TEMPORARY INJUNCTIONS AND INTERLOCUTORY ORDERS
1. xxx xxx
2. xxx xxx
4. Order for injunction may be discharged, varied or set aside.- Any Order for an injunction may be discharged, or varied, or set aside by the Court, on application made thereto by any party dissatisfied with such order: CS (COMM) 60/2020 Page 20 of 41 Provided that if in an application for temporary injunction or in any affidavit supporting such application, a party has knowingly made a false or misleading statement in relation to a material particular and the injunction was granted without giving notice to the opposite party, the court shall vacate the injunction unless, for reasons to be recorded, it considers that it is not necessary so to do in the interests of justice: Provided further that where an Order for injunction has been passed after giving to a party an opportunity of being heard, the Order shall not be discharged, varied or set aside on the application of that party except where such discharge, variation or setting aside has been necessitated by a change in the circumstances, or unless the court is satisfied that the Order has caused undue hardship to that party.
31. A perusal of the proviso to Order XXXIX Rule 4 CPC reveals that in case a false or misleading statement is made in relation to material particulars, resulting in the grant of injunction, without notice to the opposite party, the Court is mandated to vacate the said injunction unless for reasons to be recorded it considers that it is not necessary so to do in the interest of justice. The said order can also be modified/vacated even if passed after providing opportunity to the other party if the same causes undue hardship to that party. In Sailendra Nath Patra (supra) the Division Bench of the Calcutta High Court held that even dehors the proviso to Order XXXIX Rule 4 CPC brought by the Amendment Act, 1976 the Court had the power to vary, discharge or set aside the order of injunction at the instance of any party to the said suit if the interest of justice so warranted.
32. It is a matter of fact that in the suit, the plaintiff did not plead that Rajesh Kumar Bansal, the sole proprietor of M/s Luxmi Enterprises was a registered proprietor of the trademark SUJATA in respect of a category of CS (COMM) 60/2020 Page 21 of 41 goods, that is, water purifiers, water filters and RO system. The plea taken by the plaintiff is that despite due diligence there was no way that the plaintiff would have come to know that the same Rajesh Bansal who is the registered proprietor of the trademark SUJATA for the three goods as mentioned above is the Director of defendant No.1. The grounds urged in this favour are that the application for registration was filed by Luxmi Enterprises and the address of Bhatinda of the defendant No.1 is also different. A perusal of the trademark registration granted vide application No.2337951 in class-11 in respect of water purifiers, RO systems and water filters noted the proprietors name as Rajesh Bansal trading as Luxmi Enterprises single firm and the proprietors address was Bengali Wali Gali, Near Bus Stand, Bhatinda-15001. The master data with the Registrar of Companies in respect of the defendant No.1 company, which is a public document filed by the defendant No.1 under the name Sujata Home Appliances Pvt. Limited clearly notes Rajesh Kumar Bansal as one of its Directors w.e.f. 1 October, 2019. Admittedly the suit has been filed by the plaintiff after 1 October, 2019. No doubt in the master data the registered address of Sujata Home Appliances Pvt. Limited, that is, defendant No.1 has been mentioned as Rajesh Kumar #12, Kamal Cinema Road, Bhatinda, Bathinda, Pb, 151001 IN, however, the fact that Rajesh Kumar Bansal was one of the directors of defendant No.1 was sufficient for the plaintiff to have carried out further investigation and found out whether it was the same Rajesh Bansal in whose favour registration of the mark 'SUJATA' has been granted, particularly in view of the fact that due to earlier objections and proceedings before the Trade Mark Registry, plaintiff was aware that one CS (COMM) 60/2020 Page 22 of 41 Rajesh Kumar Bansal through Luxmi Enterprises has a registration of mark 'SUJATA' in his favour.
33. Earlier knowledge of the plaintiff that mark 'SUJATA' was registered for water purifiers, water filters and RO systems, in favour of Rajesh Bansal, sole proprietor of Luxmi Enterprises is evident from number of documents. An application in opposition to the registration of the mark 'SUJATA' by the plaintiff in class-11 was filed by M/s Luxmi Enterprises having its registered address at Bengali Wali Gali, Near Bus Stand, Bhatinda and duly signed by Rajesh Bansal. Thus even if the said opposition was abandoned the fact that a registration in favour of Rajesh Bansal as sole proprietor of Luxmi Enterprises with address at Bhatinda exists was sufficient for the plaintiff to have conducted the due diligence as to the constitution of defendant No.1 before filing the present suit as noted above. It is clear that despite having knowledge that one Luxmi Enterprises through its sole proprietor Rajesh Bansal was the proprietor of the trademark SUJATA in respect of water purifiers, RO systems and water filters which was at Bhatinda, the plaintiff did not reveal this fact in the plaint.
34. The plaint was filed on an ostensible complaint of a geyser, however, in the prayer clauses the products sought to be injuncted were the geysers, water purifiers, RO systems and the products juicer, mixer and grinders were noted thereafter despite the fact till date plaintiff has neither manufactured nor sold water filters, water purifiers and RO system, nor did the plaintiff make any claim whatsoever in plaint in respect of its user of the trade mark SUJATA qua water purifiers, RO Systems and water filters, thus there was no need for the plaintiff to seek protection in relation to these goods and that too prior to its products juicer, mixer and grinders. This conduct of the CS (COMM) 60/2020 Page 23 of 41 plaintiffs clearly shows the oblique manner in which the injunction was sought. In case the plaintiff had no knowledge that the defendant No.1 was not dealing in water purifiers, RO systems there was no way that the plaintiff out of the blue after the geysers would have listed the products water purifier, RO systems and only thereafter listed the products which the plaintiff is actually manufacturing and selling in the prayer clause. The plaint is thus a clear case of claver drafting.
35. At this stage it would be relevant to note the prayers in the suit wherein the goods water purifier and RO systems are mentioned in the prayer after Geysers in which the plaintiff was not dealing:-
(i) For a decree of permanent injunction restraining the defendants, their directors, partners, owners, dealers, distributors, agents, stockiest and servants from manufacturing, purchasing, getting it manufactured, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Geysers, Water purifiers, RO Systems, Ionizer, Vegetable Purifier, Juicer, Mixer, Grinder, Heating, Cooling, Ventilating, Steam Generating and Cooling Appliances and other home appliances and accessories thereof under the trade mark Star SUJATA/SUJATA or any other identical and/or deceptively similar mark to the trade mark SUJATA whether using independently or as part of the corporate name, domain name and E-mail address thereby amounting to infringement of the registered trade marks of plaintiff;
(ii) For a decree of permanent injunction restraining the defendants, their directors, partners, owners, dealers, distributors, agents, stockiest and servants from manufacturing, purchasing, getting it manufactured, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Geysers, Water Purifiers, RO Systems, Ionizer, Vegetable Purifier, Juicer, Mixer, Grinder, CS (COMM) 60/2020 Page 24 of 41 Heating, Cooling, Ventilating, Steam Generating and Cooling Appliances and other home appliances and accessories thereof under the trade mark Star SUJATA/SUJATA or any other identical and/or deceptively similar mark to the trade mark SUJATA whether using independently or as part of the corporate name, domain name and E-mail address thereby amounting to passing off of the goods and/or business of the defendant for those of the plaintiff.
36. In the decision reported as 2010 (4) SCC 728 Oswal Fats and Oils Limited vs. Additional Commissioner (Administration), Bareilly Division, Bareilly & Ors. the Supreme dealing with the solemn obligation of the parties to disclose all the facts held: "19. It is quite intriguing and surprising that the lease agreement was not brought to the notice of the Additional Commissioner and the learned Single Judge of the High Court and neither of them was apprised of the fact that the appellant had taken 27.95 acres land on lease from the Government by unequivocally conceding that it had purchased excess land in violation of Section 154(1) of the Act and the same vested in the State Government. In the list of dates and the memo of special leave petition filed in this Court also there is no mention of lease agreement dated 15-10-1994. This shows that the appellant has not approached the Court with clean hands. The withholding of the lease agreement from the Additional Commissioner, the High Court and this Court appears to be a part of the strategy adopted by the appellant to keep the quasi- judicial and judicial forums including this Court in dark about the nature of its possession over the excess land and make them believe that it has been subjected to unfair treatment. If the factum of execution of lease agreement and its contents were disclosed to the Additional Commissioner, he would have definitely incorporated the same in the order dated 30-5-2001. In that event, the High Court or for that reason this Court would have non-suited the appellant at the threshold. However, CS (COMM) 60/2020 Page 25 of 41 by concealing a material fact, the appellant succeeded in persuading the High Court and this Court to entertain adventurous litigation instituted by it and pass interim orders. If either of the Courts had been apprised of the fact that by virtue of lease deed dated 15-10-1994, the appellant has succeeded in securing temporary legitimacy for its possession over excess land, then there would have been no occasion for the High Court or this Court to entertain the writ petition or the special leave petition."
37. In the decision reported as 2013 (2) SCC 398 Kishore Samrite vs. State of Uttar Pradesh & Ors. the Supreme Court in para 29 of the report culled out some of the principles that would govern the obligations of a litigant while approaching the Court for redressal of any grievance and the consequences of abuse of the process of the Court as under:-
1. Courts have, over the centuries, frowned upon litigants who, with intent to deceive and mislead the courts, initiated proceedings without full disclosure of facts and came to the courts with unclean hands. Courts have held that such litigants are neither entitled to be heard on the merits of the case nor are entitled to any relief.
2. The people, who approach the court for relief on an ex parte statement, are under a contract with the court that they would state the whole case fully and fairly to the court and where the litigant has broken such faith, the discretion of the court cannot be exercised in favour of such a litigant.
3. The obligation to approach the court with clean hands is an absolute obligation and has repeatedly been reiterated by this Court.
4. Quests for personal gains have become so intense that those involved in litigation do not hesitate to take shelter of falsehood and misrepresent and suppress facts in the court proceedings. Materialism, opportunism and malicious intent CS (COMM) 60/2020 Page 26 of 41 have overshadowed the old ethos of litigative values for small gains.
5. A litigant who attempts to pollute the stream of justice or who touches the pure fountain of justice with tainted hands is not entitled to any relief, interim or final.
6. The court must ensure that its process is not abused and in order to prevent abuse of process of court, it would be justified even in insisting on furnishing of security and in cases of serious abuse, the court would be duty-bound to impose heavy costs.
7. Wherever a public interest is invoked, the court must examine the petition carefully to ensure that there is genuine public interest involved. The stream of justice should not be allowed to be polluted by unscrupulous litigants.
8. The court, especially the Supreme Court, has to maintain the strictest vigilance over the abuse of process of court and ordinarily meddlesome bystanders should not be granted visa. Many societal pollutants create new problems of unredressed grievances and the court should endure to take cases where the justice of the lis well justifies it.
38. In the decision reported as MANU/DE/1814/2510 Charanjit Thukral & Ors. vs. Deepak Thukral & Ors. this Court following the decision of the Supreme Court reported as 2010 (2) SC 114 Dalip Singh vs. State of U.P. and Ors. held:
18. It is settled principle of law that a person who approaches the Court for grant of relief, equitable or otherwise, is under a solemn obligation to candidly disclose all the material/important facts which has bearing on the adjudication of the issues raised in the case. It is the duty of the party asking for an injunction to bring to the notice of the Court all facts material to the determination of his right to CS (COMM) 60/2020 Page 27 of 41 have injunction and it is not an excuse for him to say that he was not aware of the importance of any facts which he has omitted to bring forward. Where plaintiff does not act bona fidely and does not put every material facts before the Court, the Court is within its inherent power to refuse to grant him injunction, even though there might be facts upon which injunction might be granted. Conduct of the plaintiff is very material in bringing the case and disclosing the facts before the Court. plaintiff is required to make fullest possible disclosure of all material facts within his knowledge to the Court and if he does not make that fullest possible disclosure, he cannot obtain any advantage from the proceedings and is liable to be deprived of any advantage he might have already obtained by means of the order which has thus wrongly been obtained by him by concealment of material facts.
39. It is trite law when a suit is filed by concealment of material fact, the plaintiff is not entitled to the relief of injunction being a discretionary relief. Therefore,by concealing a material fact and adopting a clever drafting, knowing well that Rajesh Kumar Bansal was the proprietor of mark 'SUJATA' for water filters, water purifiers and RO system, the plaintiff sought and was granted ex parte ad interim injunction which is liable to be modified as per the proviso to Order XXXIX Rule 4 CPC on this count itself.
40. One of the objections of learned counsel for the plaintiff challenging the license agreement executed in favour of the defendant No.1 by Rajesh Kumar Bansal, one of its Directors is that the license agreement is not a stamped document and thus cannot be considered under Section 35 of the Indian Stamp Act, 1899.
41. Section 35 of the Stamps Act reads as under: CS (COMM) 60/2020 Page 28 of 41 Section 35. Instruments not duly stamped inadmissible in evidence, etc. -No instrument chargeable with duty shall be admitted in evidence for any purpose by any person having by law or consent of parties authority to receive evidence, or shall be acted upon, registered or authenticated by any such person or by any public officer, unless such instrument is duly stamped: Provided that-- (a) any such instrument [shall] be admitted in evidence on payment of the duty with which the same is chargeable, or, in the case of any instrument insufficiently stamped, of the amount required to make up such duty, together with a penalty of five rupees, or, when ten times the amount of the proper duty or deficient portion thereof exceeds five rupees, of a sum equal to ten times such duty or portion; (b) where any person from whom a stamped receipt could have been demanded, has given an unstamped receipt and such receipt, if stamped, would be admissible in evidence against him, then such receipt shall be admitted in evidence against him on payment of a penalty of one rupee by the person tendering it; (c) where a contract or agreement of any kind is effected by correspondence consisting of two or more letters and any one of the letters bears the proper stamp, the contract or agreement shall be deemed to be duly stamped; (d) nothing herein contained shall prevent the admission of any instrument in evidence in any proceeding in a Criminal Court, other than a proceeding under Chapter XII or Chapter XXXVI of the Code of Criminal Procedure 1898 (V of 1898); (e) nothing herein contained shall prevent the admission of any instrument in any Court when such instrument has been executed by or on behalf of the Government, or where it bears the certificate of the Collector as provided by section 32 or any other provision of this Act.
42. Undoubtedly the license agreement between Rajesh Kumar Bansal and defendant No.1 is not a stamped document, however, as noted in proviso CS (COMM) 60/2020 Page 29 of 41 (a) to Section 35 of the Indian Stamp Act, the non-stamping of an instrument is a curable defect and such instruments shall be admitted in evidence on payment of the duty with which the same is chargeable. Further the Full Bench of the Bombay High Court in Gautam Landscapes Pvt. Ltd. (supra) held that unstamping or insufficient stamping of the document containing the arbitration clause would not affect the grant of an interim relief under Section 9 of the Arbitration and Conciliation Act and the party cannot be put to disadvantage merely because of insufficiency of stamp on the agreement. In the present case also the suit is at the stage of grant of interim relief or the vacation thereof and not at the final stage after parties have led their evidences and duly exhibited admissible documents. Hence this Court finds no merit in the objection of the learned counsel for the plaintiff that the copy of the license agreement filed by Rajesh Kumar Bansal in favour of defendant No.1 cannot be looked into being an unstamped document.
43. Learned counsel for the plaintiff has seriously contested that the registration in favour of the defendant No.1 is invalid and as has also been challenged by the plaintiff under Section 124 of the Trademarks Act, hence the interim injunction granted in favour of the plaintiff is liable to be confirmed and not modified.
44. Section 124 of the Trademarks Act reads as under:
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.-(1) Where in any suit for infringement of a trade mark-- (a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or (b) the defendant raises a defence under clause (e) of sub- section (2) of section 30 and the plaintiff pleads the invalidity CS (COMM) 60/2020 Page 30 of 41 of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit. CS (COMM) 60/2020 Page 31 of 41
45. A perusal of Section 124 of TM Act reveals that only when prior to the filing of the suit, the proceedings of rectification of the register are pending with the Registrar or the Appellate Board that the Court is required to stay the suit pending disposal of the said proceedings. However, in case the validity of the registration of the trademark is challenged after filing of the suit, then only on the Court being satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendants trademark is prima facie tenable, that the said issue can be raised and in that case the proceedings before the Court have to be adjourned for a period of three months.
46. In Patel Field Marshal Agencies (supra) the Supreme Court held that in case where the issue of invalidity is raised or arises independent of a suit, prescribed statutory authority will be the sole authority to deal with the matter however, in a situation where the suit is pending (whether instituted before or after filing of a rectification application) exercise of jurisdiction by prescribed statutory authority is contingent on a finding of Civil Court as regards the prima facie tenability of the plea of invalidity.
47. In the present case, admittedly, the application seeking invalidity of the registration of the mark 'SUJATA' in favour of Rajesh Kumar Bansal has been filed by the plaintiff only after the filing of the suit. The suit having been filed prior to the rectification application filed by the plaintiff qua the defendants registration for the trademark 'SUJATA' for water purifiers, RO system and water filter unless there is a prima facie finding of invalidity of the trademark by this Court, plaintiff can derive no advantage from Section
124 of the Trade Marks Act. CS (COMM) 60/2020 Page 32 of 41
48. Having held that the plaintiff concealed material fact of Rajesh Kumar Bansal's proprietorship of mark 'SUJATA' in respect of water filters, water purifiers and RO Systems from this Court at the time of grant of interim injunction, thus the interim injunction is liable to be modified, this Court is required to examine the other contention of learned Senior counsel for plaintiff that the interest of justice still demands non-modification of the interim order in case the plaintiff makes out a strong prima facie case in its his favour, would suffer an irreparable loss in case the interim injunction is modified and the balance of convenience also lies in favour of the plaintiff as held by this Court in Anil KrishnaTandon (supra)
49. In Dr.Reddys Laboratories Ltd. (Supra) relied upon by learned counsel for the plaintiff, this Court noted that the plaintiff therein was engaged in manufacture and sale of pharmaceutical products for the last over
19 years and was also having overseas operations in marketing the said products under the trademark Dr.Reddys. The registration processes of the trademark Dr.Reddys had started in various countries including in India however, in India by that time it was not registered. Further the defendant therein was not a registered owner of the mark much less in class of goods it was supplying. There was a past relationship between the plaintiff and defendant therein in as much as the defendant had been purchasing the bulk drugs from plaintiff since 1997 and at no stage it was manufacturing or marketing its own pharmaceutical preparations. Thus the activities of the defendant there were in the nature of distributor/agent of the plaintiffs manufactured drugs without changing the packaging or the label. It is in the light of these facts, this Court held that the adoption of the mark by the defendant therein was dishonest. Not only the products of the defendant CS (COMM) 60/2020 Page 33 of 41 therein prominently displayed the trade name Reddy, the packaging of the drug was also similar to that of the plaintiff therein and the drug Omeprazole which the plaintiff was selling under the name OMEZ was being sold by the defendant under the name OMRE with similar design of packaging. This Court also noted that the malafides of the defendant therein were writ large as not only the defendant therein started using a similar trademark/trade name but also started using the Hyderabad address despite the fact that the defendant's registered office was in Delhi and the bills clearly mentioned that the customers were required to make payments at Delhi and disputes between the defendant therein and its customers were subject to jurisdiction of Delhi Courts. It is in light of these facts that this Court held that the adoption of the mark was dishonest and granted the injunction.
50. In Hindustan Pencils Pvt. Ltd. (supra) relied upon by learned counsel for the plaintiffs therein were proprietors of two registered trademarks, that is, the trademark NATRAJ with the device of Natraj claiming user since February, 1961 in class-16 relating to pencils, refills for propelling pens and pencils, pen sharpen, pens, fountain pens, erasers, pin clips and staples etc. and the device of NATRAJ for the same goods. The registration of the two marks was granted on 6 November, 1969 and 27 October, 1970. It was the case of the plaintiff therein that in the year 1985 it got to know that the defendants therein surreptitiously got registered a copyright of the label similar to that of the plaintiff in respect of the pins. The cartons of the defendant therein revealed that the defendants had not only used the registered name of the plaintiffs namely NATRAJ but also the device of the dancing Natraj which was identical to the dancing figure which had been registered in favour of the plaintiff therein. In Hindustan Pencil Pvt. CS (COMM) 60/2020 Page 34 of 41 Ltd. (supra) this Court further noted that where there is an honest, concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages and rendition of accounts but the relief of injunction should not be refused if it is found that the general public may be misled into buying the manufactured goods by the defendant thinking them to be the goods of the plaintiff.
51. In the present case despite the fact that defendant is selling its water filters, water purifiers and RO Systems under the mark 'SUJATA' at least since 2013, there is no material in the plaint that any customer was deceived into buying defendant's product as that of plaintiff except that now the plaintiff relies on the report of the local commissioner to claim confusion. In fact, as per the plaint, it is not the case of the plaintiff that it was even aware of the defendant No.1 manufacturing and selling the water filters, water purifiers and RO systems under the mark 'SUJATA', much less of any consequential confusion in the mind of the customers.
52. In FDC Limited (supra) relief upon by learned counsel for the plaintiff, this Court was dealing with pharmaceutical preparations and the plaintiff was the proprietor of the drugs prefixed with the trademark ZIFI. The defendant therein started using the mark ZIFFI. Though the trade of the defendant therein was of providing business of online appointment booking services in a quick, speedy and efficient manner to the customers intending to avail its services through the website. According to the defendant therein the term ZIFFI was derived from the word Jiffy which means very quick or in a fraction of a second. This Court held whether the two sets of goods or services are of the same description or not has to be decided on the basis of classification of goods and services and the test of similarity of goods is CS (COMM) 60/2020 Page 35 of 41 to be looked at from the business and commercial point of view. The factors relating to goods and services must required to be taken into account included their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Applying the said test it was held that the plaintiff therein was also using the said trademark in his business, website, services etc. thus use of the mark ZIFFI by the defendant would amount to infringement.
53. Thus applying the test laid down in FDC, even if the goods sold by plaintiff and defendant are in the same class but the goods are different inasmuch as the plaintiff sells mixer, grinders etc. and the defendant sells water purifiers, water filters and RO system, the only commonality of goods being geyser, for which the defendant does not seek modification of the interim order.
54. In Malhotra Book Depot (supra) the plaintiff was using the mark MBD for its books whereas the defendant therein was using the mark MBD Electronics though it was not dealing in electronic goods and was only trading in shares. This Court noting the test laid down in Larsen and Toubro Ltd. vs. Lachmi Narain Trades and Ors., 2008 (36) PTC 223 (Del) (DB) noted that the question was of one of the real likelihood of confusion or deception or deception amongst the customers and the resultant damages to the plaintiff. As noted above in the present case plaintiff has not been able to any single instance of confusion qua the products of the plaintiff and defendant except geysers because the goods of the plaintiffs and defendants though home appliances are different products and the plaintiff though having subsequent registration for the same class has not till date manufactured or sold water filters, water purifiers and RO systems. CS (COMM) 60/2020 Page 36 of 41
55. In S.Syed Mohideen (supra) the Supreme Court held that owner of a registered trademark cannot sue for infringement of its registered trademark if the defendant also has a trademark which is registered, however, it has to be drawn in mind whether the trademark of the defendant therein would cause deception in the mind of the public at large and the plaintiff therein on the basis of prior user can make out the goodwill and reputation. It reiterated the principle of law that in the case of trademark, registration merely recognises the rights which are already pre-existing in common law. It was further held that where marks of both the parties are registered, the Court has to recognise the pre-existing right in common law and in case of conflict between the two registered marks, evaluation of the better rights in common law is essential. As noted above, the plaintiff's registration of mark 'SUJATA' for class 11 which include water filters, water purifiers and RO systems is subsequent and it has no common law right in the said mark qua these goods till date as the plaintiff has neither manufactured nor sold these goods till date.
56. In Montari Overseas Ltd., the Court was dealing with adoption of the name of the company by the defendant. In the present case defendant No.1 company was incorporated in the year 2017 and is not dealing with all the home appliances. But by I.A.No.4098/2020, the defendant No.1 is not seeking modification of the ex parte ad interim injunction on this count.
57. In the present case, despite knowing the registration of the mark SUJATA in favour of Rajesh Kumar Bansal through Luxmi Enterprises since the year 2012, the plaintiff herein took no steps and in the garb that the defendant is manufacturing and selling geysers under the name SUJATA has sought injunction qua the goods, that is, water purifiers, water filters and CS (COMM) 60/2020 Page 37 of 41 RO system despite the fact that till date there is no material that the plaintiff despite having received registration has manufactured or sold the water purifiers, water filters and RO systems under the mark 'SUJATA'. It is also not the case of the plaintiff in the plaint that in past seven years there has been any confusion in the mind of any customer qua plaintiff's and defendant's products.
58. Supreme Court in Vishnudas Trading as Vishnudas Kushandas (supra) relied upon by learned counsel for the defendant noting the rights of two registered properties of the same or similar marks and the distinction in various goods falling in the same class held:
47. The Respondent Company got registration of its brand name "Charminar" under the broad classification "manufactured tobacco". So long such registration remains operative, the Respondent Company is entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification "manufactured tobacco". Precisely for the said reason, when the Appellant made application for registration of quiwam and zarda under the same brand name "Charminar", such prayer for registration was not allowed. The Appellant, therefore, made application for rectification of the registration made in favour of the Respondent Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the Respondent Company, namely, cigarettes. In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers from getting registration of CS (COMM) 60/2020 Page 38 of 41 separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other Article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific Article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration Under Section 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that Under Sub-section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression "goods" and "description of goods" appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description. The Trade Marks Act has noted distinction between description of goods forming CS (COMM) 60/2020 Page 39 of 41 a genus and separate and distinctly identifiable goods under the genus in various other Sections e.g. goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act.
48. The "class" mentioned in the Fourth Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of Fourth Schedule of the Rules but within the said class, there are a number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles is intended, by specifically mentioning the names of such articles and by indicating the class under which such Article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other specific products made of "manufactured tobacco" as mentioned in Class 34 of Fourth Schedule of the Rules. In our view, the contention of Mr.Vaidyanathan that in view of change in the language of Section 8 of the Trade Marks Act as compared to Section 5 of the Trade Marks Act, 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and Fourth Schedule of the Rules. (Emphasis Supplied)
59. Following the principle laid down by the Supreme Court in Vishnudas Trading (supra), Supreme Court in Nandhini Deluxe (supra) held that the principle of law laid down by the Supreme Court while interpreting the provisions of Trade and Merchandise Act, 1958 in Vishnudas Trading's case is equally applicable as it is unaffected by the Trade Marks Act, 1999 CS (COMM) 60/2020 Page 40 of 41 inasmuch as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. Supreme Court referring to Section 11 of the Trade Marks Act which prohibits registration of the mark in respect of similar goods or different goods held that the provisions of the Section does not mean the same class of goods. Supreme Court further held that the use of 'NANDHINI' by the appellant therein in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trade mark of the respondent. It was observed that the appellant therein had adopted the trade mark in respect of the items sold in its restaurants way back in the year 1989 which was soon after the respondent had started using the trade mark 'NANDINI' and that there was no document or material produced by the respondent therein to show that by the year 1989 the respondent therein had acquired distinctiveness in respect of this trade mark within four years of the adoption thereof. Therefore, the case was of a concurrent user of the trade mark by the appellant therein.
60. From the facts as noted above, it is evident that even though plaintiff is the prior user of the mark 'SUJATA' but for the goods mixer, grinders, blenders, however, for the goods water filters, water purifiers and RO System, Rajesh Kumar Bansal the licensor and director of defendant No.1 is the prior registered owner of the mark SUJATA and also the prior user, in fact the only user as till date plaintiff has not used the mark 'SUJATA'for water filters, water purifiers and RO system. Though the goods of the plaintiff and defendant may fall in same broad classification of home appliances are different goods used for different purposes. CS (COMM) 60/2020 Page 41 of 41
61. In view of the discussion, the ex parte ad interim injunction dated 7th February, 2020 is liable to be modified for the concealment of material facts by the plaintiff as also on merits. The applications are disposed of granting injunction in favour of plaintiff and against defendants in terms of prayer in para 36 of I.A.No.1751/2020 except for water filters, water purifiers and RO Systems, which the defendants can continue to manufacture and sell under the mark 'SUJATA'. The goods seized by the learned Local Commissioner and on superdari with defendants are also released in their favour. (MUKTA GUPTA) JUDGE SEPTEMBER 09, 2020