Bombay High Court
Munira Virani And Anr vs The Registrar Of Trade Marks And 2 ... on 2 January, 2023
Bench: R. I. Chagla
922-nmcd-516-2017.doc
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
NOTICE OF MOTION NO.516 OF 2017
WITH
NOTICE OF MOTION NO.1841 OF 2018
IN
COM IPR SUIT NO.630 OF 2017
AND
COM MISCELLANEOUS PETITION (L) NO.11130 OF 2022
Abdul Rasul Nurallah Virjee and Jalalluddin ...Plaintiffs
Nurallah Virjee
V/s.
Regal Footwear ...Defendant
Mr. Ravi Kadam, Senior Advocate, Mr. Ashish Kamat, Mr.
Himanshu Kane, Mr. Rohan Kadam, Mr. Ashutosh Kane, Mr.
Nikhil Sharma & Ms. Maitri Asher i/b. W. S. Kane and Co.
for the Applicants / Plaintiffs.
Dr. Birendra Saraf, Senior Advocate, Mr. Rohan Sawant, Ms.
Deepakar Livingston, Mr. Akshay Naik, Mr. Shantanu
Kanade, Mr. R.P. Shirole and Ms. Vilasini Balasubramanian i/
b. Vishal Hegde for Defendant.
Mr. Sandeep R. with Ms. Kanan Soni i/b. Rivina Rajpal for
Petitioners in COMMP(L) No.11130 of 2022.
CORAM: R.I. CHAGLA, J.
JUDGMENT RESERVED ON 30TH AUGUST, 2022.
JUDGMENT PRONOUNCED ON 2ND JANUARY, 2023.
J U D G M E N T (Per R.I. Chagla, J.).
1. By this Notice of Motion, the Plaintiffs have sought
relief against the Defendant restraining the Defendant from
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infringing and passing off the Plaintiff's registered trade mark
"REGAL" by using impugned trade mark "REGAL" / "REGAL
FOOTWEAR" upon and in relation to identical goods / services /
footwear retail.
2. The Plaintiffs are the registered proprietor of the mark
"REGAL" under the Trade Marks Act, 1999 having Registration
No.284961 in Class 25 for footwear and Class 42 under
Registration No.1278782 for "retailing of footwear, articles made
of leather or imitation of leather, travelling bags, belts, socks, shoe
polish, shoe brush, accessories of aforesaid goods, running shops /
stores for sale of aforesaid goods".
3. A brief background of facts is necessary.
4. It is the Plaintiffs case that since 1954 they and their
predecessor i.e. partners / proprietors of M/s. Regal Footwear have
been carrying out business as manufacture, distributor, trader and
exporter of footwear. The business is under the name and mark
REGAL / REGAL FOOTWEAR / REGAL SHOES. The Plaintiffs and
their permitted users which are M/s. Regal Shoes and Regal Shoes
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(India) Pvt. Ltd. have retail outlets in Maharashtra, Gujarat,
Punjab, Rajasthan, Tamil Nadu, Chandigarh, Hyderabad, Chennai
and have been exporting footwear to United States of America,
Italy, West Indies, Kenya, Sudan, Canada, UAE, Singapore, Uganda,
Switzerland, Fiji Islands and other countries. The Plaintiffs have
claimed that they have a total sale of Rs.4,25,54,18,433 from 1954
to 2017 and have expended amount of Rs.7,88,83,111/- towards
the advertisement expenses. The Plaintiffs had relied upon
documents showing number of sales, invoices sales bills and
income tax assessment orders which are at Exhibit B1 to B48 /
Pages 30 to 188 of the Plaint. The advertisements and sales
promotional materials are at Exhibit C1 to C18 / Pages 189 to 206
of the Plaint.
5. The Plaintiffs have relied upon various advertisements
which are from 30th August, 1955 to 31st December, 1978
showing the Plaintiffs' trading name and mark "REGAL".
6. On 5th April, 1961 one Habib Dharmashi Shivani
(H.D. Shivani) sole proprietor of Defendant entered into leave and
license agreement with one Mr. Shamshuddin Ismail in respect of
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Defendant's Regal footwear located at 26, M.G. Road, Pune. The
leave and license agreement is on record at Exhibit 1 of Written
Statement.
7. The Defendant claims to have adopted the trade mark
name / trade mark "Regal Footwear" / "Regal" on 21st April, 1963
and have been continuously using the same. The Defendant's store
is located at 26, M.G. Road, Pune since 1963. The Defendant has
claimed that the current business / store of Defendant was
established initially as a sole proprietorship concern in the year
1963 under the trade mark name Regal / Regal Footwear by H.D.
Shivani.
8. On 25th July, 1963, the Defendant claims to have
obtained license under the Bombay Shops and Establishment Act,
1948 and the same was subsequently renewed until 2016.
9. The Plaintiffs' predecessor made an application on
27th December, 1972 for registration of trade mark "REGAL" in
respect of the footwear included in Class 25 and secured
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Registration No.284961 with user claim from 1954. This is at
Exhibit E-1 and Exhibit E-2 of the Plaint.
10. The Defendant has claimed to have paid
property tax to Pune Cantonment Board in respect to the premises
occupied by the Defendant Regal Footwear on 26, M.G. Road, Pune
from 1973 to 1984.
11. The Defendant has claimed that Mr. Ismail,
brother-in-law of Karim Virjee, founding partner of Plaintiffs' firm,
purchased a property being Shop No.39 in Wonderland Society on
14th September, 1984. It is claimed that the said shop was 300
mtrs. from the Defendant's store and the Plaintiffs conducted their
business from 1984 to 1990.
12. The Defendant has relied upon photographs
which they claim to have taken in 1988 with Defendant's partners
and their relatives inside Defendant's Regal Footwear store at 26,
M.G. Road, Pune.
13. On 5th May, 1994, a Deed of Partnership came
to be executed between Mr. H.D. Shivani, Ms. Munira Virani and
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Mr. Akabar Jafar Virani and the sole proprietorship was converted
into a registered partnership firm by the name of 'Regal Footwear'
and entered into Registrar of Firms on 26th December, 1994.
14. On 23rd December, 1999, a fire broke out at the
Defendant's store at 26, M.G. Road, Pune and the entire building
including the Defendant's store was affected due to fire and all the
goods and stock were burned.
15. The Defendant has claimed that in the year
2004, the Plaintiffs opened a store in M.G. Road, Pune diagonally
opposite the Defendant's store and therefore had knowledge of
Defendant's existence.
16. The Plaintiffs made an application on 15th
April, 2004 for registration of trade mark 'REGAL' under Class 42 in
respect of business of sale of footwear, articles made with leather
and secured registration having no.1278782 with user claim from
1954. This is annexed at Exhibit E-3 of the Plaint.
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17. The Plaintiffs and / or their permitted users
have also been extensively using and continue to use the domain
name regalshoes.co.in.
18. On 20th February, 2006, the Defendant filed
trade mark application No.1422577 for word mark 'REGAL' under
Class 35 in relation to retail services claiming user since 25th July,
1963.
19. The Plaintiffs in February, 2008 came across the
advertisements of Defendant's Application No.1422577 in Class 35
for registration of the trade mark 'Regal' in respect of the retailing
services for selling, branding footwear published in the trade mark
journal No.1372 dated 16th July, 2007 (which was made available
to the public on 18th October, 2007). The Plaintiffs have filed
Notice of opposition on 14th February, 2008 to the Defendant's
application under the provisions of Section 21(1) of trade mark
Act, 1999.
20. The Defendant has filed its counter statement
dated 20th October, 2008 under Section 21(2) of trade mark act
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and contended that it has adopted the trade mark on 21st April,
1963 and has used the same in respect of retailing services.
21. In the year 2017, Defendant proposed opening
another outlet at Seasons Mall under the mark REGAL and
Plaintiffs had also come to learn that Defendant had started selling
footwear bearing the trade mark 'REGAL'.
22. The Plaintiff has filed the present Suit with
Notice of Motion (L) No.443 of 2017 and by order dated 24th July,
2017, this Court directed the Defendant to file a Reply within two
weeks and thereafter list the Notice of Motion for hearing on 7th
September, 2017.
23. This Court in Commercial Appeal (L) No.54 of
2017 challenging the order dated 24th July, 2017 had not granted
ad-interim relief as the Notice of Motion was kept on 1st week of
September, 2017 by recording the statement of the Defendant that
the Defendant will not claim any equities on the basis of starting a
new shop and dismissed the Appeal.
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24. On 28th July, 2017, the Defendant opened a
new shop at Seasons Mall under the trade mark name / trading
style 'REGAL'.
25. From 11th September, 2017 till 3rd November,
2017 correspondence was exchanged between the Advocates of the
Plaintiff with the Advocates for the Defendant in respect of the
inspection of documents annexed to the Affidavit in Reply of the
Defendant in Notice of Motion No.516 of 2017 as well as
inspection of documents annexed to the Plaint.
26. On 16th December, 2017, the Defendant
renewed its shop and establishment license under the Bombay
Shop and Establishment Act.
27. On 25th July, 2018, a leave and license
agreement was entered into between the Approach Properties Pvt.
Ltd. and Defendant for the premises bearing No.10 on ground floor
at Premier Plaza Mall, Pimpri, Chinchwad, Pune for a period of five
years for a third shop. An email dated 27th August, 2018 recording
that the Defendant had taken a shop on ground floor, Premier
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Plaza Mall, Pimpri to run the store in the name of Regal footwear
on leave and license basis for a term of five years.
28. This Court by an order dated 4th September,
2018 passed in Notice of Motion No.1841 of 2018 directed that the
Defendant may open a new shop (third shop) without claiming any
equities and in the event the Defendant is desirous for opening any
new shop, they shall give four weeks advance notice to the
Plaintiff.
29. On 2nd March, 2019 and 4th March, 2019, one
Swati Jagtap, consumer complained vide a contact form available
on Plaintiff's official website, www.regalshoes.in complaining
about the quality of product. The Plaintiffs upon learning of the
complaint realized that the product was purchased from
Defendant's shop and not from any of Plaintiffs' shops. Similar
complaint was made by consumer Mrs. Prabha Davadge posting a
complaint vide a contact form available on Plaintiff's official
website.
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30. An order dated 11th February, 2020 was passed
by the Deputy Registrar of trade mark on application No.1422577
in Class 35 in the name of Defendant and opposition no.BOM-
719652 filed by the Plaintiffs, whereby the Registrar held the
Plaintiffs to be a prior adopter / user of mark Regal and that the
Defendant could not establish beyond doubt its earliest adoption
and uninterrupted use of the mark. The opposition No.BOM-
719652 was allowed and Defendant's application No.1422577 was
refused registration.
31. On 10th February, 2022, a letter was addressed
by the Advocate for Defendant to the Advocate of the Plaintiff
informing that the Plaintiff intended to open a new shop in
Phoenix Market at Pune.
32. The present Notice of Motion was thereafter
listed for final hearing and has been heard.
33. Mr. Ravi Kadam, the learned Senior Counsel
appearing for the Plaintiffs has submitted that the Plaintiffs are the
registered Proprietors of two "REGAL" trade marks, one with user
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claimed from 1954 under Registration No.284961 (w.e.f. 27th
December, 1972) in Class 25 for footwear. The mark was also
advertised in the trade mark Journal with user claimed from 1954.
The Plaintiffs are also registered proprietors of the trade mark
"REGAL" under registration No.1278782 (obtained on 15th April,
2004) in Class 42 for retailing of footwear as well as other articles
with user claim from 1954.
34. Mr. Kadam has submitted that it is not disputed
that the Defendant is using an identical trade mark as that of the
Plaintiffs upon and in relation to identical goods / services. The
Plaintiffs registrations are not in dispute in these proceedings. The
Defendant has not even challenged these registrations through
substantive rectification proceedings till date. The Plaintiffs
entitlement to an injunction for trade mark infringement can only
be resisted by the establishment of statutory defences under the
Trade Marks Act and / or the equitable defence of acquiescence
against the grant of an injunction. This, particularly considering
that there is presumption that the use of the identical trade mark
"REGAL" by the Defendant in relation to identical goods / services
as that of the Plaintiffs is likely to cause confusion on the part of
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the public. The defence taken by the Defendant of prior continuous
user under Section 34 and which defence is hopelessly
misconceived and without merit. Mr. Kadam has submitted that
honest and concurrent use is not a defence to an infringement
action. The Trade Marks Act, 1999 does not contemplate it as a
defence. In any event the Defendant has failed to establish honesty
and / or concurrent continuous use. The Defendant's case of
acquiescence blithely ignores the basic requirements for sustaining
the said plea. The Defendant has attempted to equate delay in
bring the Suit and knowledge of infringement with acquiescence, a
contention urged by other litigants and rightfully repelled by this
Court on number of occasions.
35. Mr. Kadam has dealt with the aforementioned
defence raised. He has referred to Section 34 of the trade mark Act
and submits that for a Defendant to take the benefit of Section 34,
he must establish continuous use of the rival mark prior to (i) the
date of registration of the suit mark or (ii) the date of first user of
the Plaintiffs' suit mark, whichever is earlier. If the Plaintiffs using
of the Plaintiffs' trade mark as in the present case is prior to date of
obtaining registration, then the burden is upon the Defendant to
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show user even prior to the Plaintiff's user. He has placed reliance
upon decisions of this Court in Kamat Hotels (India) Ltd. V. Royal
Orchid Hotels 1 paragraphs 26 and 27 in this context. Mr. Kadam
has submitted that in the present case it is the Defendant's claim
that they have been user from 1963 of their trade mark "REGAL".
Whereas the Plaintiffs trade mark registration relates back to a
user date of 1954. These registrations have not been challenged.
36. Mr. Kadam submits that the Plaintiffs in any
event have successfully demonstrated user from 1954 by producing
cogent, clear and unimpeachable documentary evidence. Reliance
has been placed on the advertisements published as far back as
1955 in the Times of India, advertising the Plaintiffs user of the
trade mark "REGAL". Further reliance has been placed on the
Income Tax Assessment order dated 23rd July, 1958 for the AY
1956-57 and varied IT Assessment Orders from 1955 upto 1998.
The Plaintiffs have also permitted M/s. Regal Footwear, M/s. Regal
Shoes and M/s. Regal Shoes (India) Pvt. Ltd to use "REGAL". Their
combined certified sales and advertisement expenses as on the
date of the suit are tabulated at Exhibit A to the Plaint. Sales
1 2011 BOM CR 416.
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figures of certain years have not been tabulated since the same was
not readily available with the Plaintiffs as has been pleaded at
paragraph 3 of the Plaint. Further, reliance is placed on the
invoices at pages 178 to 188 of the Plaint and pages 297 to 355 of
the Rejoinder. The Plaintiffs and their permitted users maintain a
website at www.regalshoes.co.in.
37. Mr. Kadam has submitted that the
aforementioned material clearly substantiates the Plaintiffs open,
extensive, uninterrupted and continuous use of the trade mark
REGAL and the long-standing goodwill and reputation that has
accrued in the same, since 1954. Mr. Kadam has submitted that the
Defendant has challenged the statement of sales on the ground
that sales figures for certain years are blank and that an inference
should be drawn that no business had been conducted in those
years. The Defendant has also disputed the evidentiary value of
some Assessment Orders by alleging that they were unsigned and
that no inspection of the originals was given. However, the
Defendant has been unable to challenge material that ex-facie
demonstrates the Plaintiffs' open, exclusive and continuous user of
their trade mark REGAL from 1954. Mr. Kadam has referred to the
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nearly 23 newspaper advertisements / articles from 1955 all the
way upto 2017. Further, the material that evidences the Plaintiffs'
conduct of running a footwear / footwear retail business under
REGAL by way of invoices, letters, certificates of inspection for
export, third party invoices from 1974 to 2005 and further signed
Assessment Orders from 1956 to 1998.
38. Mr. Kadam has submitted that even if the Court
was to ignore the sales certificate and some unsigned assessment
orders, there is still sufficient material that demonstrates the
Plaintiffs prior, open, uninterrupted and continuous user since
1954. He has submitted that the material on record demonstrates
the subsistence and continuance by the Plaintiffs of a long standing
established footwear / footwear retail business under the trade
mark "REGAL" since 1954 i.e. much prior to the alleged adoption
and use of the trade mark REGAL by the Defendant. Mr. Kadam
has relied upon decision of this Court in Consolidated Foods
Corporation Vs. Brandon and Co.2, page 612 and paragraph 13 and
decision of the Supreme Court in Satyam Infoway Vs. Siffynet
Solutions Pvt. Ltd.3 in support of his contention that priority in
2 1961 (66) BOM L.R.
3 2004 6 SCC 145.
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adoption entails superiority in title. The Plaintiffs hold superior
title to "REGAL" over the Defendant.
39. Mr. Kadam has submitted that it is well settled
that where the Defendant sets up a defence under Section 34, the
consequence of allowing it is to dilute the protection afforded to a
proprietor of a registered trade mark. This has been held by this
Court in Kamat Hotels (Supra) . The Defendant must establish that
in relation to goods, there is a course of continuous trading leading
to the generation of goodwill connecting the trader and his goods
in the course of trade with the trade mark in question to fall within
the provision of Section 34 of the Trade Marks Act. The Defendant
must establish through production of cogent and unimpeachable
proof of continuous use of the mark and for which the volume of
sales and promotional expenditure assumes significance.
40. Mr. Kadam has referred to Section 2(2) (c) of
the Trade Marks Act, 1999 namely definition of 'use of mark' viz.
"in relation to goods, shall be construed as a reference to the use of
the mark upon, or in any physical or in any other relation
whatsoever to such goods". This definition applies also in relation
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to services. He has submitted that for the Defendant to prove use
of the impugned trade mark REGAL, with respect to footwear,
ought to have produced material referencing the use of REGAL
upon or in any physical or in any other relation whatsoever, to
footwear. He has relied upon the decision in the case of Arun Mills
Ltd. Vs. Marda Textiles Corp. and Anr. 4 and in particular,
paragraphs 9,12,20 to 24 which holds that user must be proved by
way of sales invoices, inquiries, orders, publicity materials. He has
further relied upon the decision of this Court in Munshi Bidi Works
V. Puranmal Tiwadi5 which holds that sales could be proved by
producing the books of accounts and / or assessment orders.
41. Mr. Kadam has submitted that the Defendant
whilst baldly claiming user from 1963 has failed to produce
invoices and / or sales enquiries. Further, no publicity materials
such as advertisements / brochures and / or pamphlets have been
produced between 1963 and 2010. Only one advertisement of
2010 has been produced.
4 MISC. PETITION NO.13 OF 1991.
5 MISC. PETITION NO.1521 OF 1976.
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42. Mr. Kadam has submitted that the Defendant
has only sought to rely upon a Leave and License Agreement
executed in 1963 and Shop License issued in 1963. Further,
subsequent Bills and Receipts issued by the landlord to Mr. Shivani
from 1976 to 1998 and some scattered tax receipts (which do not
indicate in respect of which kind of business, tax was paid for)
have been relied upon. The Defendant has placed reliance upon
Fire Register Report of 1999 and news report of the fire, letter sent
by Defendant to the Insurance Company and Memo raised by
Shroff & Co. for the years 2000 to 2004. The Defendant has relied
upon sales figures for the years 2005 to 2017. Deed of Partnership
of 2007, Shops and Establishment License of 2017.
43. The material produced ex-facie do not prove
use let alone continuous use of the Trade Mark REGAL. Mr. Kadam
has submitted that there is complete lack of relevant material on
the Defendant's part. The leave and license agreement relied upon
by the Defendant is only proof of a premises being taken on rent.
Further, a shop license is a requirement under the Bombay Shops
and Establishments Act, 1948 which as per its long form title, is a
legislation to consolidate and amend the law relating to the
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regulation of conditions of work of employees in shops, etc. It does
not necessarily establish that there was a running business of
footwear under REGAL. Such a certificate is not a proof for
ownership/ possession/ right to property of the premises. The sales
tax consultant Shroff's certificate relied upon by the Defendant
does not certify that the sale tax matters between 1969-2015 were
with respect to the sale / retail of footwear under the impugned
trade mark REGAL. Further, the sale tax challans produced from
1993 - 1997 do not indicate as to whether the sales tax was levied
and paid with respect to the sale of footwear under the trade mark
REGAL. Further, the income tax assessment acknowledgments only
evidence payment of tax and not that they were paid in respect of
the business of footwear. The Defendant has asserted that the law
does not require it to retain copies of income tax orders and / or
sales tax orders for a period greater than ten years misses the
wood for the trees. In the event, if the Defendant's contention is
accepted anyone, by relying upon the said provision, would be able
to claim prior and continuous use of a subsequently (dishonestly)
adopted trade mark.
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44. Mr. Kadam has submitted that the Defendant
has sought to blame the complete absence of materials from 1963
till 1999 on a fire that took place in 1999. However, the Defendant
has not produced a single invoice from 1999 onwards and / or
statement of sales between 2000 and 2005 inspite of the
Defendant's case that its business continued to run even
immediately after the fire.
45. Mr. Kadam has submitted that the Defendant's
case that a fire had destroyed documents is wholly unbelievable
and belied by Defendant's own documents. Mr. Kadam has in that
context referred to the Fire Register Report produced by the
Defendant wherein there is no finding that the first floor residence
of Mr. Shivani, the predecessor of the Defendant, was destroyed by
fire. The documents were allegedly stored at the first floor
residence. Further, the Report exhaustively describes the articles
damaged in the respective stores namely, Regal Footwear, Kandy
Dress and Carona Footwear. Further, there is no mention of the
documents being destroyed. The Defendant has during the oral
arguments misconstrued the words "different companies boots" in
the Report and has erroneously suggested that it reads as "different
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companies books". This suggestion belies logic since it is not the
Defendant's case that it is part of a Group of Companies that
maintained their records at the store and/or residence. Further, the
Police Panchnama only speaks of damage to shoes of different
companies and does not even speak of damage to documents and/
or records. He has accordingly submitted that the claim of fire
destroying the Defendant's documentary records is wholly suspect
and unworthy of belief. If the Defendants' case was believed, this
does not explain how the Defendant has produced certain other
documents prior to year 1999.
46. Mr. Kadam has accordingly submitted that there
is no material for the Court to arrive at prima facie case that the
Defendant has used the trade mark REGAL since 1963 much less
openly, extensively, and continuously.
47. Mr. Kadam has submitted that the Defendant's
plea of honest concurrent use is also misconceived. Mr. Kadam has
submitted that this plea must fail in limine since 'honest concurrent
user' is not a defence recognized under the Trade Marks Act. He
has submitted that trade mark Act, 1999 addresses "honest and
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concurrent use" only in a limited context as a defined special
enabling circumstance under Section 12 that permits the Registrar
of Trade Marks to register a trade mark which is identical/similar
to an existing registered trade mark and for identical/similar
goods. A statutory prescription limited to enable the Registry to
register a trade mark in special cases cannot be enlarged to the
Defendant's case of infringement. He has submitted that had the
Parliament intended it as a defence, it would have expressly
provided for the same such as when it specifically prescribed a
savings and safe harbor for prior users under Section 34. There is
no answer from the Defendant to the submission that the
Legislature, whilst expressly preserving the rights of prior using
under Section 34, did not provide for honest concurrent use, as a
defence to infringement in the same breath. It has been held by the
Delhi High Court that whilst reviewing the statutory provisions of
the Trade Marks Act arrived at the conclusion that 'honest
concurrent use' is not a statutory defence. This has been held in
KEI Industries Ltd v Raman Kwatra & Anr.6. Further, in Hindustan
Pencils Private Ltd. v. India Stationary Products,7 the Delhi High
6 Del HC CS (COMM) 9/2021.
7 AIR 1990 Del 19
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Court held that honest concurrent use is not a shield against the
grant of an injunction. Honest concurrent use may defeat a claim
of damages, but the relief of injunction should not be refused. This
view has been approved of by the Division Bench of this Court in
Cadila Pharmaceuticals Ltd v/s Sami Khatib of Mumbai & Anr 8
(paras 23A and 23B). The Hindustan Pencils' principle was also
followed by this Court in Winthrop Products Inc v Eupharma
Laboratories9 [Paras 17-19,] and Kirloskar Diesel Recon Pvt. Ltd v
Kirloskar Proprietary Ltd & Ors.10.
48. Mr. Kadam has submitted that assuming while
denying that such a defence is available against trade mark
infringement, it nevertheless must fail for the reason that honest
adoption is a pre-requisite for establishing honest concurrent use.
He has in this context relied upon the decision of the Calcutta High
Court in Bengal Immunity Co v. Denver Chemical Manufacturing
8 2011 (47) PTC 69 (Bom) (DB)
9 1998(18) PTC 213
10 1997 17 PTC 469 at 454.
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Co & Ors11 paras 19 and Munshibhai Bidi Works v. Puranmal
Tiwadi & Sons & Anr12, Pg.9-10 in this context.
49. Mr. Kadam has submitted that none of the
pleadings which includes Affidavits and Written Statement filed by
the Defendant in these proceedings did the Defendant ever explain
and / or produce materials that supplied its reasons for adopting
the trade mark REGAL for retailing / manufacturing footwear. It
was only in March 2022 that the Defendant filed Affidavit in Sur-
Rejoinder which purports to explain the circumstances in which
REGAL was adopted by the Defendant as a mark. The Defendant
has pleaded a case that the Defendant's predecessor Shivani was
desirous of adopting the mark ROYAL for footwear but on account
of there being an existing ROYAL Shoes shop on M.G. Road in
Pune, Shivani searched for synonyms of ROYAL and ultimately
ended up adopting REGAL. The Defendant has produced materials
evidencing the existence of existence of ROYAL Shoes.
11 AIR 1959 Cal 636
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50. Mr. Kadam has submitted that the Defendant's
claim of honest and concurrent adoption is unworthy of belief
since it relates to events that took place in 1963. The Deponent of
the Sur Rejoinder which explains the circumstances in which
REGAL was adopted is 39 years old and born in or around 1983. It
is inconceivable that he would have personal knowledge of this
claim. He has submitted that there is no documentary material
been adduced to substantiate this plea. It is mere hearsay and
cannot be believed. The case for adoption is thus an afterthought
and a deliberate gambit to avoid an injunction now that the
Notices of Motion has been finally heard. Further, the case of Mr.
Shivani being inspired by 'ROYAL' is contradicted by the
Defendant's own document, namely a photocopy of a purported
Leave and License Agreement dated 8 th April 1963 between
Shivani and one S. Ismail which suggested that Ismail had licensed
the use of a pre-existing REGAL Footwear to Shivani.
51. Mr. Kadam has submitted that the absence of a
plausible explanation by the Defendant for adopting REGAL must
be assessed in the context of the fact that the Plaintiff's REGAL
shop was on Mumbai's premier shopping address (Colaba
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causeway). The advertisements relied upon by the Plaintiffs which
are on record give reference of the Plaintiffs' "REGAL FOOTWEAR"
store as a landmark. Further, Mumbai and Pune are satellite cities
whereby thousands of people commute daily by train. The
Defendant's predecessor was allegedly in the same trade. The
Defendant and its predecessor belong to the same religious
community as that of the Plaintiffs, which is considered as a close
knit community. The advertisements relied upon by the Plaintiffs
wherein they advertised REGAL since 1955 were in Mumbai
edition of the Times of India, a national newspaper of record. The
Times of India, Mumbai edition at the relevant time had circulation
in Pune. Mr. Shivani is the only one who could give, confirm or
deny his knowledge of Plaintiffs' store at the relevant time, has not
filed any affidavit stating he was unaware of the Plaintiffs' "REGAL"
store at the time of adopting the trade mark "REGAL".
52. Mr. Kadam has accordingly submitted that it is
impossible to suggest that the Defendant's predecessors were
unaware of the Plaintiffs. He has relied upon the decision of this
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Court in Gorbatschow Vodka KG v John Distilleries Ltd.13, [Para
18] in that context.
53. Mr. Kadam has submitted that the Defendant is
not even commercially honest. The Defendant was aware that in
2008, the Plaintiffs had opposed its trade mark application of
REGAL. At that time the Defendant was well aware that the
Plaintiffs were the registered proprietor of the trade mark REGAL.
Inspite of this, in 2017 around the time the Plaintiffs filed the
present Suit, the Defendant, far from distancing itself from the
Plaintiffs, was using the same font and lettering as that used by the
Plaintiffs for their REGAL trade mark, along with the ® symbol as
if to suggest that the Defendant was a registered proprietor. There
was no conceivable reason for the Defendant to adopt the
Plaintiffs' lettering and font style and for it to represent itself as a
registered proprietor when it was admittedly not one. Further, the
brazenness and dishonesty are corroborated by the Defendant's
conduct even post filing of the Suit. The Defendant opened its
third shop right next to the Plaintiffs' shop in Pimpri, Pune. Its
proposed fourth shop is also in the same mall as that of the
13 2011 (47) PTC 100 (BOM).
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Plaintiffs. Far from the Defendant distancing itself from the
Plaintiffs, it has strained every nerve to imitate them. The
Defendant has even failed to establish concurrent continuous use
apart from failure to establish honesty.
54. Mr. Kadam has thereafter made submissions on
there being no case of acquiescence made out for resisting an
injunction for trade mark infringement. He has submitted that the
Defendant's pleaded case of acquiescence rests on claim that
knowledge of the Defendant coupled with tardiness of coming to
Court amounts to the Plaintiffs acquiescing in the Defendant's use
of the mark. The Defendant's case is that the Plaintiff at two
occasions i.e. 1985 and 2004 despite having a REGAL shop
opposite to the Defendant's shop did not object to the Defendant's
conduct of business. Mr. Kadam has submitted that it is the case of
the Defendant that, one Ismail Sahebudin Mulji the brother-in-law
of a former partner of the Plaintiffs viz. Mr. Karim Virjee had
opened the shop in around 1985 near the Defendant's shop. He has
submitted that there is no substance in this case in view of the said
Mr. Karim Virjee having retired from the Plaintiffs' partnership firm
as far back as 1976 relinquishing all his rights in the trade mark
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REGAL. Further, the Plaintiff was not aware of any such shop being
opened and had not permitted the same. There is no material
produced by the Defendant as to their contention that there was
legal correspondence exchanged between the parties with regard
to an alleged cease and desist notice issued by the Plaintiffs. The
Defendant has infact pleaded a completely different version of
events in the trade mark registration proceedings where they have
taken a plea that after exchange of the alleged correspondence, the
parties settled their disputes. In the present proceedings, the
Defendant had alleged acquiescence on a case that the Plaintiffs
issued alleged cease and desist notice but thereafter did not
prosecute their remedy. On the contrary such a case of the
Defendant would only go to show that the Defendant was aware
that someone else is the proprietor of trade mark REGAL. If despite
notice of the Plaintiffs' rights, the Defendant continued to use
REGAL, it did so at its own peril. Reliance has been placed on the
case of Schering Corp v Kilitch Co.14.
55. Mr. Kadam has submitted that the Defendant's
case of acquiescence is contrary to the decision of the Supreme
14 1994 IPLR 1
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Court in Power Control Appliances v Sumeet Machines Power15
paras 26-28 which has laid down the requirement for establishing
acquiescence. In Power Controls (Supra), the Supreme Court held
that, there must be honest adoption by a junior user and the
person who alleges acquiescence should have been acting in
ignorance of title of the other man and that other man should have
known that ignorance and not mentioned his own title. The
superior title holder must positively encourage use by the junior
user. There must be a commission of positive acts. Acquiescence
must be of such degree as to lead to the inference of a license
sufficient to create a new right in the Defendant. Thus,
acquiescence is different from a mere negligence.
56. Mr. Kadam has submitted that the record
overwhelmingly demonstrates that the Defendant's adoption is
dishonest. No plausible explanation has been given for adoption.
Therefore, the Defendant fails at the first threshold of honest
adoption which is an essential ingredient for acquiescence as laid
down in the decision of the Supreme Court in Power Controls
(Supra) for establishing acquiescence. The Defendant has further
15 1994 2 SCC 448
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failed to show that he is acting in the ignorance of the Plaintiff's
title. The facts and circumstances unequivocally indicate that the
Defendant was all throughout aware of the Plaintiffs' title over the
trade mark "REGAL". Further, mere inaction and / or laying by is
not a positive act. On the contrary, the Defendant has been unable
to cite a single positive act by the Plaintiffs encouraging its
business. The Defendant at the highest has established the
Plaintiffs' knowledge of the Defendant's mark in 2006 and nothing
else. By filing notice of opposition against the Defendant's
application for registration of the trade mark 'REGAL' constitutes a
'negative act' on the part of the Plaintiff, whereby the Plaintiffs not
only specifically apprised the Defendant their statutory and
common law rights in the trade mark 'REGAL' but also put the
Defendant to notice as to their objection of the Defendant's
impugned trade mark REGAL.
57. Mr. Kadam has relied upon the decision of the
Division Bench of this Court in Torrent Pharmaceuticals v/s
Wockhardt Pharma16, in support of his contention that tardiness
and knowledge of the Defendant is not a positive
16 Comm Appeal No.125 of 2017 in NMS(L) No.35 of 2017 in Comm Suit (L) No.32
of 2017 dated 17th November, 2017.
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act. He has further relied upon the decision in Aristo Pharma v.
Shalina Labs17 in support of his contention that opposition of an
application for trade mark registration militates against
acquiescence. The Plaintiffs have since succeeded in having the
Defendant's application rejected.
58. Mr. Kadam has submitted that the decisions
relied upon by the Defendant namely Essel Propack v Essel
Kitchenware Ltd.18 and Unichem Laboratories Limited v Eris
Lifesciences Pvt. Ltd.19 is misconceived since the entire line of cases
have effectively been reversed by the ratio decidendi of the
decision of the Division Bench of this Court in Torrent
Pharmaceuticals Limited (supra). Mr. Kadam has submitted that
the decision of the Single Bench in Torrent Pharmaceuticals Ltd.
Vs. Wockhardt Pharma Ltd.20 which had returned a finding of
acquiescence by stating that the Plaintiff and its predecessors stood
by and allowed the Defendant's sale to increase and holding that
18 2016 SCC Online Bom 937.
19 Judgment dated 07.08.2014 in Notice of Motion (L) No.1852 of 2014.
20 2017 SCC OnLine Bom 318.
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tardiness and knowledge of the Defendant as argued in the present
case constitutes acquiescence was reversed by the Division Bench
of this Court in Appeal. The Division Bench of this Court held that
'mere tardiness and knowledge did not mean acquiescence'. The
Division Bench of this Court in Torrent Pharmaceuticals (Supra)
held that acquiescence must be evidenced by positive acts and
supported by weighty materials to that effect. The Division Bench's
Judgment in Torrent Pharma (Supra) has been upheld by a
reasoned Order by the Hon'ble Supreme Court in Wockhardt
Limited v Torrent Pharmaceuticals Limited21.
59. Mr. Kadam has submitted that weighty
materials is all the more necessary since acquiescence entails an
equitable defeasement of a statutory right conferred upon a party.
Mr. Kadam has submitted that the Plaintiffs knowledge and mere
delay in coming to the Court is not a positive act that evidences
acquiescence. This is more so since during this time, the parties
were contesting the opposition proceedings before the Trade Marks
Registry. He has submitted that the Division Bench of the Delhi
High Court in Mex Switchgears Pvt. Ltd. V Omex Cables Industries
21 (2018) 18 SCC 346.
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& Anr.22, has held that the judgment of the Single Judge failed to
consider the prior decision rendered in Hindustan Pencils (Supra)
and the Supreme Court's decision in Midas Hygiene v Sudhir
Bhatia23. It is now well settled that upon notice of a Plaintiff's
rights, if a Defendant continues to uses the mark, it does so at its
own peril. Thus, the delay in bringing the Suit if at all, does not
dis-entitle the Plaintiff to an interim injunction, more so since the
Defendant is dishonest. Despite having known of the Plaintiffs'
title, the Defendant continues its infringement at its own peril and
therefore, is liable to be injuncted.
60. Mr. Kadam has submitted that the Plaintiffs
have made out a case for passing off. The Plaintiffs have been able
to establish through overwhelming material that the Plaintiffs had
goodwill and reputation in their mark 'REGAL' since the year 1954.
The Defendant is evidently a junior user.
61. Mr. Kadam has dealt with the Defendant's
allegations of suppression and / or mis-statement. He has
22 2017 SCC Online Del 9139.
23 2004 3 SCC 90
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submitted that these allegations are misconceived and untenable
both in law and in facts. Mr. Kadam has submitted that the charge
of suppression is pressed on the fact that in Para 17 of the Plaint,
the Plaintiff claim knowledge of the impugned mark from 2008
whereas the invoices on record show that the Plaintiff would have
knowledge of the impugned trade mark from at least December,
2006. He has submitted that alleged non disclosure of about 14
months of purported knowledge from December, 2006 to February,
2008 is thoroughly irrelevant. At best, any such non-disclosure
would imply delay; which is simply not available as a defence in an
infringement action. He has relied upon the decision of the
Supreme Court in Midas Hygiene (Supra) in that context. Mr.
Kadam has further submitted that there is no reason for the
Plaintiff to have indulged in any falsehood of suppression on their
part as the Suit has been filed on 20th July, 2017 i.e. 9 years after
accepted knowledge (February 2008). It would thus make no and/
or little difference to the Plaintiffs' case or the Defendant's defence,
whether the disclosure of the date of knowledge was December,
2006 or February, 2008.
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62. Mr. Kadam has submitted that on the
comparable strength principle laid down by the Supreme Court in
Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd24, para 17,
the Plaintiffs possess a stronger case for trade mark infringement
and passing off. It has been held by the Supreme Court that at the
interlocutory stage in trade mark matters, the Court must test the
comparable strength of the respective cases of the parties. He has
submitted that in view of the aforementioned submissions and
considering the marks are identical, the case being use of identical
goods / services as well as the Plaintiffs being registered
proprietors of the REGAL trade marks having prior user of 1954 as
against the Defendant not being a registered proprietor, its
application for registration having been refused by the trade mark
registry, the Plaintiffs have stronger comparable strength than the
Defendant. In that view of the matter, he has submitted that the
relief sought for in the Interim Application be granted.
63. Dr. Saraf, the learned Senior Counsel appearing
for the Defendant has submitted that the Plaintiffs have
approached this Court with a false case and with unclean hands
24 2001 5 SCC 73
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and sought relief by suppressing vital and material facts and
documents from this Court. The Plaintiffs are dis-entitled from any
interim relief on this count alone.
64. Dr. Saraf has submitted that the Plaintiffs have
approached this Court with a false case that they became aware of
the Defendant's trade mark REGAL in or about February, 2008
when the Plaintiffs came across the Defendant's application dated
20th February, 2006 for registration of the trade mark 'REGAL'. The
Plaintiffs have further made a false statement that after 2008 till
2017, they believed that the Defendant would not use the mark.
The Plaintiffs have further stated that it is now i.e. in 2017 when
the Plaint was filed that it became clear that the Defendant is bent
upon using the mark.
65. Dr. Saraf has submitted that these averments in
the Plaint are ex-facie false and dishonest. The Plaintiffs were
aware of the Defendant's use of the trade mark "Regal" much prior
to the year 2008. Even after 2008, the Plaintiffs knew that the
Defendant continued to use the mark. He has placed reliance on
certain facts which he has claimed that the Plaintiffs have
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suppressed from this Court. These facts included the fact that the
Plaintiff had a shop diagonally opposite that of the Defendant from
2004 and therefore knew the existence of the Plaintiffs much prior
to 2008. In 2006, the Plaintiffs had 4 shops in Pune. He has
submitted that in 1984-1989, a Regal Shoes Shop was opened 300
meters away from the Defendant's shop between 1984 and 1989
by the Plaintiffs and/or the relative of the Plaintiffs' partner. He has
submitted that the Plaintiffs' issued cease and desist notice in
1984 and there was consequent settlement thereafter. He has
submitted that the Plaintiffs' stand that after 2008 till 2017, it
believed that the Defendant had stopped using the mark is false
since the Defendant continued running the shop at M.G. Road
diagonally opposite that of the Plaintiffs all throughout this period.
66. Dr. Saraf has submitted that the Plaintiffs' for
the first time in the Written Submissions filed before this Court and
tendered during the course of the arguments have admitted that
they had opened shop in Pune in 2006. Though the statement is
also misleading as it does not mention the existence of the shop at
M.G. Road, diagonally opposite to the Defendant's shop, but only
states that the Plaintiffs opened the shop in Pune in 2006. Dr. Saraf
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has placed reliance upon the overleaf / back side of the invoice in
its Plaint which shows that the Plaintiff had three "Regal" Shoes
shops and one "Rocia by Regal". Thus, the Plaintiffs had total four
footwear shops in Pune, 2006. The Plaint is completely silent on
the aspect of any of the said four stores in Pune under the name
"REGAL" and further one more store under the name "Rocia by
Regal" on the same M.G. Road. The Plaintiffs have thus come to
this Court with a false case that the Plaintiffs became aware about
the Defendant's trade mark only in 2008. He has submitted that
the Plaintiffs' thus are not entitled to any interim relief in the
present Notice of Motion. The injunction sought for by the
Plaintiffs are equitable in nature and a party coming with a false
case and suppressing vital and material facts and documents is
disentitled from seeking injunctions from this Court.
67. Dr. Saraf has relied upon the decision of this
Court in Brihan Karan Sugar Syndicate Pvt. Ltd. Vs. Karma Veer
Shankarrao Kale Shahakari Sakhar Karkhana Ltd.25at paragraphs 1,
14 to 22, 30 to 33 and 36 to 42. He has further relied upon the
25 2018 (3) MH.L.J. 746
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decision of this Court in Essel Propack Vs. Essel Kitcheware26 at
paragraphs 10 to 14 in this context.
68. Dr. Saraf has submitted that the Plaintiffs
approached this Court with the stand that from 2008 to 2017, they
believed that the Defendant would not use the mark. This stand is
ex-facie false and clearly an attempt to mislead this Court. The
Plaintifs were expressly aware of the fact that the Defendant was
carrying on and continued to carry on business of selling footwear
under the mark "REGAL" even after the receipt of the Notice of
oppositon. He has submitted that the Plaint is entirely silent on any
steps whatsoever being taken by the Plaintiffs to verify whether or
not the Defendant had in fact stopped using the mark REGAL for
footwear. Dr. Saraf has relied upon the case of Shri Gopal
Enginnering and Chemical Works Vs. Promx Laboratory,27 and
Warner Bros Entertainment Ltd. Vs. Harinder Kohli,28 in support of
his submission that where statements made by the Plaintiffs were
found to be misleading the Court by suppressing true facts, this
would disentitle the grant of injunction.
26 (2016) 3 BCR 466.
27 DRJ 1992 (22).
28 ILR 2009 I DEL 722.
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69. Dr. Saraf has submitted that the Defendant is a
prior adopter and prior user and there has been open, continuous
and uninterrupted use of the mark REGAL and REGAL FOOTWEAR
from 1963. He has relied upon the leave and agreement dated 8th
April, 1963 as well as license and renewals under the Shops and
Establishment Act, 1948 applied for and obtained on 25th July,
1963. The engagement of consultants Shroff and Co. and sales tax
related documents from 1978 onwards have also been relied upon.
Further, the sales tax refund adjustment order dated 11th June,
1980 issued for the period 1st April, 1976 to 31st March, 1978
showing that M/s. Regal Footwear, the Defendant was making
statutory payments in the 1970s. He has also relied upon
photographs of 1988 taken inside the store of the Defendant at
M.G. Road which shows that the name REGAL on the shop walls as
well as on the shoe boxes. The photograph at page 336A is of the
partner of Defendant and deponent herein. The other partner of
Defendant Mr. Akbar Virani can also be seen in the photograph at
page 336B standing next to the shoes and calendar seen in the
photograph. The deponent of pleadings on behalf of the Defendant
who is seen as a child in the photograph is today 39 years old.
Further, he has relied upon the property tax payments as well as
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acknowledgments issued in the year 1980 by the Tahasildar, Pune
recording that property tax was paid for the period 1973-74 to
1979 -80. There are Income tax acknowledgment for assessment
years 1983 - 84 by the Defendant's consultant M/s. Shroff & Co.
issued in the name of Regal Footwear. The sample letter head
dated 6th July, 2000 evidences the business undertaken at the first
shop. There is a newspaper report dated 23rd August, 2000
regarding the fire at the Defendant's shop clearly recording that
the shop was named M/s. Regal Footwear.
70. Dr. Saraf has thereafter submitted that the
Defendant has been severely handicapped in production of
documents to substantiate its use on account of the fire which took
place in the building where the first shop is located, on 23rd
December, 1999. The fire is claimed to have destroyed the entire
building and the documents, goods and stock available in the store
were burnt to ashes. The documents relating to the period 1963 to
1999 have been razed in the fire He has relied upon the fire
register report dated 23rd December, 1999 which according to him
records that the 'different companies books damaged due to fire,
heat and water', in respect of Regal Footwear. He has submitted
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that the Plaintiffs have sought to contend that the fire register
report does not record that the document at the shop M/s. Regal
Footwear were destroyed or that the first floor residence was
destroyed by fire. However, this is contrary to the reading of the
words in the fire register report. He has submitted that the
Plaintiffs have sought to misread the words 'Different Companies
Books' as 'Different Companies Boots'. He has submitted that this is
factually incorrect, since the Defendant sells only shoes and
footwear designed / manufactured by the it through its vendors.
He has placed reliance upon paragraph 42 of the Affidavit in Reply
to the Notice of Motion No.516 of 2017, wherein the Defendant
specifically pleaded that the Defendant's business model is that of
'Exclusive Showroom' for Regal Footwear designed and
manufactured by the Defendant whereas, the Plaintiffs' business is
that of 'Super Market', where different brands are assembled and
sold under one roof. He has submitted that words in the fire
register report should be read as 'Different Companies Books' and
that only evidences that the books maintained by the Defendant
were lost in fire.
922-nmcd-516-2017.doc
71. Dr. Saraf has submitted that the Defendant
having executed a license deed for running a shop under the name
Regal Footwear and the obtaining of a license under the Shops and
Establishment Act in the year 1963 is prima facie proof that the
Defendant has been carrying on business in shop M/s. Regal
Footwear for more than 50 years. He has submitted that the
aforementioned documents relied upon by the Defendant cannot
be dissected individually as sought to be done by the Plaintiffs. The
documents taken as a whole prima facie shows user of the mark
Regal by the Defendant for more than 50 years. He has submitted
that the mark need not only be physically affixing the mark on the
goods or sealing the goods. All steps taken towards commencing
sale of goods would also be construed as use of the mark. He has
drawn reference to the words 'in any other relation whatsoever' in
sub-section 2(b) and (c) of the Trade Marks Act as being wide in
its scope and ambit and not to be interpreted in a restrictive sense.
He has relied upon the decision of Hardie Trading Ltd. & Anr. Vs.
Addisons Paint & Chemicals Ltd.29 at paragraphs 37 and 41 to 45 in
that context. He has submitted that the reliance placed by the
Plaintiffs on the case of Arvind Mills (Supra) in support of their
29 (2003) 11 SCC 92.
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contention that use of trade mark could only be shown by invoices,
advertisements, income tax assessment orders, books of accounts
and pamphlets and brochures is misconceived as these documents
are only illustrative documents. The said decision in paragraph 12
uses the words 'such as' and 'etc' shows that the documents
mentioned therein were illustrative. He has drawn distinction in
the facts of the present case and he has submitted that the mark
'Arvind' in that case was a personal name of the Petitioner and
Respondent did not provide reasons for adopting 'Arvind'. Whereas
in the instant case "REGAL" is a dictionary word and has a meaning
/ usage in common parlance which anyone in the industry can
chance upon or adopt.
72. Dr. Saraf has submitted that a preliminary
examination of the evidence on record produced by both parties in
their pleadings would demonstrate that the Plaintiffs have no
original documents to support its user claim any time prior to 1987
i.e. 24 years after Defendant honestly adopted and commenced
using its mark 'REGAL FOOTWEAR'. The original documents
produced by the Defendant demonstrate the Defendant to be the
prior user and the preponderance of probability would indicate the
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same. He has submitted that there is no substance in the
contention of the Plaintiffs that the deponent of the said Affidavit
is of an age where he would not be in a position to depose to
certain facts. The Plaintiffs have themselves filed the Suit through
Constituted Attorney Mr. Imran Virjee who has absolutely no
person knowledge of the facts and circumstances of the present
case as can be seen from the verification clause.
73. Dr. Saraf has submitted that the Plaintiffs have
not been able to demonstrate with credible material their claim of
user since 1954 and are not the prior users of the mark REGAL
since 1954. He has submitted that the purported income tax
assessment orders relied upon by the Plaintiffs to evidence alleged
user since 1954 are not admissible in evidence and do not prove
'use' of the mark under the Trade Marks Act. He has submitted that
the purported income tax assessment orders for assessment years
1956 - 57 to 1986 - 87 and for assessment years 1990 - 91 to
1992 - 93 are not originals or certified copies for which inspection
has not been granted. Further, most of the photocopies of the
documents do not bear the sign / seal of any officer of Income Tax
Department. An unsigned order of assessment is not in conformity
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with the provisions of the Income Tax Act, 1961. There has been
manipulated tax filings pertaining to the years 1954-63 (i.e. prior
to the Defendant coming into existence) as reflected in the
assessment orders relied upon by the Plaintiffs to claim use of the
mark. He has submitted that it is apparent from the Income Tax
Assessment Order for assessment years 1987-88, 1988-89 and
1990-91, that the Plaintiffs have been engaged in fraudulent
transaction, scams and tax evasions and Investigation was
conducted by EoW, Mumbai Police, Excise Department, Sales Tax
Department and IT Department which revealed the same.
74. Dr. Saraf has further submitted that the sale
figures produced by the Plaintiffs annexed to the Chartered
Accountant's Certificate at Exhibit A are at variance with the sale
figures produced by the Plaintiff along with evidence in support of
the opposition filed by the Plaintiffs with the Registrar of Trade
Marks. He has highlighted the variance in the sales figures. He has
further submitted that though the statement of advertisements
expenses shows that though Regal Shoes and Regal Shoes (India)
Pvt. Ltd. are said to be carrying on sales of products from 2004
onwards, the advertisements have been issued by Regal Shoes from
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1958 and Regal Shoes India Pvt. Ltd from 2005. There are no
advertisement expenses at all either by Regal Footwear partnership
or proprietorship. Furthermore, in various years where no sales
figures are provided, there are advertisements shown. He has
referred to the blanks in figures in the statement of sales and
advertisement expenses. This has not been explained in the Plaint
save and except a general statement that the Plaintiffs do not have
the figures ready. The Chartered Accountant certificate being
purely based on assessment orders cannot in any event be relied
upon as the assessment orders themselves are unreliable and
inadmissible on account of inspection of the originals not being
provided. Dr. Saraf has submitted that it is settled law that for the
purpose of claiming and proving the user, mere newspaper
advertisements or marketing / promotions will not suffice under
the Trade Marks Act. He has placed reliance upon the decisions
which have also been relied upon by the Plaintiffs, viz. Power
Control and Kamat Hotels (Supra) and which hold that mere
advertisements do not prove use.
75. Dr. Saraf has submitted that without prejudice
to the Defendant's case that the Defendant is prior user of the
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trade mark, in any case, the Defendant is an honest and concurrent
user of the said trade mark. He has submitted that it is settled law
that the claim of 'prior user' is wide enough and embodies within
it, the claim of 'honest and concurrent user'. The Courts have
recognized the defence of honest and concurrent user is not
available in an action for infringement of trade mark or passing off.
He has submitted that the decision relied upon by the Plaintiffs in
Kia Industries (Supra) is misplaced as the said decision has not
taken into consideration the earlier judgments which take have
taken into consideration honest concurrent user as a defence to an
action for infringement. This has been held by the Delhi High
Court in the case of Lowenbrau AG & Anr. Vs. Jagpin Breweries
Ltd. and Anr.30 at paragraphs 6, 23, 27, 29 and 31. Dr. Saraf has in
this context relied upon the following decisions apart from
Lawenbrau AG (Supra):-
(i) M/s. Wattan Singh & Sons vs. the Registrar of trade
marks & Ors. 1976 SCC Online Del 95 (paras 6 and 7).
30 39 PTC 627.
922-nmcd-516-2017.doc
(ii) Euro Panel Products Pvt. Ltd. & Anr. vs. Eurobond
Industries Pvt. Ltd., 2015 SCC Online Bom 8763 (para 24).
(iii) Kalpataru Properties Pvt. Ltd. vs. Kalpataru Build-tech
Corp. Ltd. & Ors., 2015 SCC Online Bom 5817 (para 14).
(iv) Goenka Institute of Education and Research vs. Anjani
Kumar Goenka & Anr., ILR 2009 VI Del 415 (paras 10 and 13).
(v) Kores (India) Ltd. (supra) (paras 1, 2, 7, 9, 10, 13, 16,
17, 25, 31 and 32).
(vi) London Rubber Co. Ltd. vs. Durex Products Inc & Anr.,
AIR 1963 SC 1882 (paras 2, 8, 15, 16, 19, 20, 21).
(vii) Gopal Hossiery vs. Dy. Registrar of trade marks & Ors.,
AIR 1982 Cal 53 (paras 6, 7, 9 and 10).
(viii) Jain Rubber Industries vs. Crown (P) Ltd., 1988 PTC
82 (paras 5 and 6).
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(ix) Vikas Makhija vs. Bengal Phenyle & Allied Products (P),
2001 SCC Online Del 643 (paras 13 and 14).
76. The above decisions are in support of his
submission that relevant factor to be considered in the defence of
honest and concurrent user is honesty in adoption by user which is
commercial honesty and the circumstances which led to the
adoption of the mark. Mere knowledge of the existing trade mark
would not lead to a presumption of dishonesty. Even knowledge of
registration of an identical mark is an important factor but not
conclusive on the point of honesty of adoption. Adoption by a
proprietor of an identical mark in a completely different part of the
country even with the knowledge of existing trade mark may not
lead to a presumption of dishonesty. The prior adopter must
establish such goodwill in the trade mark that the subsequent
adoption of the trade mark by another proprietor would lead to a
conclusion that such subsequent adopter intended to encash upon
the goodwill of the prior adopter. It is sufficient that there is
commercial use and the volume would depend on the Defendant's
capacity. Extensive sales are not required. A business larger than
the opponent is not required. The question of discharging the
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burden of establishing that there was no reasonable probability of
confusion cannot arise in a case of honest concurrent use.
77. Dr. Saraf distinguished the decisions relied upon
by the Plaintiff in contending that for honest and concurrent user,
damages may not be granted, however, injunction should follow.
This in the case of Winthrop Products Inc V. Eupharma
Laboratories (supra) and Kirloskar Diesel Recon Pvt. Ltd. Vs.
Kirloskar Proprietary Ltd. & Ors.31. He has submitted that these
decisions were on the facts which arose in those cases and which
are entirely different from the facts in the present case.
78. Dr. Saraf has submitted that there is honest
adoption of the Defendant's mark by H.D. Shivani in 1963. He has
submitted that the mark was adopted after market survey and after
ascertaining that no similar mark existed in respect of the said
goods. The Plaintiffs' goods were admittedly not available in Pune
and hence would not be shown in any market survey in Pune. The
adoption of the trade mark by the Defendant were to be
appreciated in the background that the Defendant adopted the
31 1997 (17) PTC 469.
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mark in 1963 when the facilities and tendency that exist today
were not available. The Plaintiffs on their own showing have
shown no sales for the years 1964 to 1967, 1969 and 1973 to
1985. It is apparent from the Plaintiffs own case that they have no
presence at least in the year 1964, in or around when the
Defendant adopted its trade mark.
79. Further, Dr. Saraf has submitted that when the
Defendant applied for registration of the trade mark Regal
Footwear on 20th February, 2006, the Plaintiff's mark was not cited
as a conflict in trade mark by the Registrar in the examination
report. Thus, the Defendant's adoption of the trade mark Regal /
Regal Footwear in 1963 was honest and bonafide.
80. Dr. Saraf has submitted that there is proper
explanation provided for adoption by H.D. Shivani of the
Defendant's mark Regal in 1963. Mr. H.D. Shivani was desirous of
adopting Royal or Royal Footwear, but in view of there being an
existing shop with a similar name, the Defendant adopted Regal
Footwear. Regal being one of the synonyms of Royal. Regal being a
dictionary word as opposed to a coined word, it is not possible for
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the Plaintiffs to suggest that no other person except the Plaintiffs
would adopt the said trade mark. The Defendant has produced the
documents to evidence that there was a shop with name Royal
Boot and Shoe Marts in Pune since 1956. The explanation
contained in the sur-rejoinder is in consonance with the
explanation for adoption contained in the written submissions filed
by the Defendant before the Registrar of Trade Marks on 5th
October, 2019 in the opposition proceedings. Dr. Saraf has dealt
with the Plaintiffs contention that the adoption of the mark 'REGAL'
provided in the sur-rejoinder is contrary to the license agreement
dated 8th April, 1963 wherein there already existed a shop under
the name Regal Footwear which had been taken over by the
Defendant. He has submitted that this contention is misconceived
and an erroneous interpretation of the license agreement dated 8th
April, 1963. The reference to Regal Footwear in the license
agreement is to identify the shop and does not evidence the fact
that the landlord Mr. Shamsuddin Ismail was carrying on business
on that date. The landlord was in respect of the entire building and
hence it was necessary to identify the shop on the ground floor.
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81. Dr. Saraf has submitted that the Plaintiffs'
submission that the Defendant has acted dishonestly by using
identical trade mark, identical font, encircled R symbol are not
legitimate and sustainable. The Defendant being unaware and
illiterate thought that they could only use "TM" when they apply
for Registration of a trade mark which they have done in 2006 and
during the pendency of such Application. The Defendant being
illiterate was not aware that symbol encircled R symbol is to be
used only after securing trade mark Registration from the Registrar
of trade marks. The Defendant had forthwith stopped using the
said encircled R symbol upon it being brought to its notice in the
Plaint. There was no malafide intention in using the same prior to
the Suit. Further the Defendant had adopted and used the same
font and style since 1963. It is the Plaintiffs who had changed their
font, style and logo which can be seen by comparing their old mark
with the new mark.
82. Dr. Saraf has submitted that the Defendant has
produced documents before this Court which evidences the
presence of the Defendant since 1963. He has placed reliance upon
the decision of the Delhi High Court in Watan Singh (Supra) which
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holds that concurrent user need not be continuous and
uninterrupted for Section 12(3) of the trade mark Act.
83. Dr. Saraf has made submission in so so far as on
the plea of acquiescence. He has submitted that the plea of
acquiescence is admittedly a complete defence to an action for
infringement of trade mark. Acquiescence is a facet of delay and if
the Plaintiff stands by and allows the Defendant to carry out
business in the manner complained of, to acquire a reputation and
to expend money, he cannot then after a long lapse of time, turn
around and say that the business ought to be stopped. Positive acts
on the part of the Plaintiff can also be inferred from the conduct of
the Plaintiff. If the Plaintiff stood by and knowingly let the
Defendant build-up a valuable trade until it became necessary to
crush it, then the Plaintiff would be stopped by his acquiescence.
Acquiescence is essentially a question of fact and the positive act
involved to support the plea of acquiescence would vary from case
to case.
84. Dr. Saraf has submitted that in the present case
there has been acquiescence on the part of the Plaintiffs in
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allowing the Defendant to conduct its business since 1963 at M.G.
Road, Pune. Reference has been made to the opening of the shops
of the Plaintiffs near the Defendant's shop and despite knowledge /
existence of the Defendant's shop, no action was taken by the
Plaintiffs. Further, reference has been made to the fact that despite
notice of opposition dated 14th February, 2008, the Plaintiffs took
no steps to restrain the Defendant from using their trade mark for
a period of almost 10 years till the filing of the Suit on 20th June,
2017. It is the Plaintiffs own case that the Defendant was opening
a new shop and that the cause of action for filing the Suit which is
the expansion of business by the Defendant and not the use of the
mark by the Defendant. The Plaintiffs have waited, permitted the
Defendant to carry on business for more than 50 years, expand
substantial monies and virtually given its implied consent to the
Defendant to continue to use the said marks. He has submitted
that the conduct of the Plaintiffs clearly amounts to acquiescence /
implied consent and waiver. The Defendant is entitled for
protection by virtue of Section 30(2) (c) (i) of the trade marks Act,
1999.
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85. Dr. Saraf has further relied upon the decision
which has also been cited on behalf of the Plaintiffs i.e. Power
Control (Supra) in support of his contention that where the
Plaintiffs stood by knowingly and let the Defendants build up an
important trade until it had become necessary to crush it, then the
Plaintiffs would be stopped by their acquiescence. Dr. Saraf has
relied upon Unichem Laboratories (Supra) and Essel Propack Ltd.
(Supra) as well as Yonex Kabushiki Kaisha Vs. Philips
International32 in support of his contention that there has been
acquiescence of the Plaintiffs in the present case by allowing the
Defendant to expend money over considerable period in building
up its business without taking steps to prevent the Defendant
which would clearly amount to acquiescence on the Plaintiffs' part.
In Essel Propack (Supra), this Court has held that the reference to
'positive act' in Power Control (Supra) in the context of
acquiescence cannot be suggested to be an actual green light, or
else there would be no distinction at all between consent and
acquiescence.
32 (2007) 35 PTC 345.
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86. Dr. Saraf has submitted that mere addressing of
a notice of opposition dated 14th February, 2008 does not aid the
Plaintiffs in explaining delay. The Plaintiff has even not issued a
cease and desist notice after becoming aware of the use of the
mark by the Defendant purportedly in 2008, let alone filing a Suit
for injunction at that time.
87. Dr. Saraf has submitted that the ratio laid down
in Unichem Laboratories (Supra) and Essel Propack (Supra) have
not been overruled by the decision of the Division Bench in
Torrent Pharmaceuticals (Supra). These decisions have not even
cited or referred to in the judgment. Thus, there is no dilution of
these judgments. The important point of distinction is that whilst
in Unichem Laboratories (Supra) and Essel Propack (Supra), there
was a delay between the date of knowledge of the Defendant's
mark and filing of the Suit, which was sought to be explained by
suppressing facts and taking a dishonest stand, in Torrent
Pharmaceuticals (Supra), there was absolutely no delay between
the knowledge of the Defendant's use and filing of the Suit.
Further, the Defendant had adopted the mark after the Plaintiff's
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registration, with complete open eyes with respect to the existing
proprietary rights of the Plaintiffs in the marks.
88. Dr. Saraf has distinguished the decision relied
upon by the Plaintiff viz. Aristo Pharmaceuticals (Supra) to
demonstrate that filing opposition proceedings establishes non-
abandonment of rights in respect of mark and non acquiescence in
the Defendants using the mark. He has submitted that the reliance
on this decision is completely misplaced. The said decision in
Aristo Pharmaceuticals (Supra) is merely an ad-interim order
passed in the Notice of Motion and is not an order passed after
finally hearing the parties. In that case the Plaintiff's become
aware of the actual use of the trade mark by the Defendant in the
year 2011 which was just before the Suit was filed. The Plaintiffs'
trade mark was registered in the year 1986 whereas the
Defendants applied for registration of the trade mark in the year
2006 claiming user from 2006. It was admitted by the Defendants
that their sales were only by way of exports and that they did not
have any domestic sales in India. Hence, the Court held that it
cannot be assumed that the Plaintiffs would be aware of the actual
use of the mark since 2006. The timeline also between filing of the
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Suit and awareness of the application for registration was only
around 4 to 5 years. It was in these circumstances that the Court
found the notice of opposition to be sufficient. As opposed to this
case, in the present case the Defendant has been in the domestic
market almost 50 years prior to its application for registration. It is
not even pleaded by the Plaintiffs that the Plaintiffs made any
efforts or did not find the Defendant's goods in the market. This
judgment, is therefore, not applicable.
89. Dr. Saraf has submitted that the Plaintiffs have
failed to establish the case of passing of and / or the 1st
requirement in establishing passing off i.e. any goodwill or
reputation in favour of the Plaintiffs with respect to its mark
REGAL. On the contrary, the documents relied upon by the
Plaintiffs would demonstrate that the Plaintiffs are not an
international brand or multi-national brand and do not possess
goodwill / reputation as portrayed by the Plaintiffs. There is a
categorically finding by the Income Tax Authorities that the
"REGAL" is not a multi-national brand like BATA and it is ridiculous
to compare the operation of multi-national brand like BATA with
that of the assessee i.e. Plaintiffs herein.
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90. Dr. Saraf has submitted that there have been
alleged instances of confusion or deception for which the Plaintiffs
have relied upon the alleged conversation purportedly exchanged
between the Plaintiffs and Ms. Seema Singh, Ms. Prabha Dabadge
and Ms. Swati Jagtap through their official Facebook page 'REGAL
Shoes'. However, this cannot be relied upon by the Plaintiffs as the
Plaintiffs have failed to provide inspection of the same. He has
submitted that a bare reading of the alleged complaints
demonstrate that the same are got up documents, self-serving
documents and issued by the said persons if at all, only at the
instance of the Plaintiffs. Though these complaints are allegedly of
the year 2017 and 2019, the same are filed only in the Affidavit in
Rejoinder dated 14th February, 2022 to the Notice of Motion
No.1841 of 2018. Further, the surfacing of such complaints only in
2017 and 2019 shows that there was no confusion between the
goods from 1963 till date.
91. Dr. Saraf has submitted that the present
proceedings are at the interim stage and it is trite that at the
hearing of an interim application, the Court is not expected to
conduct a mini trial. In the present case there are various disputed
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questions which require adjudication at a trial. The Plaintiffs have
not been able to establish their case with certainty. Further the
Defendant has produced substantial material before this Court to
demonstrate that there are serious disputed issues on various
relevant and pertinent issues including as to which party is the
prior user of Regal / Regal Footwear. In the alternative, whether
the Defendant is an honest and concurrent user of the trade mark.
Further, is the Defendant using the mark to the knowledge of the
Plaintiffs from 1984 or at least from 2004 without any action taken
by the Plaintiffs in this regard. Is the Plaintiffs guilty of
acquiescence. Have the Plaintiffs have come to the Court with false
case suppressing facts from this Court. Dr. Saraf has relied upon
the case of Shree Gopal Engineering and Chemicals Works 33,
wherein the Court has held that it is not that at an interim stage
the Court shall keep its 'eyes closed', accept every word the
Plaintiff says as Gospel truth and lock-jaw the Defendant."
92. Dr. Saraf has submitted that while weighing the
case for grant of interim relief, an unexplained inordinate delay,
the conduct of the Plaintiffs in making false statements and
33 DRJ 1992 (22) 504.
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suppressing facts are all facts which are relevant and ought to be
considered by this Court. Dr. Saraf has relied upon the decision of
the Supreme Court in Gujarat Bottling Co. Vs. Cocacola Co. &
Ors.34 and Wander Ltd. Vs. Antox India P. Ltd. 35 paragraphs 9 and
10, where this Court has considered the need of granting interim
relief needs to be weighed against the corresponding need of a
Defendant to be protected against injury resulting from him having
been prevented from exercising his own rights for which he could
not be adequately compensated. Further, in Wander Ltd.(Supra)
this Court had considered whether the Defendant is yet to
commence his enterprise or whether he has already been doing so
in which case, consideration somewhat different from those that
apply to a case where the Defendant is yet to commence his
enterprise are attracted. Dr Saraf has relied upon the decision in
Essel Propack (Supra) wherein this Court had held that law
relating to grant of injunction is not displaced in case of
Intellectual Property Matters.
34 (1995) 5 SCC 545.
35 (1990) SUPP SCC 727
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93. Dr. Saraf has submitted that if injunction is
granted, the Defendant who has been carrying on business in
"REGAL" since 1963 and garnered a great deal of goodwill would
gravely and prejudicially suffer and its livelihood and business
developed over the years may even to come to a standstill. On the
other hand, the Plaintiffs who have approached this Court with
unexplained inordinate delay, with false justifications and
suppressing material facts can always be compensated by damages
at the hearing of the Suit. The balance of convenience tilts heavily
in favour of the Defendant. An irreparable loss will be caused to
the Defendant if the injunction is granted. He has accordingly
submitted that the Notice of Motion be dismissed in limine with
costs.
94. Having considered the submissions, a
preliminary ground has been raised by the Defendant that the
Plaintiffs have come with a false case and with unclean hands and
sought relief by suppressing vital and material facts and documents
from this Court and on this ground alone the Plaintiffs are dis-
entitled from any interim relief. The Defendant has relied upon
paragraphs 8 and 17 of the Plaint, which read thus:-
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"8. In or about February 2008 the Plaintiffs came
across advertisement of the Defendant's application
No. 1422577 dated 28th February 2006 in Class 35 for
registration of the trade mark "REGAL" in respect of
"Retailing services for selling of branded footwear"
published in the Trade Marks Journal No. 1372 dated
16th July 2007 and made available to the public on
18th October 2007. According to the said
advertisement, the Defendant claimed that it has been
using the said trade mark since 25 th July, 1963. Being
aggrieved by the said application, the Plaintiffs filed
Notice of Opposition dated 14th February 2008 to the
said application, under provision of Section 21(1) of
the Trade Marks Act, 1999. The Defendant has
entered into its defence by filing Counter Statement
dated 20th October 2008 as provided under section
21(2) of the Trade Marks Act, 1999. By the said
Counter Statement the Defendant has falsely
contended that it has adopted the trade mark on 21 st
April 1963 and has since then used the same in
respect of its retailing services. The Defendant has
further contended that in the year 1984-85 the
predecessors of the Plaintiffs had issued a Notice to
the predecessors of the Defendant alleging
infringement and passing off; that the Defendant's
predecessors had replied to the said Notice; and that
the disputed issue was settled between the Plaintiffs'
predecessors and the Defendant's predecessors.
However, the Defendant has not produced any
documents or other material to support their said
contention. The Plaintiffs say and submit that from
the records of its predecessors available to the
Plaintiff, no such correspondence was exchanged
between the Plaintiffs' predecessors and the
Defendant's predecessors." ....
"17. The Plaintiffs submit that in view of the
following facts and circumstances there is no delay on
their part in approaching this Hon'ble Court. The
Plaintiffs say that as stated hereinbefore, they came to
learn about the Defendant's trade mark "REGAL" in
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respect of retailing of branded footwear in February
2008 when they immediately filed opposition to the
Defendant's application for registration of its trade
mark "REGAL". The Plaintiffs have filed their evidence
in support of the said opposition within the
prescribed time. Thus, the Plaintiffs have been
diligently attending to the said matter. However, due
to delays in the office of the Registrar of Trade Marks,
the said opposition has not been heard and disposed
of. During this period the Plaintiffs believed that
knowing that the Plaintiffs have objection/opposition
to the Defendant using and registering the impugned
trade mark, the Defendant would not use the
impugned trade mark REGAL. The Plaintiffs were also
advised that if despite the Plaintiffs' opposition, the
Defendant uses the impugned trade mark then the
Defendant cannot claim any equities in its favour. If
the Defendant has used the impugned trade mark
despite the Plaintiffs' opposition then the Defendant
has done so at its own peril and such user cannot be
set up as a defence. The Plaintiffs say and submit that
now that it has become clear that the Defendant is
bent upon selling REGAL brand footwear and opening
a new outlet at Seasons Mall, Pune, the Plaintiffs
have immediately filed the present suit and sought
relief of injunction."
95. It is contended on behalf of the Defendant that
the Plaintiffs have made a false statement that they came to know
about Defendant's use in 2008 when they noticed the Defendant's
application for registration of its mark. It is contended that the
Plaintiffs had a shop diagonally opposite to the Defendant's shop
from 2004 and they knew about the existence of the Defendant's
impugned mark prior to 2006. In 2006, the Plaintiffs had other
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shops in Pune. Further, contention is that in 1984 to 89, Regal
Shoe shop was operating 300 meters away from the Defendants
shop and which shop was opened by the Plaintiffs and / or
relatives of the Plaintiffs' partner. It is further contended that there
was earlier a cease and desist notice issued by the Plaintiffs in
1984 and consequent settlement thereafter. Further contention is
that the Plaintiffs' stand that they stood by from 2008 to 2017
upon the belief that the Defendant had stopped using its mark is
false since the Defendant continued running the shop at M.G.
Road, Pune, diagonally opposite that of the Plaintiffs all through
out this period. Accordingly, there was no reason on the part of the
Plaintiffs to believe that the Defendant has stopped or would stop
using its mark.
96. Having considered these contentions on behalf
of the Defendant, in my view the statement made in paragraph 8
of the Plaint that in or about February, 2008 the Plaintiffs coming
across advertisements of the Defendant's Application No.1422577
dated 28th February, 2006 in Class 35 for registration of the trade
mark 'Regal' in respect of the retailing services for selling, branding
footwear published in the trade mark journal No.1372 dated 16th
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July, 2007 and made available to the public on 18th October, 2007
cannot be read in the manner the Defendant intends it to be read.
The Plaintiffs have not stated that they did not know of the
Defendant's mark prior thereto. Further, it is only from the said
advertisement that the Plaintiffs have learnt that the Defendant
claimed user of its trade mark since 25th July, 1963. In that
context the Plaintiffs have referred to the notice of opposition
dated 14th February, 2008 filed by them.
97. Further, in paragraph 17, the Plaintiffs have
only stated that it came to their knowledge that the Defendant's
trade mark "REGAL" is in respect of retailing of branded footwear
was in February, 2008, when they immediately filed opposition to
the Defendant's application for registration of its trade mark
"Regal". Though, there is no mention of the Plaintiff's shop being
in operation prior there to i.e. from 2004 and which according to
the Defendant was diagonally opposite the Defendant's shop, this
non disclosure of the Plaintiffs shop in the Plaint is in my view
irrelevant. The knowledge attributed to the Plaintiffs would at the
highest be a couple of years prior to February, 2008 and at best
would imply delay.
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98. In Midas Hygine (Supra) it has been held that
delay is not available as a defence in an infringement action.
Further, I am of the view that since the Suit has been filed on 20th
July, 2017, over 9 years after accepted knowledge of the Plaintiffs
i.e. February, 2008, it would make no difference to the Plaintiffs'
case or the Defendant's defence, whether the disclosure of the date
of the knowledge was December, 2006 or February, 2008. Further,
it has been stated in paragraph 8 of the Plaint that the Defendant
had claimed user of 25th July, 1963. Accordingly there would be
no reason for the Plaintiffs to have suppressed the fact that they
had knowledge in 2006 in view of a shop opened by the Plaintiffs
diagonally opposite to the Defendant. Considering that this is a
final hearing of the Notice of Motion, any misstatement alleged
cannot come in the way of determination of the issue as to
whether the Defendant has infringed the Plaintiffs trade mark
and / or passed of its mark as the Plaintiffs trade mark. Further,
the Defendant in the event of there being a finding of infringement
and / or passing off, cannot be allowed to continue its illegal trade
under the impugned mark and perpetuate deceit upon the
members of the public at large, merely because of a misstatement.
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99. The case of Brihan Karan Sugar Syndicate Pvt.
Ltd. (Supra) relied upon by the Defendant has been decided on the
facts of that case and is inapplicable in the present case. In that
case knowledge was expressly pleaded by the Plaintiff that it had
learnt of infringement only in 2011 whereas the facts
demonstrated that it had knowledge much prior thereto. This false
representation was to steal a march upon the Defendants. In the
present case, the Plaintiffs at the ad-interim stage itself has only
moved after giving notice to the Defendant. Thus, the present case
is not a case of the Plaintiffs attempting to steal a march on the
Defendant.
100. In so far as the contention of the Defendant that
the Plaintiffs and / or relatives of the Plaintiffs partner had opened
a shop in 1984 and which was operational from 1984 till 1989 is
concerned, there is nothing on record to show that the Plaintiffs
had at all opened a shop in 1984. Further, knowledge has been
sought to be attributed to the Plaintiffs on the footing that in or
around 1985 one Ismail Mulji, the brother-in-law of one of the
founding partners of the Plaintiffs viz. Mr. Karim Virjee and uncle
of the Plaintiffs had purportedly opened a shop in or around 1984
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near the Defendant's shop. It is necessary to note that the said Mr.
Karim Virjee had retired from the Plaintiffs partnership firm with
effect from 1976 and relinquished all his rights in the trade mark
REGAL. The Plaintiffs have contended that they were not aware of
any such shop opened and had not permitted the same.
Considering that the said Mr. Virjee had retired almost 8 years
before the purported opening of shop, the contention of the
Defendant that knowledge must be attributed to the Plaintiffs in
the 1980's by virtue of opening of a shop by the brother in law of a
former partner of the Plaintiffs cannot be accepted. Further, the
contention that there was an alleged cease and desist notice
purportedly issued by the Plaintiffs in 1984 and consequent
settlement thereupon is not borne out by any documents produced
by the Defendant. Thus, the case of the Defendant that the
Plaintiffs have suppressed these facts cannot be accepted.
101. In so far as the statement made in paragraph 17
of the Plaint, this can only be read as a contention of the Plaintiff
that in view of opposition to the Defendant's application for
registration of the trade mark the Plaintiffs assumed that the
Defendant would not use the impugned trade mark REGAL till
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such opposition was decided. This has been followed by a
statement made thereafter that "if the Defendant had used the
impugned trade mark despite the Plaintiffs' opposition, then the
Defendants has done so at its own peril and such user cannot be
set up as defence". Thus, the contention of the Defendant that the
Plaintiffs had made a false statement in the said paragraph of the
Plaint is not acceptable as the Plaintiffs have not stated that the
Defendant had stopped using the impugned trade mark REGAL.
102. Thus having arrived at finding that there has
been no false case and / or suppression of material facts as alleged
by the Defendant, it would be necessary to consider the prior user
of the trade mark 'REGAL'. It has been contended by the Plaintiffs
that they are registered proprietors of the two REGAL marks with a
user of 1954 recognized under the Trade Marks Act. It is further
their contention that the registrations are valid, subsisting and
binding. As against this, the Defendant has contended that they
have been user of the trade mark 'REGAL' since 1963. However, it is
necessary to note that the Defendant is not a registered proprietor,
its application for registration having been refused by the Trade
Mark Registry.
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103. I have gone through the material on record and
noted that it is an admitted fact that the Defendant is using the
identical trade mark 'REGAL' as that of the Plaintiffs upon and in
relation to identical goods / services. It is further an admitted fact
that the Plaintiffs registrations of their trade mark are not in
dispute under these proceedings. Further, the Defendant has not
even challenged these registrations through substantive
rectification proceedings, till date. The Defendant has taken the
defence of prior continuous user under Section 34 of the Trade
Marks Act. I find that for the Defendant to establish prior
continuous user of their rival mark it will have to establish that it
was user prior in point of time to the Plaintiffs' date of registration
of the Suit mark or the date of the first user of the Plaintiffs' suit
mark, whichever is earlier. This is provided for in Section 34 of the
Trade Marks Act, 1999. Considering that the Plaintiffs' user of the
registered trade mark is prior to the date of its obtaining
registration, then the burden is upon the Defendant to show user
even prior thereto. The Defendant has admittedly claimed user
from 1963 and not from 1954. I prima facie find from the material
on record produced, that the Plaintiffs have successfully
demonstrated user from 1954.
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104. There has been an attempt made by the
Defendant to poke holes in some of the documents produced, in
particular, the Income Tax Assessment orders which are unsigned
and there are certain findings of the Income Tax Authorities that
there has been manipulation in the accounts produced by the
Plaintiffs by manipulating purchases of the goods bearing the
'REGAL' trade mark and there being discrepancies in sales, the
explanations for which have not been convincing. However, there
are Income Tax Assessment Orders which are on record for specific
years which have been signed and where there are no such
observations by the Income Tax Authorities. There are signed
assessment orders from 1956 to 1998. Further, there are nearly 23
newspaper advertisements / articles from 1955 all the way upto
2017, i.e. year of filing of the Suit. There is further material to
show the Plaintiffs running footwear / footwear retail business
under REGAL by way of invoices, letters, certificates of inspection
for export, third party invoices from 1974 to 2005. Thus, the
Plaintiffs have been able to produce material to show that they
were in prior open, uninterrupted and continuous use of their
trade mark REGAL since 1954.
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105. There is a contention raised on behalf of the
Defendant that the sale figures, advertisement figures and
Chartered Accountant's certificate is at variance with the figures
produced by the Plaintiffs along with evidence in support of the
opposition filed by the Plaintiffs with the Registrar of trade marks.
However, even if this Court was to ignore the sale certificate and
some unsigned assessment orders, there is sufficient material that
demonstrates the Plaintiffs' prior, open, uninterrupted and
continuous user since 1954.
106. As against this, I find that the Defendant has
only relied upon a Leave and License Agreement and Shops and
Establishment License in the year 1963. The Leave and License
Agreement would merely show that the premises which have been
referred to as Regal Footwear has been taken on rent by the
Defendant's predecessor Mr. Shivani. Further, the Shops and
Establishment License is a requirement under the Bombay Shops
and Establishment Act, 1948 for regulating working conditions of
employees in shops, commercial establishments, residential hotels
and the like. This does not establish that there was a running
business of footwear under Regal. The Defendant has produced
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certificate from sales tax consultant M/s. Shroff and Co. certifying
engagement for sales tax matters between 1969 to 2015 for
drawing inference that the sales tax matters related to sale of
footwear under Regal. However, upon perusal of the certificate of
M/s. Shroff and Co., there is no certification that the sales tax
matters were with respect to the sale / retail footwear under the
impugned trade mark Regal. Further, the Sales Tax Challans
produced by the Defendants from 1993 to 1997 do not indicate as
to whether sales tax was levied and paid with respect to the sale of
footwear under the trade mark Regal. The Income Tax
Acknowledgments also produced evidenced payment of tax and
not that they were paid in respect of the business of footwear.
107. The Defendant has contended that there is
absence of material from 1963 till 1999 due to a fire that took
place in 1999. However, there is no explanation as to the reason
for the Defendant not producing a single invoice from 1999
onwards inspite of it being the case of the Defendant that it
continued to run its business immediately after the fire. Further,
the Defendant has also not explained why it had not produced
statement of sales between 2000 to 2005 and / or advertisements
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from 1999 to 2010. The Defendant has relied upon the Fire
Register Report and has sought to read the words in the report as
"different companies books" which have been lost and damaged in
the fire.
108. I have perused the Fire Register Report as well
as read the Police Panchnama which have been annexed to the
Written Statement. In my prima facie view, the words in the Report
are "different companies boots" as having been lost and damaged
as this is also borne out from the Police Panchnama. Further, the
Defendant has been selective in producing material on record for
the years prior to the fire in 1999, which appears to have survived
the fire. I am thus of the prima facie view that the Defendant has
been unable to establish use of the trade mark Regal since 1963
much less open, extensive and continuous use.
109. This Court in Consolidated Foods Corporation
(Supra) has held that priority in adoption of trade mark entails
superiority in title. The Plaintiffs being prior adopters of their trade
mark REGAL hold superior title to the Defendant apart from the
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Plaintiffs trade marks being registered whereas Defendant has
been unsuccessful in obtaining registration of its trade mark.
110. The next defence raised by the Defendant is of
honest concurrent use of its trade mark 'REGAL'. Section 12 of the
trade marks Act addresses honest concurrent use only in a limited
context as permitting the Registrar of Trade Mark to register trade
mark which is identical / similar to an existing registered trade
mark and for identical / similar goods. Once such a trade mark is
registered it is afforded statutory protection under Section 30(2)
(e) of the Trade Marks Act. The registered trade mark is thus not
infringed by use of another registered trade mark which is identical
/ similar and for identical / similar goods. It is well settled
including in the decision of Delhi High Court in Hindustan Pencils
Private Ltd. (Supra) that honest concurrent use is not a shield
against the grant of an injunction. Honest concurrent use may
defeat a claim of damages, but the relief of injunction should not
be refused. Further, Section 34 of the trade mark Act 1999, though
expressly preserving the rights of prior users, does not provide for
honest concurrent use as a defence of infringement of trade mark.
In a recent decision of the Delhi High Court in Kia Industries
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(Supra) relied upon by the Plaintiffs it has been held that 'honest
concurrent user' is not a statutory defence. It cannot be imported
from Section 12 of the Trade Marks Act and press-ganged as
defence to trade mark infringement. The aforementioned principle
laid down in Hindustan Pencils Private Ltd. (Supra) has been
followed in Cadila Pharmaceuticals Pvt. Ltd. (Supra) and Winthrop
Products Inc, (Supra) decisions of this Court.
111. I further find that the explanation of the
Defendants for adoption of the trade mark REGAL has surfaced for
the first time in an Affidavit in Sur Rejoinder of the Defendant filed
in March, 2022. The Deponent of the Affidavit aged 39 years,
having been born in or around 1983, has related events which took
place in 1963. The Deponent would have no personal knowledge
of such events which relate to Mr. Shivani being initially desirous
of the adopting mark Royal for footwear in 1963. In view of there
existing a Royal Shoes shop on M.G. Road in Pune where the
Defendant's shop was opened, REGAL is claimed to have been
chosen for being phonetically similar to ROYAL. I find that there is
no documentary material adduced to substantiate this plea other
than producing material which best corroborated the existence of
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Royal Shoes. It is thus merely on the hearsay of the deponent of
the Affidavit in Sur Rejoinder, who has no personal knowledge.
Further, the Leave and License Agreement dated 8th April, 1963
between one Shivani and Mr. S. Ismail, suggests that the Ismail
had licensed the use of a pre-existing REGAL footwear which is
inconsistent with the Defendant's pleaded case that Shivani was
the original adopter. Accordingly, I prima facie find that the case
for adoption of the impugned trade mark Regal is not supported by
cogent evidence.
112. I further find from the material on record that,
the Plaintiffs were operating "Regal" shop at Colaba Causeway, a
premier shopping address prior to 1963. There are advertisements
on record which give reference to the Plaintiffs "Regal Footwear"
as a landmark. The Plaintiffs shop being situated in Mumbai and
the Defendant's shop situated in Pune are cities where people
commute daily by train. The Defendant's predecessor being in the
same trade of sale of footwear as well as fact that the the
Defendant and his predecessor belong to same religious
community which they consider to be a close knit community,
would establish prima facie that the Defendant and its predecessor
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had knowledge of the Plaintiffs use of the REGAL trade mark.
Further, Mr. Shivani has not filed any Affidavit confirming or
denying his knowledge of the Plaintiffs store at the relevant time.
113. I am also of the prima face view that there is no
commercial honesty on the part of the Defendant in using their
mark REGAL. I further find that in 2017, when the Plaintiff had
filed the Suit, the Defendant was using their mark with the ®
symbol as if to suggest that the Defendant was registered
proprietor apart from using font and lettering which was similar to
that of the Plaintiffs. Thus, the Defendant was attempting to
imitate the Plaintiffs and by such conduct the Defendant has failed
to establish commercially honesty.
114. The decisions relied upon by the Defendant in
support of their contention of honest concurrent use as a defence
against infringement are inapposite and distinguishable.
115. In so far as the defence of the Defendants of
their being acquiescence on the part of the Plaintiffs for resisting
injunction for trade mark infringement is concerned, in my prima
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facie view, no case is made out by the Defendant. As
aforementioned, there is no substance in the Defendants
contention that, the Plaintiffs were aware of the Defendant since
1985 and which knowledge is attributable to a purported shop
being opened by the brother-in-law of a former partner of the
Plaintiffs. The partner of the Plaintiffs had as mentioned retired
almost a decade earlier to the purported opening of the shop. It is
very much believable that the Plaintiffs were not aware of such
shop being opened and had not permitted the same.
116. The Defendant's case of acquiescence on the
part of the Plaintiffs, in my prima facie view, does not satisfy the
tests that establish a defence of acquiescence. The Defendant's case
of acquiescence is that the Plaintiffs have knowledge of the
Defendant coupled with tardiness of coming to the Court and
which according to the Defendant amounts to the Plaintiffs
acquiescence to the Defendant's use of its mark REGAL. The
Supreme Court in Power Control Appliances (Supra) laid down the
requirements for establishing acquiescence. These requirements
have been highlighted in the submissions on behalf of the
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Plaintiffs. It would be necessary to reproduce paragraph 26 of
Power Control Appliances (Supra) which reads thus:-
"(26) Acquiescence is sitting by, when another is
invading the rights and spending money on it. It is a
course of conduct inconsistent with the claim for
exclusive rights in a trade mark, trade name etc. It
implies positive acts; not merely silence or inaction
such as is involved in laches. In Harcourt V. White Sr.
John Romilly said : "It is important to distinguish
mere negligence and acquiescence." Therefore,
acquiescence is one facet of delay. If the plaintiff
stood by knowingly and let the defendants build up
an important trade until it had become necessary to
crush it, then the plaintiffs would be stopped by their
acquiescence. If the acquiescence in the infringement
amounts to consent, it will be a complete defence as
was laid down in Mouson (J.G.) and Co. V. Boehm.
The acquiescence must be such as to lead to the
inference of a licence sufficient to create a new right
in the defendants as was laid down in Rodgers V.
Nowill.
117. Thus, the Supreme Court in the said decision
held that acquiescence implies positive acts, not merely silence or
inaction such as involved in laches. This has been followed in by
the Division Bench of this Court in Torrent Pharmaceuticals
(Supra). Paragraphs 88 to 89 are relevant to be reproduced and
read thus:-
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"(88) Equally, the learned Single Judge was wrong
in refusing the injunction on the ground of delay
and acquiescence. It was conceded by Mr.
Dwarkadas before the learned Single Judge and
before us as well that mere delay is inconsequential.
Acquiescence is a facet of delay. However, the
defence of acquiescence can succeed when the
plaintiff assents to or lays by wholly to the acts of
another person. The learned Single in para 34
correctly notes down the principle that mere silence
or inaction of the kind involved in laches cannot be,
therefore, laying by. The former principle, namely,
sitting by or laying by is involved in laches and that
means that the claimant knew of the invasion of his
rights and did nothing about it. This conduct of the
plaintiff is inconsistent with the claim of exclusivity.
The learned Judge holds in this case that there is a
refusal or failure to act on the part of the plaintiff
despite knowledge of invasion and opportunity to
stop it. The learned Judge says that this is not a case
of pure delay or being late in coming to the court,
but of tardiness with knowledge. When, the learned
Judge says that acquiescence demands a positive act
and nothing further, then, the aspect of delay or
being late in coming to the court is not a positive
act. It does not mean a letter of approval either.
Acquiescence is the species of estoppel and
therefore, rule of evidence and rule of equity. It
essentially means an assent to an invasion of rights.
Then, he culls out this principle and applies it to the
faces and circumstances of the case."
"(89) The learned Judge then attributes
acquiescence to the plaintiff. The plaintiff's
predecessor in title did not object to the trade mark
registration application. It allowed others to do so
and it is the plaintiff's failure to bring a suit on
service of a caveat. Thus, there is no objection from
the plaintiff. It only means that the plaintiff kept
quiet when the application for registration was
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made by the defendant. They failed to object to the
advertisement of the defendant's application or
when the defendant brought its project in market.
They did not object to other entities introducing
their products in the market either. This is enough to
assume acquiescence. We do not think this to be the
position on facts and in law. A plea of acquiescence
to be raised in defence so as to succeed ought to be
supported by weighty materials to that effect. Since
the learned Single Judge has referred to the
judgment of the Hon'ble Supreme Court in the case
of M/s. Power Control Appliances and Ors. vs.
Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448 , we
would refer to it in some details. Paras 4, 5, 7, 11,
12, 13, 14, 15 and 16 of this judgment were heavily
relied upon by Mr. Tulzapurkar. In that, the facts and
the submissions are summarized. Then, in para 20,
the argument of the respondent before the Hon'ble
Supreme Court was set out. In paras 27, 28, 29 and
30, the English judgments were noted and up to
para 31. Thereafter, the decisions rendered by our
Hon'ble Supreme Court and other courts have been
noted."
118. The Division Bench of this Court has held that
the aspect of delay or being late in coming to the Court is not a
positive act. The plea of acquiescence to be raised in defence so as
to succeed ought to be supported by weighty materials to that
effect.
119. In my prima facie view, the requirement for
establishing acquiescence laid down by the Supreme Court in
Power Control (Supra) and followed by Division Bench of this
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Court in Torrent Pharmaceuticals (Supra) has not been met in the
present case. The Defendant has not been able to refer to a single
positive act of the Plaintiffs encouraging its business. At the highest
the Defendant has been able to establish the Plaintiffs knowledge
of the Defendant in 2006. Infact, the Plaintiffs by filing notice of
opposition against the Defendant's application for registration of
the trade mark 'REGAL' constitutes a "negative act" on the part of
the Plaintiff whereby the Plaintiffs have not only specifically
apprised the Defendant of their statutory and common law rights
in the trade mark 'REGAL' but also put the Defendants to notice as
to their objection to the use of the Defendant's impugned trade
mark REGAL. It has been held in Aristo Pharma (Supra) that
opposition of application for trade mark registration militates
against acquiescence. I do not accept the attempt made by Dr.
Saraf to distinguish this decision on facts.
120. The Plaintiffs have succeeded in having the
Defendant's application for registration of trade mark rejected.
Reference is made to the Trade Mark Registrar's order dated 11th
February, 2020 which is under challenge in Appeal filed by the
Defendant before this Court.
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121. The view taken by the Single Judge in Essel
Propack (Supra) and Unichem Laboratories (Supra) that
knowledge of Defendant coupled with tardiness in bringing an
action for infringement amount to acquiescence is no longer good
law in view of the decision of the Division Bench of this Court in
Torrent Pharmaceuticals (Supra). Further, the decision of the
Single Judge of this Court in Unichem Laboratories (Supra) has
not considered the decision of the Division Bench of this Court in
Schering Corp. (Supra), where the Division Bench has held that
once the Defendant is put to notice of a Plaintiffs right, his
continued infringement is at his peril. It could not thereafter claim
equity. It is also necessary to note that the Single Bench decision in
Torrent Pharmaceuticals (Supra) which has also held that tardiness
and knowledge of the Defendant constitutes acquiescence has been
reversed in Appeal by the Division Bench. Thus, for acquiescence
there must be positive acts supported by weighty material as it
entails an equitable defeasment of a statutory right conferred upon
a party. The view taken by the Division Bench of this Court in
Torrent Pharmaceuticals (Supra) has been upheld by the Supreme
Court in Wockhardt Ltd. (supra). Thus, in my prima facie view, the
Defendant has not been able to establish a case of acquiescence.
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122. I am of the prima facie view that the Plaintiffs
have made out a case for infringement as well as of passing off.
The Plaintiffs case of passing off is made out particularly
considering that the rival marks are identical and used for identical
goods / services. Further, the case for infringement is made out in
view of the prima facie findings that the Plaintiffs have been able
to establish user since 1954 including goodwill and reputation and
the Defendant being a junior user, as well as other prima facie
findings of the Defendant failing to establish honest concurrent use
as well as its case of acquiescence not having been made out. I
further find that the balance of convenience is also in favour of the
Plaintiffs considering the "comparable strength" principle laid
down by the Supreme Court in Cadila Healthcare Ltd. (Supra)
which can be determined at the interlocutory stage in trade mark
matters. There will be irreparable injury caused to the Plaintiffs in
the event the interim reliefs are not granted which far outweighs
the prejudice caused to the Defendant who had only one shop
prior to the filing the Suit and thereafter has opened two shops on
"no equities basis" as per ad-interim orders dated 24th July, 2017
and 4th September, 2018 passed by this Court in the present
Notice of Motion.
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123. In view thereof, the relief sought for in the
Notice of Motion requires to be granted as under:-
(i) The Notice of Motion No.516 of 2017 is made absolute in
terms of prayer clauses (a) and (b) which read thus:-
"(a) that pending the hearing and final disposal of the
suit, the Defendant by itself, its partners, proprietors,
servants, agents, dealers, distributors and all persons
claiming under it be restrained by temporary order and
injunction of this Hon'ble Court from infringing the
Plaintiffs' registered trade mark "REGAL" bearing
Registration No.284961 in Class 25 by using the
impugned trade mark "REGAL" as its trade name or part
of its trade name or name of its business concern or part
of name of its business concern dealing in footwear and/
or by using the impugned trade mark "REGAL" or any
other trade mark containing the word "REGAL" and/or
any other trade mark identical with and are deceptively
similar to the Plaintiffs' said registered trade mark upon
and in respect of footwear or similar goods or in any
other manner whatsoever and from infringing the
Plaintiffs' registered trade mark "REGAL" bearing
Registration No.1278782 in class 42 by using the
impugned trade mark "REGAL"/ "REGAL FOOTWEAR" or
any other trade mark containing the word "REGAL" and/
or any other trade mark identical with and/or
deceptively similar to the Plaintiffs' said registered trade
mark upon and in respect of retailing of footwear and/or
for running shops/ stories for sale of footwear or similar
services;"
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"(b) that pending the hearing and final disposal of the
suit, the Defendant by itself, its partners, proprietors,
servants, agents, dealers, distributors and all persons
claiming under it be restrained by temporary order and
injunction of this Hon'ble Court from manufacturing,
marketing, selling, trading in and/or otherwise dealing
in footwear or the like goods under the impugned trade
name "REGAL FOOTWEAR" or any other trade name
containing the word REGAL or any other trade name
deceptively similar thereto; and from manufacturing,
marketing, selling, trading in and/or otherwise dealing
in footwear bearing the trade mark "REGAL" or any other
trade mark containing the trade mark REGAL or any
other trade mark deceptively similar thereto, so as to
pass off or enable others to pass off the Defendant's
goods and/or business as and for the Plaintiffs' well
known goods and/or business or in any other manner
whatsoever;"
(ii) The Notice of Motion No.516 of 2017 is accordingly
disposed of.
(iii) In view of this judgment and order, Notice of
Motion No.1841 of 2018 does not survive and is accordingly
disposed of.
124. Dr. Saraf, learned Senior Counsel appearing for
the Defendant has sought for a stay of judgment and order.
Considering that, the Defendant has been operating the shops
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under the trading name and mark "REGAL" for considerable length
of time, including the first shop which was opened according to the
Defendant in 1963, there will be a stay to the execution and
implementation of the judgment and order for a period of four
weeks from today.
( R. I. CHAGLA J. )
