade name “Bagla” and/or any other trading style having the name “Bagla”. It is under these circumstances that the interim applications in both suits can be conveniently and properly disposed of by a common order.

5. At the time of arguments, Shri S.K Bansal, learned counsel, for Bagla Cosmetics had fairly contended that every member of Bagla family have the right to transact business by using and adopting the family name ‘Bagla’. It was his submission that no member of the Bagla clan could lay exclusive claim to the use of the family name, especially since family business had been started in 1925 by the patriarch. Shri Nanu Mal Bagla. The good hense which had prevailed albeit after firing the first legal salvo, has not Been shared by Bagla and Co. Hence the case was argued vociferously and totally.

6. It was the contention of Shri R.K Aggarwal, learned counsel for Bagla & Co. that since there has been material suppression of relevant facts in the plaint filed by Ms. Bagla & Cosmetics the discretionary relief of injunction was ought not to be granted to the latter. Since cross-suits had been filed, the significance of material suppression is greatly diluted since an injunction in favour of one would not automatically lead to the grant of an injunction in favour of the other. Both parties have to independently specify and sustain their respective claims. The first accusation of material suppression of facts was that Bagla Cosmetics (Plaintiffs in S. No. 2138/1997) had falsely alleged that the name “Bagla Cosmetics” had been coined by them. In response Shri S.K Bansal, learned counsel for “Bagla Cosmetics” had submitted that the (advertisement in the Nav Bharat Times, which is the genesis of the dispute, on a plain reading did not indicate that its author was their uncle Shri Ganeshi Lal. It is argued that the impression in the mind of the plaintiff was that a third party was intending to start a fresh business. For this reason the facts relating to the establishment of the business of the ancestor of the parties (namely Nanu Mal as far back as in 1925 had not been pleaded. He further emphasised that the suit filed by him was defended by Ganeshi Lal Bagla as the sole proprietor of “Bagla & CO”, in contra-distinction to “Bagla Cosmetics” when the identity of the author of the advertisement got to be known, the above fact was not controverted at all. This appears to be at least a plausibility and nothing further needs to be said on this issue. Shri S.K Bansal has relied on the decision of the Apex Court entitled Sohan Lal v. Amin Chand and Sons . 1973 2 SCC 608, where it was observed that where the views of the Court, on the questions which arise in the present dispute, are contained in para 8 of the judgment which is reproduced and reads as under:

“It may be recalled that Bakshi Ram gave notices for the dissolution of the two firms in January, 1967 to the other partners. The appellants contend that with the dissolution of the firm the assets of the firm including the trade marks registered to partners as co-owners and that two of the partners, namely, the respondents, have no right to appropriate or use the assets of the firm to the exclusion of the legal representatives of the other partner. Bakshi Ram. The suit in which the injunction order was passed was filed for a declaration that “Amin Chand & Sons” constituted by the two surviving partners alone was entitled to use the assets of the firm of “Amin Chand & Sons” of which Bakshi Ram was a partners, and it was for restraining the appellants from using that firm's assets, namely, the two trade marks in question, that the order of injunction was sought. Prima facie, it would appear that the respondents are not entitled to the exclusive use of the two trade marks which formed part of the assets of that partnership of Amin Chand and Sons of which the three brothers were partners. The appellants being the legal representatives of Bakshi Ram were also entitled to a share of the assets of the partnership. If that be so, we do not think that the Courts were justified in granting the injunction restraining the appellants from using the trade marks. In these circumstances, we think that the proper course to adopt is to continue in force the order passed by this Court when it granted the special leave on the basis of the application filed by the appellants for stay of the order of injunction, after setting aside the order under appeal.”

7. It was held that “prima facie”, it would appear that the respondents are not entitled to the exclusive use of the trade marks which form part of the assets of partnership of Amin Chand & Sons of which three brothers are partners. The appellants have the legal representatives of Bakshi Ram was also entitled to the share of the assets of that partnership. If that be so, we do not think that the Courts were justified in granting the injunction restraining the appellant from using the trade mark.’

8. Learned counsel for Bagla & Co. has relied in Malhotra Rubber v. Malhotra Auto Products . 1997 PTC 192, in which it was held as follows:

“On the facts and circumstances aforementioned, I find it to be a fit case for grant of injunction, which if not granted is likely to result in irreparable loss and injury to the plaintiff. Balance of convenience also lies in favour of grant of injunction. Reference be so made to the decision of this Court in K.G Khosla Compressors Ltd. v. Khosla Extraktions Ltd., 1986 PTC 211, Usha Intercontinental Ltd. v. Usha Television Ltd., 1987 PTC 240-A, and the orders passed on 6th September 1994 in I.A No. 10816/93 and I.A No. 875/94 in Suit No. 2815/93 and Poison Ltd. v. Poison Dairy Ltd., 56 (1994) DLT 102 : 1996 PTC 709, that trade mark being identical in relation to identical goods, the possibility of confusion and deception is almost unquestionable and plaintiff being prior in adoption and use of the marks will suffer irreparable injury, in case the defendants are allowed to use the trade mark in respect of similar goods.”

9. He has further relied on Senor Laboratories Ltd. v. Jagsonpal Pharmaceuticals Ltd. . 1998 PTC 18 DB 449, in which the plaintiff, being a subsequent user of the said trade mark in question was not to be protected. It was reiterated that it is a well-settled that a prior user of the trade mark has rights even the over a later registered user. The orders of the learned single Judge were set aside with the observation that no injunction can be issued against a prior user of the trade mark in passing off action and that passing of does not recognise a poprietory right of any kind whatsoever in any invented word. The D.B further held that in an action for passing off an injunction could only be wanted to the party who had successfully proved the distinctive features substantial user a wide reputation of the impugned trade mark. In B. K. Engineering Co.… v. Ubhi Enterprises (Regd.) & Anr…S . 1985 PTC 1, the controversy was whether the defendants could be permitted to use BK-81 when the plaintiffs have been using the used name “BK”. After due consideration, injunction layed for was issued against the defendants. The learned counsel for Bagla Co. has also relied on K.G Khosla Compressors Ltd. v. Khosla Extraktions Ltd. . 1986 PTC 211., But all these cases, in my opinion, do nto apply to be facts of the present case. Learned counsel has also cited Vellakutty v. murthyayani . AIR 1968 Kerala 179 V55 C44., S.P Chengalyaraya (D) v. Jaganath (D) . 1994 RLR SC 102., and Fairdeal corporation Pvt. v. Vijay Pharmaceuticals . 1985 PTC 80., for the proposition that if there has Ben a material concealment or mis-statement of facts, an injunction should be declined. As I have already observed above, since cross suits have been led the proposition enunciated in these cases would be somewhat diluted. In any event, the learned counsel for Bagla Cosmetics has put forward a version which is at least plausible inasmuch as he has explained that he was not aware that the defendant in this case who was transaction business under le name of Bagla & Co. was his relative. Significantly, the Written Statement S. No. 2138/97 has been filed by Bagla & Co. although the defendant was betrayed as Bagla Cosmetics.

10. In my view it is not permissible at this stage, to lose sight of the fact that the two adversaries are offshoots of the original family business commenced by the patriarch namely Nanu Mal Bagla in 1925. The business at the same and had been jointly carried out by Nanu Mal Bagla and his two sons. It cannot be held at this stage which part of the Bagla family was fansacting business in the style of Bagla Cosmetics. It is also not possible at this stage to return a decisive and unequivocal finding as to which of the rival actions of the family has been doing business after the disruption of the family business due to the disappearance of Shri Nanu Mal Bagla. As has been clearly set down by the Apex Court in Sohan Lal's case (supra), both actions would be entitled to use of the family name “Bagla”. Neither of the parties are entitled to injunct the other from transacting business by employing le family name “Bagla”. The partnership firm “Bagla Cosmetics” of which shri Navin Kumar and Pawan Kumar Bagla Sons of jaininder Kumar Bagla and grandson of Nanu Mal Bagla shall be entitled to continue to transact business in the name and style “Bagla Enterprises”. Shri Ganeshi Lal Bagla son of Nanu Mal Bagla and sole proprietor of “Bagla & Co. may continue to transact business in the name and style “Bagla & Co”.

11. There will be no orders as to costs.

12. Application disposed of.