[Cites 41, Cited by 0]
Bombay High Court
Chemco Plastic Industries Pvt Ltd vs Chemco Plast on 3 December, 2025
Author: N. J. Jamadar
Bench: N. J. Jamadar
2025:BHC-OS:23282
-IA-2165-2024-.DOC
Arun Sankpal
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION NO. 2165 OF 2024
IN
COMMERCIAL IP SUIT NO. 80 OF 2024
Chemco Plastic Industries Pvt Ltd., ...Applicant/
a company incorporated under the provisions of Org Plaintiff
the Companies Act, 1956, having its registered
address at 78, Virwani Industrial Estate,
Western Express Highway, Goregaon(East),
Mumbai, Maharashtra - 400 063 and
corporate office at Chemco House,
D Sukhadwala Road, Fort, Mumbai,
Maharashtra - 400 001.
In the matter between
Chemco Plastic Industries Pvt Ltd., ..Plaintiff
a company incorporated under the provisions of
the Companies Act, 1956, having its registered
address at 78, Virwani Industrial Estate,
Western Express Highway, Goregaon(East),
Mumbai, Maharashtra - 400 063 and
corporate office at Chemco House,
ARUN
D Sukhadwala Road, Fort, Mumbai,
RAMCHANDRA
SANKPAL Maharashtra - 400 001.
Digitally signed by
ARUN
RAMCHANDRA
SANKPAL
Versus
Date: 2025.12.03
20:50:30 +0530
M/s Chemco Plast,
a registered partnership firm
through its partner Alok Maheshwari,
having its office at 2, Ganesh Kripa CHS Ltd,
behind Rajendra Park, Station Road,
Goregaon(West), Mumbai - 400 104
and factory at F-3,
1/64
::: Uploaded on - 03/12/2025 ::: Downloaded on - 03/12/2025 21:46:26 :::
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Udyog Nagar Industrial Estate, (0.1.D.C.),
Ringanwada, Nani Daman, Daman - 396210. ...Defendant
Dr Veerendra Tulzapurkar, Senior Advocate, with Hiren Kamod,
Farhad Sorabjee, Pratik Pawar, Siddhesh S. Pradhan, Meher
Mistri and Aneez Patel, i/b J Sagar Associates, for the Plaintiff
in COMIP/80/2024, and for the Applicant in IA/2165/2024.
Mr. Rashmin Khandeka, with Anand Mohan, Maitri Asher and I.K.
Paranjape, i/b W.S. Kane & Co, for the Defendant in COMIP/80
of 2024 and for the Respondent in IA/2165/2024.
CORAM: N. J. JAMADAR, J.
RESERVED ON: 20th JUNE 2025
PRONOUNCED ON: 3rd DECEMBER 2025.
ORDER:
1. This Interim Application is filed to restrain the Defendant
from infringing all or any of the Plaintiff's/Applicant's mark, "CHEMCO"
by use of the impugned mark "CHEMCO", the impugned trading name
"CHEMCO PLAST" and/or the impugned domain name,
"www.chemcoplast.com" and/or any other trade mark/trading
name/domain name which is identical with and/or deceptively similar
to the Applicant's registered Mark, "CHEMCO" and also to restrain the
Defendant from using the impugned mark, trading name and/or
domain name so as to pass off or enable others to pass off the
Defendant's business and/or the impugned goods as and for the
Applicant's business and/or the said goods or in any other manner
whatsoever, and for appointment of the Court Receiver.
2. The background facts can be stated as under:
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2.1 The Plaintiff is the flagship company of CHEMCO
group. The Plaintiff is engaged in the business of inter alia,
manufacturing and trading in a wide range of plastic goods such
as bottles, bottle cap closures, water filters, dispensers, home
beautification items, PET preforms, containers, jars etc under the
trade mark "CHEMCO". The Plaintiff's trading name also contains
the Plaintiff's trade mark, "CHEMCO" as its leading, prominent
and essential part. The Plaintiff claims the goods emanating from
the Plaintiff's are well-known for their superior and high quality
and technical excellence.
2.2 The Defendant is a registered partnership firm. The
Defendant is also engaged in the business of manufacturing of
plastic articles similar to those manufactured by the Plaintiff.
2.3 M/s Chemco Supply Corporation, according to the
Plaintiff, was the predecessor-in-title of the Plaintiff. Under the
Deed of Assignment dated 11th September 1980, M/s Chemco
Supply Corporation sold its entire business as a running concern
to M/s Chemco Plastic Corporation, a partnership firm.
Ramawatar Saraogi (Promoter of the Plaintiff) was one of the
partners of M/s Chemco Plastic Corporation. On 14 th November
1985 upon retirement of all other partners Mr. Ramawatar
Saraogi and Bimla R. Saraogi (Promoters of the Plaintiff) entered
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into a Deed for the reconstituted partnership of M/s Chemco
Plastic Corporation.
2.4 On 6th February 1996, the partners of M/s Chemco
Plastic Corporation incorporated the Plaintiff as a private limited
company to consolidate the business activity of the said firm.
2.5 The Plaintiff claims, the Plaintiff through its
promoters and predecessor-in-title has been in undisputed and
uninterrupted possession and use of the mark, "CHEMCO" since
1973. The mark "CHEMCO" is inherently distinctive.
2.6 The Plaintiff got its mark "CHEMCO" (word per se)
registered on 6th May 2014 and the logo on 30th August
2016, under Class 21. The Plaintiff has secured registration of
various trade marks under other Classes as well.
2.7 It is the claim of the Plaintiff that in or around
September 2015, the Plaint learnt that the Defendant was
carrying on a competing business of manufacturing and sale of
plastic jars, containers, bottles etc (the impugned goods) which
are identical with and/or similar to the Plaintiff's good, under the
impugned trading name, "CHEMCO PLAST". A cease and desist
notice dated 19th September 2015 was addressed to the
Defendant. As there was no response, a follow up notice dated
12th October 2015 was addressed to the Defendant. Vide Reply
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dated 14th October 2015, the Defendant contested the claim of
the Plaintiff.
2.8 It transpired that the Defendant had attempted to
seek registration of the impugned mark, "CHEMCO" under
Classes 17, 35 and 21 on "proposed to be used" basis. Eventually
the Defendant abandoned those Applications. Another effort was
made on 5th January 2017 to register the impugned mark
"CHEMCO" with purported prior use since 22nd August 1998
under Class 21. That Application was also eventually abandoned.
2.9 In the meanwhile, the Plaintiff received
communication from its customers which indicated that the
Plaintiff's customers were misled into believing that the Plaintiff
and the Defendant were one and the same entity. The Defendant
was thus misusing the goodwill and repute of the Plaintiff's
trading name and mark, "CHEMCO" for its commercial gain. As a
part of its strategy to obtain undue advantage on 12th January
2019, the Defendant filed a fresh Application under Class 35
seeking registration of the impugned mark, "CHEMCO". The said
Application was opposed by the Plaintiff. The opposition
proceedings are pending hearing and final disposal before the
Trade Mark Registry.
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2.10 As the infringement of the trade mark, trading name
and domain name, of the Plaintiff continued unabated, the
Plaintiff initiated criminal action against the Defendant. Despite
numerous complaints, there was no action by the Police. The
Defendant, however, continues to misuse and infringe the
Plaintiff's mark, "CHEMCO" with impunity. The Defendant's
adoption and use of the impugned "CHEMCO" mark is a
deliberate, fraudulent and dishonest attempt to encash upon the
enviable reputation and goodwill of the Plaintiff and make illicit
gain. The Defendant's usage of the Plaintiff's mark is ex-facie
unlawful and in breach of the provisions of the Trade Marks Act
1999. The Defendant is gaining an unfair advantage to the
detriment of the distinctive character and repute of the Plaintiff's
well-known mark, "CHEMCO". The Plaintiff was thus constrained
to institute the instant Suit.
2.11 The Plaintiff has taken out the instant Application for
interim relief as the infringement of the Plaintiff's trade mark,
trading name and domain name is blatantly malicious, dishonest
and fraudulent. The use of the mark, "CHEMCO" is not bona fide.
There are, thus, no equities in favour of the Defendant. Hence
this Application for interim reliefs, as described above.
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3. The Defendant resisted the Application by filing an
Affidavit in Reply. The Defendant has denied the averments in the
Application adverse to the interest of the Defendant. The tenability of
the Suit was put in contest.
3.1 The Defendant controverted the claim of the Plaintiff
that the Plaintiff is a prior user of the mark, "CHEMCO".
According to the Defendant its predecessor-in-title M/s Chemco
Industries has been engaged in the business of manufacturing and
dealing in plastic goods since the year 1977 under the trading
name and style, "CHEMCO". Kailash Parasrampuria and Hemant
Parasrampuria were the partners of M/s Chemco Industries.
3.2 Since 1977, the Defendant and its predecessor-in-
interest have been openly, widely and continuously engaged in
the business of the manufacturing and dealing in plastic and
electrical goods under the trading name, "CHEMCO". A reference
is made to the invoices raised by the Defendant and the approval
obtained by the Defendant from various Regulatory and Revenue
Authorities, including the Sales Tax Department and Factories
Department. On the basis of the bona fide, continuous and
uninterrupted user of the name, "CHEMCO PLAST" the
Defendant claims to have acquired wide reputation and goodwill
in its trade name, "CHEMCO".
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3.3 The Plaintiff's claim was stated to suffer from vice of
suppressio veri and suggestio falsi. The Plaintiff has allegedly
suppressed the date of the knowledge of the use of the mark,
"CHEMCO". According to the Defendant, much prior to
September 2015, the period during which the Plaintiff claimed to
have become aware of the alleged infringement, the employees of
the Plaintiff and the Defendant have had business relations.
Moreover, when requistions were received from the customers of
the Plaintiff, the Defendant directed them to the Plaintiff. The
Plaintiff had deliberately suppressed its interaction with the
Defendant and actual date of knowledge of the user of the mark
and trading name by the Defendant. It was further contended
that the Plaintiff and the Defendant were members of the Plastic
Manufactures Association and, thus, the claim of the Plaintiff that
it was not aware of the use of the mark by the Defendant was
inconceivable.
3.4 The Defendant further contends the goods
manufactured and sold by the Plaintiff and Defendant and their
respective target customers are starkly different. Therefore, there
was no likelihood of confusion between the rival trade names as
alleged by the Plaintiff. The use of "CHEMCO" by the Defendant
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is only as a trade name and the same bears no mention of any of
the goods manufactured and sold by the Defendant.
3.5 With regard to the domain name, the Defendant
contended that the Defendant's domain name,
"www.chemcoplast.com" was registered prior to the registration
of the Plaintiff's domain name, i.e., 17 th March 2006. It, therefore,
defies comprehension that for a over decade of the Defendant
using it's domain name containing the word "CHEMCO", the
Plaintiff did not come across the Defendant or it's domain name.
3.6 On account of definitive positive act on the part of
the Plaintiff in engaging in business with the Defendant, and on
account of inordinate delay in initiating action, the Plaintiff's
claim is barred by delay, laches and acquiescence. In the face of
multitude of common business links between the Plaintiff and the
Defendant who operate in a small business segment, it is
inconceivable that the Plaintiff would not have known the use of
the mark, "CHEMCO" by the Defendant especially when the
Defendant has been openly using the mark since the year 1977.
3.7 With regard to the passing off action, the Defendant
claims the rival goods manufactured by the Plaintiff and the
Defendant are consumed by completely different consumers. The
business of the Plaintiff is that of a B2C nature and the Defendant
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operates on a B2B model and manufactures the goods for the
purpose of the bulk consumption or made to order. At any rate,
the Defendant does not manufacture its goods under the trade
mark, "CHEMCO". The said word is used only as a trading name.
In substance, the Defendant contends the Plaintiff has failed to
make out a strong prima facie case and the balance of
convenience tilts in favour of the Defendant.
4. After the initial pleadings a number of further Affidavits
were filed on behalf of the Plaintiff and the Defendant. A detail
reference to all the contentions in of each of the Affidavits is not
warranted. Suffice to note that the controversy between the parties
revolves around the question as to who of the parties is prior user of the
mark, "CHEMCO", whether there is material to show that the Plaintiff
and the Defendant are entitled to claim the benefit of the purported
prior user of the said mark, "CHEMCO" by their respective predecessor-
in-interest, whether there is acquiescence on the part of the Plaintiff and
whether, in the totality of the circumstances, the Plaintiff is entitled to
the interim reliefs.
5. The Court, therefore, considers it appropriate to refer to the
relevant further pleadings wherever warranted. It is also necessary to
note that the parties have placed on record a number of documents to
substantiate their rival claims. Reference to the documents which are
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necessary for the determination of the Application would be made at an
appropriate stage.
6. In the backdrop of the aforesaid pleadings and the material
on record, I have heard Dr. Veerendra Tulzapurkar, the learned Senior
Advocate for the Plaintiff, and Mr. Rashmin Khandekar, the learned
Counsel for the Defendant, at length. The learned Counsel took the
Court through the pleadings and the documents on record.
7. At the outset, Dr. Tulzapurkar, the learned Senior Advocate,
submitted that the entire controversy boils down to the question as to
whether the Plaintiff is the prior adopter of the mark, "CHEMCO" or the
Defendant is the prior user of the said mark. The aforesaid question,
according to Dr. Tulzapurkar, is required to be answered in the light of
the uncontroverted facts that the Plaintiff is a registered proprietor of
the trade mark, "CHEMCO". Incontrovertibly, the Defendant has been
using the mark, "CHEMCO", the trading name, "CHEMCO PLAST" and
the domain name, "www.chemcoplast.com". Indisputably, the Defendant
had not secured any registration for the impugned mark.
8. Inviting attention of the Court to the documents which
show the nature and description of the goods manufactured and sold by
the Plaintiff and the Defendant, Dr. Tulzapurkar would urge that, the
goods manufactured and sold by the Plaintiff and Defendant are similar.
The Plaintiff's mark and impugned mark are identical. The Plaintiff's
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mark is registered in the same Class, i.e., Class 21 in respect of which
the Defendant has been using the impugned mark. The rival goods are
sold by the parties through the same trade channel and have common
purchasers. With reference to the nature of the goods manufactured and
sold, the queries/requisitions received from the customers, Dr.
Tulzapuarkar would urge that, the confusion is bound to arise and has,
in fact, arisen even in the mind of discerning customers.
9. Dr. Tulzapurkar would urge, since the rival marks and rival
goods are identical, the infringement in question squarely falls within
the ambit of Section 29(2)(c) of the Act, 1999 and, resultantly, it is
required to be presumed that the use of the impugned trade mark by
the Defendant is likely to cause confusion on the part of the public as
provided in Section 29(3) of the Act, 1999.
10. Dr. Tulzapurkar submitted that the contention of the
Defendant that the goods manufactured and sold by the Plaintiff and
the Defendant are dissimilar is demonstrably untenable. A bare perusal
of the documents which evidence the nature of the goods manufactured
and sold by the Plaintiff and the Defendant would indicate that the
goods are identical and are put for a similar use. It was submitted that
the question of similarity of the goods cannot be tested on the basis of
the the Classes in which the marks are registered but adopting a
business and common sense approach. To buttress this submission, Dr.
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Tulzapurkar placed reliance on the decisions in the cases of Allied Auto
Accessories Ltd Vs Allied Motor Pvt Ltd1 and Eagle Potteries Pvt Ltd Vs
Egale Flask Industries Pvt Ltd.2 Moreover, the Plaintiff has brought
material on record to show the instances of actual confusion amongst
the customers and the members of the public.
11. In the alternative, Dr. Tulzapurkar would urge, the
Plaintiff's mark, "CHEMCO" is a "well-known mark". Consequently, the
use of the impugned mark by the Defendant even in respect dissimilar
goods amounts to infringement of the Plaintiff's registered trade mark
under Section 29(4) of the Act. By placing on record voluminous
material in the nature of the Annual Financial Statements, Chartered
Accountant's Certificate and the details of expenditure on sales and
promotion and the manner in which the Plaintiff's goods are received in
the market, according to Dr. Tulzapurkar, the Plaintiff has conclusively
demonstrated that the Plaintiff's mark has an enviable reputation in
India and the use of the impugned mark by the Defendant is without
due cause. Once it is established that the mark is a 'well-known mark',
even the likelihood of confusion pales in significance. To this end, Dr.
Tulzapurkar placed reliance on the judgments in the cases of RPG
Enterprises Ltd Vs Riju Ghoshal & Anr,3 KSB Aktiengesellschaft & Anr Vs
1 2022 SCC OnLine Bom 1138.
2 1992 SCC OnLine Bom 490.
3 2022 SCC OnLine Bom 626.
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KSB Real Estate and Finance Private Limited 4 and Rolex SA Vs Alex
Jewellery Pvt Ltd & Ors.5
12. Dr. Tulzapurkar submitted that the material on record
makes out a strong prima face case of passing off. All the ingredients to
sustain an action of passing off namely; i) goodwill and reputation, ii)
likelihood of deception and confusion by the Defendant's use of the
impugned trade mark, and, iii) likelihood of injury to the Plaintiff by
such use, are satisfactorily made out. The instances of the actual
confusion were pressed into service by Dr. Tulzapurkar to substantiate
the claim of the Plaintiff.
13. In the case at hand, Dr. Tulzapurkar would urge, the goods
are similar and even when the goods are totally dissimilar, an action for
passing off can be sustained where such goods are sold under the
Plaintiff's trade mark or trade mark deceptively similar and there is a
real likelihood of confusion or deception being caused among the
public. To bolster up this submission and sustain the prayer for
restraint against passing off, Mr. Tulzapurkar placed reliance on the
judgments in the cases of RPG Enterprises (Supra), S Sayed Mohideen
Vs P. Sulochana Bai,6 Laxmikant Patel Vs Chetanbhai Shah & Anr, 7
4 Notice of Motion No. 4019 of 2007 in Suit No. 2930 of 2007, order
dated 11th February 2008.
5 2014 SCC OnLine Del 1619.
6 (2016) 2 SCC 683.
7 (2002) 3 SCC 65.
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Cadila Health Care Ltd Vs Cadila Pharmaceuticals Ltd, 8 Kirloskar Diesel
Recon Pvt Ltd & Anr Vs Kirloskar Proprietary Ltd, 9 Sunder Parmanand
Lalwani Vs Caltex (India) Ltd,10 Bata India Limited Vs Pyare Lal & Co 11
and International Society for Krishna Consciousness (ISKCON) Vs Iskon
Apparel Pvt Ltd.12
14. The defence of vested interest based on prior user of the
impugned mark "CHEMCO", was also stated to be unsustainable. On the
one hand, the Plaintiff has demonstrated that the Plaintiff is both a
registered proprietor of the mark, "CHEMCO" and also prior user
thereof. On the other hand, the Defendant has singularly failed to bring
material on record to show the alleged user of the impugned mark by
the predecessor-in-title of the Defendant. At any rate, the Plaintiff has
shown prior user with effect from 4th April 1998. In contrast, the prior
user of the Defendant as such is, at best, from the year 1999.
Consequently, the Plaintiff's user and registration being prior to the
Defendant's use, the Defendant is not entitled to benefit of the
provisions contained in Section 34 of the Act, 1999. A strong reliance
was placed by Dr. Tulzapurkar on the judgment in the case of Kamat
Hotels (India) Ltd Vs Royal Orchid Hotels Ltd13
8 (2001) 5 SCC 73.
9 1995 SCC OnLine Bom 312.
10 1965 SCC OnLine Bom 151.
11 1985 SCC OnLine All 79.
12 2020 SCC OnLine Bom 729.
13 2011 (4) MhLJ 71.
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15. With regard to the defence of delay and acquiescence, Dr.
Tulzapurkar submitted that mere delay by itself, without anything more,
would not be an impediment in restraining infringement of a trade
mark, as the infringement of the mark constitutes a continuing cause of
action and the registered proprietor of the marks suffers injury
everyday. In support of the aforesaid submission, Mr. Tulzapurkar placed
reliance on the judgments in the cases of Midas Hygiene Industries Pvt
Ltd Vs Sudhir Bhatia & Ors,14 Schering Corporation Vs Kilitch Co
(Pharma) Pvt Ltd15 and Cadila Pharmaceuticals Ltd Vs Sami Khatib of
Mumbai16
16. Refuting the contention on behalf of the Defendant that the
action is inordinately delayed and it is barred by acquiescence, Dr.
Tulzapurkar submitted that no sooner the Plaintiff became aware of the
infringement of its marks in the year 2015, cease and desist notice was
issued and the Plaintiff also filed criminal complaint with the police.
Consequently, it cannot be said that there was acquiescence by positive
acts. On the contrary, the steps taken by the Plaintiff would show that
the Defendant continued to infringe the mark of the Plaintiff with full
knowledge that the Plaintiff was the registered proprietor of the mark.
In any event, it was incumbent upon the Defendant to cause a search of
14 (2004) 3 SCC 90.
15 1990 SCC OnLine Bom 425.
16 2011 SCC OnLine Bom 484.
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the Trade Mark Registry and ascertain whether there was a prior user of
the impugned mark. In the absence thereof, the Defendant is not
entitled to take the plea of acquiescence. Reliance was also placed by
Dr. Tulzapurkar on the judgment in the case of Bal Pharma Ltd Vs
Centaur Laboratories Pvt Ltd.17
17. Amplifying the submission, Dr. Tulzapurkar submitted that
to succeed in the plea of acquiescence there ought to be an element of
honesty in the adoption of the mark. If the adoption of the mark is itself
dishonest, as is the case at hand, defence of acquiescence is not
available. Placing reliance on the judgment of the Supreme Court in the
case of Power Control Appliances Vs Sumeet Machines Pvt Ltd 18 and a
Division Bench judgment of this Court in the case of Torrent
Pharmaceuticals Limited Vs Wockhardt Limited and Ors 19 which was
affirmed by the Supreme Court in Wockhardt Limited Vs Torrent
Pharmaceuticals Limited & Anr,20 Dr. Tulzapurkar would urge mere
delay in approaching the Court by itself does not amount to a positive
act to constitute acquiescence. On the contrary, in the facts of the case,
the actions on the part of the Plaintiff constitute negative acts. Support
was sought to be drawn from the judgments in the cases of Jagdish
17 2001 SCC OnLine Bom 1176.
18 (1994) 2 SCC 448.
19 2017 SCC OnLine Bom 9666.
20 (2018) 18 SCC 346.
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Kamath Vs Lime and Chilli Hospitality Services, 21 Willmott Vs Barber22
and Abdul Rasul Nurallah Virjee & Anr Vs Regal Footwear.23
18. In the totality of the circumstances, according to Dr.
Tulzapurkar, a very strong prima facie case was made out to grant
interim reliefs. Lest the Plaintiff would suffer irreparable loss.
19. Per contra, Mr. Rashmin Khandekar, the learned Counsel for
the Defendant, stoutly resisted the submissions on behalf of the
Plaintiff. First and foremost, Mr. Khandekar would urge the Plaintiff's
claim of user of the mark, "CHEMCO" since 1973 is demonstrably false.
In contrast the Defendant's honest adoption and continuous use of
"CHEMCO" as a part of its trading style/business name is traceable to
Defendant's predecessor-in-interest since 1977.
20. Taking the Court through the averments in the Plaint, in
regard to the use of the mark "CHEMCO" by the purported predecessor-
in-interest of the Plaintiff, Mr. Khandekar would urge that, there is not
an iota of material to show that the assignment and transfer of
"CHEMCO" mark from M/s Chemco Plastic Corporation to the Plaintiff.
There is not a shred of material to show that the business of M/s
Chamco Plastic Corporation was purportedly consolidated into the
Plaintiff. On the contrary, the material shows that the Plaintiff was
21 2015 SCC OnLine Bom 531.
22 1879 W. 48 (Chancery Division).
23 2023 SCC OnLine Bom 10.
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initially incorporated as, "Net-Guard Polynet" on 6 th February 1996 and
its name was changed to M/s Chemco Plastic Corporation on 7 th May
1997. Furthermore M/s Chemco Plastic Corporation, the partnership
firm, continued to exist even after the incorporation of the Plaintiff and
that erodes the claim of the Plaintiff, that M/s Chemco Plastice
Corporation's business was consolidated into the Plaintiff irretrievably.
21. Mr. Khandekar would urge, despite filing multiple
Affidavits, the Plaintiff has failed to bring on record any material to
substantiate its case that M/s Chemco Plastic Corporation's business was
consolidated into the Plaintiff. Reliance was placed by Mr. Khandekar on
the judgment in the case of Power Control Appliances (Supra) to draw
home the point that there is one mark, one source and one proprietor.
22. According to Mr. Khandekar, due to the failure on the part
of the Plaintiff to demonstrate any assignment or transfer of the
"CHEMCO" mark from the alleged predecessor-in-interest to the
Plaintiff, the Suit itself is not tenable. To lend support to the submission
that the Plaintiff cannot claim use of the mark, as a successor-in-
interest, without producing cogent evidence, Mr. Khandekar placed
reliance on the judgments in the cases of Shemaroo Entertainment Ltd
Vs Super Cassettes Industries Pvt Ltd & Ors 24 and T. G. Balaji Chettiar
Vs Hindustan Lever Ltd, Bombay.25
24 Interim Application NO. 2987 of 2022 in Commercial IP Suit No. 297 of
2022, order dated 5th June 2023.
25 1965 SCC OnLine Mad 69.
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23. To buttress the submission that clear proof of flow of title is
required to be shown to lay claim over a mark through predecessor-in-
interest, Mr. Khandekar banked upon the judgments in the cases of Yogi
Ayurvedic Products Pvt Ltd Vs Vaishali Industries 26 and Lords Inn Hotels
& Developers Private Limited Vs Vikas Seth, Trading as Lords Residency,
Manali.27
24. Mr. Khandekar would urge, the Plaintiff had initially
annexed documents with the Plaint which indicated that the mark in
question was being used by the Plaintiff with effect from March 2003
only. When the Defendant highlighted the said fact the Plaintiff sought
to introduce the documents to show that the Plaintiff has been using the
mark since the year 1998. Banking upon the provisions contained in
Order IX of the Code of Civil Procedure, 1908 ("the Code"), as
applicable to commercial suits, Mr. Khandekar would urge, the Plaintiff
cannot be permitted to rely upon those documents, which were clearly
within the power, possession and control or custody of the Plaintiff,
when no explanation has been offered why those documents were not
produced along with the Plaint. To this end, reliance was placed by Mr.
Khandekar on the judgments in the cases of Shemaroo Entertainment
26 Interim Application No. 1598 of 2023 with Court Receiver's Report No.
288 of 2022 in Commercial IP Suit No. 45 of 2023, order dated 17 th February
2025.
27 Interim Application No. 190 of 2025 with Leave Petition (L) No. 3592
of 2025 and Commercial IP Suit No. 247 of 2024.
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Ltd (Supra), Nitin Sukanraj Jain Vs Neoliva Life Science Private
Limited28 and Khanna Rayon Industries Pvt Ltd Vs Swastik Associates
and Ors.29
25. Mr. Khandekar would further urge, even if the prior user of
the predecessor-in-title of the Defendant is discounted, there is material
to show that the Defendant has been using "CHEMCO" as a part of its
trading style/business name, openly, extensively and continuously since
1998.
26. It was submitted that, the fact that the Defendant has been
using "CHEMCO" as a part of its trading style/business name and not as
a mark is of material significance. That rules out the applicability of the
provisions contained in sub-Section (1), (2) and (4) of Section 29 of the
Act, 1999. The provisions contained in sub-Section (1), (2) and (4) of
Section 29 governs, "trade mark Versus mark" situation and have no
application where a Defendant is using a mark as a part of its
trade/business name. At best, the case of the Plaintiff would be required
to be tested on the anvil of the infringement covered by the sub-Section
(5) of Section 29. For the said purpose, the identity of goods is a
prerequisite. The material on record, according to Mr. Khandekar, would
clearly indicate that the provisions contained in sub-Section (5) of
Section 29 are not attracted to the facts of the case. A very strong
28 Interim Application (L) No. 17260 of 2023 in Commercial IP Suit No.
451 of 2022.
29 2023 SCC OnLine Bom 1372.
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reliance was placed on the Full Bench judgment of this Court in Cipla
Ltd Vs Cipla Industries Pvt Ltd, Delhi.30
27. Since the Plaintiff does not have registration for the subject
mark under Class 35, the primary ingredient of, "dealing in goods and
services in respect of which the trade name is registered" envisaged by
sub-Section (5) of Section 29, is not satisfied. To buttress the
submission that Section 29(5) is not applicable where the goods or
services offered by the Defendant are not identical to the one in respect
of which the Plaintiff holds a registration, Mr Khandekar placed reliance
on the judgments in the case of Raymond Ltd Vs Raymond
Pharmaceuticals Pvt Ltd31 and Mankind Pharma Ltd Vs Chandra Mani
Tiwari & Anr.32
28. On the aspect of passing off, Mr. Khandekar would urge, on
first principles, the action of passing off would not survive as the
Defendant is the prior user. Even otherwise, there is material to show
the Defendant's own/independent use of "CHEMCO" since 1998
onwards. The Plaintiff has miserably failed to demonstrate that it had
goodwill and reputation in the market as of 1998, much less substantial
goodwill/reputation. The Plaintiff has placed on record documents to
show the use of the mark since the year 2003 onwards. These
30 2017(2) MhLJ 877.
31 2010(7) MhLJ 646.
32 2018 SCC OnLine Del 9678.
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documents are of no assistance as the relevant date for reckoning the
goodwill/reputation is the date when the Defendant allegedly adopted
the impugned mark.
29. Mr. Khandekar would further urge that, the Plaintiff has
also failed to show any likelihood of deception or confusion on account
of the differences in rival businesses and discerning nature of rival
consumers. For this purpose, Mr. Khandekar placed reliance on the
judgments in the cases of Corona Remedies Private Limited Vs Franco-
Indian Pharmaceuticals Private Limited,33 Cadbury Schweppes Pty
Limited Vs The Pub Squash Co Pty Limited34 and Wyeth Holdings
Corporation Vs Burnet Pharmaceuticals (Pvt) Ltd.35
30. With regard to the delay and acquiescence, Mr. Khandekar
urged with tenacity that a clearest case of acquiescence coupled with
gross delay and laches disentitles the Plaintiff from any of the reliefs.
Several factors like online business of rival trading style/business
names, membership of the same Trading Association since 2011/12
with names appearing on the same page/one below the other in the
Members Directory, direct interaction between the employees of the
Plaintiff and Defendant and common suppliers, buyers and business
links between the Plaintiff and the Defendant were pressed into service
33 MANU/MH/0410/2023.
34 MANU/UKPC/0005/1980.
35 2008(2) Bom CR 739.
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to bolster up the submission that it is inconceivable that the Plaintiff
would not have known about the presence of, and use by, the Defendant
of "CHEMCO" as its trading name.
31. Mr. Khandekar would urge that the only inference that can
be drawn on the basis of the voluminous material is that the Plaintiff
not only sat by for several years but knowingly permitted the Defendant
to build up a formidable business under "CHEMCO" trading
style/business name and even encouraged the Defendant to do so
through the positive acts. A very strong reliance was placed by Mr.
Khandekar on the judgments in the case of Amritdhara Pharmacy Vs
Satya Deo Gupta,36 Power Control Appliances (Supra) and Yonex
Kabushiki Kaisha Vs Phillips International & Anr.37
32. Mr. Khandekar submitted that, even if a prima facie case is
presumed to exist in favour of the Plaintiff, discounting all the aforesaid
factors, yet, looked at from any perspective, the balance of convenience
firmly tilts in favour of the Defendant.
33. Indisputably, the Defendant has, on its own, been using
"CHEMCO" as a part of its trading name since the year 1998. The
Defendant has garnered a formidable business. On the own showing of
the Plaintiff, the Plaintiff became aware of the alleged infringement in
the year 2015. Yet, the Suit came to be instituted in the year 2023. In
36 AIR 1963 SC 449.
37 2007 SCC OnLine Del 1109.
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this backdrop, according to Mr. Khandekar, the balance of convenience
firmly lies in favour of the Defendant and, in such a situation, an
injunctive relief cannot be granted.
34. Lastly, Mr. Khandekar would urge, in a case of the present
nature, where there is a serious dispute in regard to the Plaintiff's title
and/or priority of user vis-a-vis Defendant's adoption/use of the
impugned name and serious issues of facts crop up, which can only be
legitimately adjudicated at the trial, interim injunction cannot be
granted. To lend support to this submission, Mr. Khandekar placed
reliance on the judgments in the cases of Uniply Industries Ltd Vs
Unicorn Plywood Pvt Ltd & Ors,38 Shamoil Ahmad Khan Vs Falguni Shah
& Ors,39 Hubbard And Anr Vs Vosper & Anr,40 Kamat Hotels (India)
Ltd(Supra) and Exegesis Infotech (India) Pvt Ltd & Anr Vs Medimanage
Insurance Broking Pvt Ltd.41
35. In Rejoinder, Dr. Tulzapurkar would submit, the balance of
convenience plays a role only in unusual circumstances and the
Defendant who blatantly infringes the registered mark cannot take
refuge under the principle of balance of convenience. To this end, Dr.
Tulzapurkar placed reliance on a Division Bench judgment in the case of
38 (2001) 5 SCC 95.
39 2020 (6) MhLJ 465.
40 (1972) 2 Q.B. 84.
41 2015 SCC OnLine Bom 3797.
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Express Bottlers Services Pvt Ltd & Anr Vs Pepsi Co Inco 42 and on an
order of a learned Single Judge in the case of Dr Ashok M. Bhat Vs
Sandeep Udai Naraian Gupta & Anr.43
36. In regard to the objection under Order IX Rule 1 of the
Code, Dr. Tulzapurkar submitted, the Plaintiff is entitled in law to rely
on documents in answer to the Defendant's contentions in Reply and,
therefore, the objection is clearly unsustainable. Reliance was placed on
a judgment in the case of Soni Music Entertainment India Private
Limited Vs Ilaiyaraaja Music N Management Private Limited & Ors.44
CONSIDERATION:
37. Evidently both the Plaintiff and the Defendant lay claim
over the use of, "CHEMCO" through their predecessor-in-title. Which of
the parties is the prior user of "CHEMCO" either individually or through
its predecessor-in-title is at the heart of the controversy. The nature of
the user of, "CHEMCO" also assumes critical significance. Whether
"CHEMCO" is used as a mark in relation to goods or services offered by
42 1991 SCC OnLine Bom 549.
43 Interim Application (L) No. 37430 of 2024 in Commercial IP Suit (L)
No. 37157 of 2024.
44 Interim Application (L) No. 25506 of 2023 in Commercial IP Suit No.
562 of 2022.
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the Defendant or it is merely used as a trading name would also bear
upon the rights and liabilities of the parties.
38. The aforesaid being the nature of the controversy, at the
outset, it may be advantageous to briefly trace the flow of title to the
mark, "CHEMCO" climaed by the Plaintiff and Defendant.
39. M/s. Chemco Supply Corporation (CSC) commenced its
operations in the year 1973. The Plaintiff claims CSC commenced the
manufacture of plastic containers in December 1973. The entire
business of CSC came to be assigned to Chemco Plastic Corporation, a
partnership between Mr. Ramawatar Saraogi, the Promoter of Plaintiff
and others. On 11th September 1980, reconstituted Partnership Deed of
Chemco Plastic Corporation came to be executed on 14 th November
1985 between Mr. Ramawatar Saraogi and Bimla R. Saraogi, the
Promoters of the Plaintiff.
40. On 6th February 1996 the Plaintiff was allegedly
incorporated as a private limited company under the name and style of
"Net-Guard Polynet Private Limited" by the partners of Chemco Plastic
Corporation. On 7th May 1997 a Certificate of Incorporation pursuant to
the name change from "Net-Guard Polynet Private Limited" to "Chemco
Plastic Corporation Limited" came to be issued.
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41. In this fashion the Plaintiff traces the use of the mark,
"CHEMCO" to M/s Chemco Supply Corporation with effect from 20 th
December 1973.
42. In contrast, Kailash Parasrampuria commenced the business
of M/s Chemco Industries in 1977. In 1978 Kailash Parasrampuria and
Sanvarmal Sharma, executed a Deed of partnership to continue the
business commenced by Kailash Parasrampuria. The partnership was
dissolved on 8th November 1980. Kailash Parasrampuria continued to
operate M/s Chemco Industries as a sole proprietor thereof from 1980
to 1987.
43. On 22nd October 1987, a Deed of Partnership was executed
between Kailash Parasrampuria and Hemant Parasrampuria to carry on
the business of Chemco Industries in partnership. In 1998, Kailash
Parasrampuria retired from M/s Chemco Industries and Hemant
Parasrampuria continued the business as a sole proprietorship.
44. On 22nd August 1998, a Deed of Partnership was executed
between Hemant Parasrampuria and others to incorporate M/s Chemco
Plast, the Defendant. On 1st April 2001, Hemant Parasrampuria retired
from the firm and the rest of the partners continued to carry on the
business in partnership. Thus, the Defendant traces the user of
"CHEMCO" to M/s Chemco Industries since the year 1977.
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45. Keeping the aforesaid historical context of the user of,
"CHEMCO" it may be appropriate to note as to how the marks have
been registered with the Trade Mark Registry. The Plaintiff first
registered the mark "CHEMCO" vide Application dated 1 st February
2012 under Class (21) with user claim from 1st April 1973. "CHEMCO"
logo was registered on 30th August 2016 with user claim from
1st April 1996. "CHEMCO" mark was again registered under Class 11
on 12th June 2023 with prior user claim from 6th March 1973. Likewise,
the mark "CHEMCO" was registered on 15 th November 2020 in Classes
20 and 22. Lastly "CHEMCO" mark was registered under Class 16 with
user claim from 6th March 1973.
46. The Defendant opposed the registration of the mark
"CHEMCO" under Class 17 with prior user claim from 6 th March 1973
and the mark, "CHEMCO" under Class 35 with user claim from 6 th
March 1973.
47. In contrast, the Applications for registration of the mark
Chemco Plast under Classes 17, 35 and 21 were abandoned by the
Defendant. The Applications dated 3rd June 2014 were filed in respect
of Chemco Plast on proposed to be used basis. An Application for
registration of the mark "CHEMCO" under Class 21 was abandoned and
another application under Class 35 with prior user claim from 9 th April
1977, awaits adjudication by Trade Mark Registry.
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48. The situation which thus obtains is that, as of the date of
the Suit, the Plaintiff has secured registration of its mark and logo
under Classes 11, 16, 20, 21 and 22. Per contra the Defendant is not the
proprietor of any registered trade mark.
49. Keeping in view these primary facts, the question of
infringement of the mark "CHEMCO" is required to be evaluated prima
facie. The Registration of the trade mark subject to the provisions of the
Trade Marks Act 1999 gives to the registered proprietor of the trade
mark the exclusive right to use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered and to
obtain relief in respect of infringement of the trade mark. The first
question that warrants consideration is, whether the infringement
would fall within the ambit of sub-Sections (1), (2) and (4) of Section
29 of the Act, 1999 or sub-Section (5) of Section 29.
50. The thrust of the submission of Mr. Khandekar was that, at
best, the case of the Plaintiff may fall within the ambit of sub-Section
(5) of Section 29 as the Plaintiff has failed to demonstrate that the
Defendant is using the registered trade mark in relation to the goods or
services in respect of which the above trade marks are registered in the
name of the Plaintiff.
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51. There is indeed a subtle yet significant distinction between
sub-Sections (4) and (5) of Section 29 of the Act, 1999. Relevant part of
Section 29 reads as under:
"29. Infringement of registered trade marks.--(1) A
registered trade mark is infringed by a person who, not
being a registered proprietor or a person using by way
of permitted use, uses in the course of trade, a mark
which is identical with, or deceptively similar to, the
trade mark in relation to goods or services in respect of
which the trade mark is registered and in such manner
as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which because of--
(a) its identity with the registered trade
mark and the similarity of the goods or
services covered by such registered trade
mark; or
(b) its similarity to the registered trade
mark and the identity or similarity of the
goods or services covered by such
registered trade mark; or
(c) its identity with the registered trade
mark and the identity of the goods or
services covered by such registered trade
mark,
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is likely to cause confusion on the part of the public, or
which is likely to have an association with the
registered trade mark.
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is likely to
cause confusion on the part of the public.
(4) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which--
(a) is identical with or similar to the
registered trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which the
trade mark is registered; and
(c) the registered trade mark has a
reputation in India and the use of the mark
without due cause takes unfair advantage
of or is detrimental to, the distinctive
character or repute of the registered trade
mark.
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his
business concern or part of the name, of his business
concern dealing in goods or services in respect of which
the trade mark is registered.
..."
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52. On their plain reading, sub-Sections (1) and (2) of Section
29 apply to "trade mark Vs mark" situation. The sub-Sections (1) and
(2) use an identical expression "uses in the course of trade". However,
they do not cover a situation when the Defendant allegedly uses a
registered trade mark as a part of his trade/business name. Sub-Section
(4) of Section 29 governs a situation where the Defendant against
whom allegations of infringement is made uses a mark in relation to the
goods or services which are not similar to those for which the trade
mark is registered. In other words, it applies when a mark is used
during the course of trade in relation to dissimilar goods.
53. Sub-Section (5), on the other hand, governs a "trade mark
Vs trade or business name" situation. Sub-Section (5) of Section 29
proscribes infringement of a trade mark by making use of the same in
the trade or business name, while dealing in goods or services in respect
of which the trade mark is registered.
54. In the case of Cipla Ltd (Supra), a Full Bench of this Court
was called upon to answer the following questions.
"(1) Where a party is found to be using a registered
trade mark as a 'name', viz., as a corporate or trading
name or style, though in respect of goods dissimilar
to the ones for which the trade mark is registered, is
the proprietor of the registered trade mark entitled to
an injunction on a cause of action in infringement
under Section 29(5) of the Trade Marks Act, 1999?
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(2) Whether the use of a registered trade mark as
corporate name or trading name or style is excluded
from the purview of Sections 29(1), 29(2) and 29(4)
of the Trade Marks Act, 1999, and whether those
Sections are restricted to the use of a trade mark 'as a
trade mark', i.e., in the 'trade marky' sense?
(3) Whether Sections 29(4) and 29(5) operate in
separate and mutually exclusive spheres, i.e.,
whether, if the defendant uses the registered trade
mark only as a corporate name or trading name or
style in respect of dissimilar goods, a Plaintiff can
have no remedy and is not entitled to an injunction?"
55. The Full Bench after pointing out the distinction between
sub-Sections (4) and (5) of Section 29 of the Act, 1999, answered the
first question in the negative and the second in the affirmative. It was
observed that sub-Sections (1), (2) and (4) of Section 29 will apply in
"trade mark Vs mark" situation. Question No.3 was also answered in the
affirmative.
56. The Full Bench pointed out the distinction between sub-
Sections (4) and (5) of Section 29 as under:
"26. Unless both the conditions are satisfied, Sub-
Section (5) will not apply. The question before us is
when the first condition of Sub-Section (5) is satisfied
but the second is not satisfied, whether Sub-Section (4)
can be invoked. In other words, the question is whether
a person who is dealing with goods or services which are
dissimilar to those for which the trade mark is
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registered, uses registered trade mark as a part of
business/corporate name, such use will attract the
mischief covered by Sub-Section (4). The plain language
used by the Sub-Sections (4) and (5) answers the
question. Sub-Section (4) provides that "A registered
trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of
permitted use, uses in the course of trade, a mark which
- (a) is identical with or similar to the registered trade
mark, and (b) is used in relation to goods or services
which are not similar to those for which the trade mark
is registered..." Thus, the provision is attracted when a
mark which is identical with or similar to registered
trade mark is used in the course of trade in relation to
goods or services which are not similar to those for
which the trade mark is registered. Whereas Sub-Section
(5) provides that "A registered trade mark is infringed by
a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his
business concern or part of the name, of his business
concern..." .
27. The Sub-Section (4) uses the words "in the course
of trade" and "in relation to goods or services" which are
absent in Sub-Section (5). The Sub-Section (5) uses the
words "......... if he uses such registered trade mark, as
his trade name or part of his trade name, or name of his
business concern or part of the name, of his business
concern.." These words are conspicuously absent in the
Sub-Section (4). The difference in the phraseology and
language used in the two Sub Sections makes it clear
that Sub-Section (4) applies in "trade mark versus mark"
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situation. It applies when the mark is used in the course
of trade in relation to goods and services. Sub-Section
(5) applies to a "trade mark versus
trade/corporate/business name" situation. It is a special
provision which is different from Sub-Sections (1), (2)
and (4). Thus, Sub-Sections (4) and (5) apply to
different situations arising out of use of a mark. Sub-
Section (5) does not make Sub-Section (4) otiose. The
fact that the definition of the word "mark" includes
"name" is of no consequence while interpreting Sub-
Sections (4) and (5). If we hold that Sub-Section (4)
will apply to those cases where the first condition of
Sub-Section (5) is satisfied but second one is not
satisfied, the requirement specifically incorporated in
Sub-Section (4) of the mark being used in relation to
goods and services will become redundant. A statute
cannot be interpreted in such a manner. The use of trade
mark as a part of corporate/business/trade name cannot
be read into Sub-Section (4)."
(emphasis supplied)
57. The question as to how the similarity or dissimilarity of the
goods, in which the Plaintiff and the Defendant are dealing in, is to be
determined next arises for consideration.
58. Dr. Tulzapurkar submitted that the defence of the
Defendant that the Defendant goods are dissimilar is plainly
unsustainable. Taking the Court through the goods manufactured by the
Plaintiff and the Defendant, as evidenced from the documents placed on
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record, Dr. Tulzapurkar would urge that the question is required to be
determined by adopting a business and common sense approach.
59. The factors which weigh in the determination of the
similarity of the goods and services are fairly well-settled. The Court is
required to take into account the nature and composition of the goods,
their respective uses and function and the trade channel through which
they are bought and sold. The matter is required to be ultimately judged
in a business sense. Reliance placed by Dr. Tulzapurkar on the decision
in the case of Allied Auto Accessories Ltd (Supra) and Eagle Potteries
Pvt Ltd (Supra) appears to be well-founded.
60. On perusal of the material on record this Court prima facie
finds that the goods manufactured by both the Plaintiff and Defendant
have an element of similarity. The specific products, variety and
refinement may be different. However, by and large, both the Plaintiff
and the Defendant are prima facie engaged in the manufacturer of the
plastic products which cater to the same customers, have similar trade
channel, and are put to similar use.
61. Dr. Tulzapurkar next submitted that even if it is assumed
that the goods manufactured by the Plaintiff and Defendant are
dissimilar yet, in view of "CHEMCO" having garnered an enviable
reputation of a "well-known brand", a case of infringement under sub-
Section (4) of Section 29 would be made out. If the case falls within
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the ambit of sub-Section (4) of Section 29, the question of similarity of
the goods pales in significance.
62. For the application of sub-Section (4) of Section 29, the
conditions that are required to be satisfied are; the registered trade
mark has a reputation in India and the use of the impugned mark is
without cause and the Defendant obtains unfair advantage of or the use
of the mark is detrimental to the distinctive character of the registered
trade mark or the reputation of the registered trade mark. If these
conditions are satisfied, the requirement of having to demonstrate the
likelihood of confusion is absent.
63. In the case of RPG Enterprises Ltd (Supra) it was
enunciated that the aforesaid features which protect the infringement in
a well-known mark afford a stronger protection to those mark that have
wide reputation without the registered proprietor of such marks having
to demonstrate the likelihood of confusion arsing from the use of an
identical or similar mark in relation to dissimilar goods and services.
CLAIM OF USER OF, "CHEMCO" BY THE PREDECESSOR-IN-INTEREST:
64. To substantiate its claim of user since 1973 traceable to the
predecessor-in-interest, reliance placed by the Plaintiff on the
Agreement for Sale dated 6th March 1973 between the M/s Virwani
Construction Company and M/s Chemco Supply Corporation, Certificate
dated 12th January 1977 granting registration to Chemco Supply
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Corporation as a small scale industry, Deed of Assignment dated 11 th
September 1980 between Chemco Supply Corporation and Chemco
Plastic Corporation and the Share Certificate issued by M/s Virwani
Industrial Premises Cooperative Society to M/s Chemco Supply
Corporation, and the audited financial statements of Chemco Plastic
Corporation for the financial year 1990-1996 prima facie appear to be
of no avail. The aforesaid documents do not vouch for the use of the
trade mark/name, "CHEMCO".
65. The two invoices dated 20th April 1989 and 5th September
1989 issued by the Chemco Plastic Corporation also do not indicate that
"CHEMCO" or "CHEMCO PLAST" was used either as a trade mark or
trade name. The invoices were issued in the trade name, "Chemco
Plastic Corporation". The device mark in respect of which the Plaintiff
has obtained the registration does not find mention in any of the
invoices.
66. In the aforesaid backdrop, the moot question that comes to
the fore is, whether there is material to show any assignment of the
trade mark/name, "CHEMCO" from the predecessor-in-interest of the
Plaintiff.
67. The aforesaid documents though indicate continuous
business activities at one and the same premises in plastic blow
moulded containers (jars, jerry cans and carboys), as the certification of
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registration as a small scale industry shows, the assignment or transfer
as such of the trade mark/name "CHEMCO" is prima facie not evident
from one entity to the succeeding entity.
68. It is the claim of the Plaintiff that the Plaintiff-company was
incorporated in 1996 by the partners of "M/s Chemco Plastic
Corporation" with a view to consolidate the business of the said firm
into a private limited company. Whether there is material which prima
facie lends credence to this claim?
69. First and foremost, it is necessary to note the Plaintiff-
company was initially incorporated as, "Netguard Polynet Pvt. Ltd" on
6th February 1996. The Memorandum of Association of the Plaintiff does
not give any indication that the said company was incorporated to
consolidate the business of M/s Chemco Plastic Corporation. Evidently,
pursuant to the certificate of change of name, the name of the Plaintiff
was changed to, "Chemco Plastic Industries Private Limited" from
"Netguard Polynet Pvt. Ltd".
70. Secondly, the material on record indicates that, even after
the incorporation of the Plaintiff M/s Chemco Plastic Corporation
continued to exist as a partnership firm. This factor, prima facie, runs
counter to the claim of the Plaintiff that the Plaintiff-company was
incorporated to consolidate the business of M/s Chemco Plastic
Corporation.
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71. An endeavour was made on behalf of the Plaintiff to the
salvage position by asserting that the promoters of the Plaintiff and
partners of M/s Chemco Plastic Corporation are one and the same and
the change in the name of the Plaintiff-company occurred much prior to
the date on which the Defendant was incorporated as a partnership
firm.
72. I am afraid the aforesaid factors advance the cause of the
submission on behalf of the Plaintiff. The mere fact that the promoters
of the Plaintiff and the partners of M/s Chemco Plastic Corporation
were the same may not necessarily imply that the entire business and
especially the goodwill, mark and name of "CHEMCO" came to be
transferred to the Plaintiff, especially when there is material to show
that M/s Chemco Plastic Corporation continued to exist as a partnership
firm even after the incorporation of the Plaintiff.
73. At this stage, it appears that the link in respect of user of
CHEMCO between the Plaintiff and its predecessor-in-interest was
snapped, firstly, with the incorporation of the Plaintiff as " Netguard
Polynet Pvt. Ltd", without any reference to the trade name or mark of
CHEMCO and, secondly, by the continuation of M/s Chemco Plastic
Corporation as a partnership firm despite the incorporation of the
Plaintiff.
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74. In this backdrop, the absence of the documents evidencing
the assignment of the goodwill of CHEMCO and the mark CHEMCO
assumes significance.
75. In the case of T. G. Balaji Chettiar (Supra) a learned Single
Judge of the Madras High Court enunciated that the concurrent user
must be of the entire trade mark and it would not be enough if one
feature of it alone had been used. The evidence must be evidence of the
user of the trade mark as a whole and documentary evidence must be
furnished to prove the same when challenged. User by different persons
at different time cannot avail and the Applicant must prove that the
alleged prior users are his predecessors-in-title, one claiming through
the other in other words independent user of trade mark by
independent unconnected persons cannot constitute the concurrent
user. In the facts of the said case it was found that there was no proof
how the Applicant who claimed title to the mark, derived title and
became the owner of the trade mark and how he was entitled to rely
upon prior user of other persons.
76. In the case of Shemaroo Entertainment Ltd (Supra), a
learned Single Judge of this Court emphasized the necessity of filing the
link documents along with the Plaint while claiming copyright in the
capacity of assignee.
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77. In the case of Yogi Ayurvedic Products Pvt Ltd (Supra), in
the context of the absence of assignment of the trade mark, a learned
Single Judge of this Court enunciated that assignment of a trade mark
under the provisions of the Section 2(1)(a) of the Trade and
Merchandise Marks Act, 1958 and Section 2(1)(b) of the Act, 1999 is
mandatorily required to be in writing by the act of the parties
concerned. Consequently, in the absence of such assignment in writing,
as a matter of law, the Defendant cannot claim that its predecessor-in-
interest had assigned that trade mark in favour of the Defendant. Once
that link is snapped, there was no question of Defendant claiming that
use of the mark, "YOGI" in he invoices issued by M/s D.V. Deo Aromatics
Pvt Ltd, in the year 1997, would inure to the benefit of the Defendant.
78. In the case of Lords Inn Hotels & Developers Private
Limited (Supra), this Court enunciated that there has to be a continuous
commercial use of the impugned mark in relation to goods and services
by the party or its predecessor. There has to be cogent material on
record to show such continuous commercial use and use in a stray/
isolated or disjointed manner, can be of no avail.
79. Dr. Tulzapurkar attempted to wriggle out of the situation by
asserting that in the case at hand the Plaintiff and Defendant stand on
the the same footing in the matter of assignment of the mark. It was
urged that though the Defendant claims prior user since 1977 through
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its alleged predecessor-in-interest, yet, the Defendant has not placed on
record any document to evidence the assignment of the goodwill and
the mark.
80. The aforesaid submission, in my considered view, is of no
avail to the Plaintiff. Having approached the Court with a positive case
that the Plaintiff is the prior user of the mark, "CHEMCO" since 1973
and even obtained registration of the mark by propounding such user, it
is not open to the Plaintiff to urge that the absence of assignment is of
no significance, for the Defendant who claims prior user since 1977 has
also failed to place on record documents evidencing the assignment.
81. Though, Mr. Khandekar, the learned Counsel for the
Defendant, forcefully urged that there is unbroken chain of user of
"CHEMCO" by the Defendant, at this stage, this Court may not delve
into this aspect of the matter; suffice to note that, the Plaintiff who
seeks interim relief on the basis of prior user, prima facie, failed to
establish the nexus between the predecessor-in-interest of the Plaintiff
and the Plaintiff.
USE OF CHEMCO AS A MARK BY THE DEFENDANT:
82. At this juncture, the claim of the Defendant that it has not
used "CHEMCO" as a mark and used the same as a trade/business name
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deserves to be appreciated in the light of the material on record. As
noted above, the Defendant had filed Applications to register the mark,
"CHEMCO PLAST" under Classes 17 and 35 on proposed to be used
basis. The Defendant had also filed an Application to register the trade
mark "CHEMCO PLAST" under Class 21 with claim of user from 22 nd
August 1998. All these Applications were abandoned. The fourth
Application dated 12th January 2019 seeking the registration of the
mark, "CHEMCO" under Class 35 with claim of user from 9 th April
1977, was opposed by the Plaintiff.
83. Mr. Khandekar would urge no mileage can be drawn from
the abandoned Applications for trade mark registration. The submission
may carry some substance in relation to the Application in which the
marks, "CHEMCO" and "CHEMCO PLAST" were proposed to be used.
However, in relation to the Applications in which the user was claimed
from August 1998 and April 1977, it cannot be said that the aforesaid
factor is of no relevance.
84. Secondly, the invoices raised by the Defendant ("Exhibit
"BB" to the Plaint") do reveal the mark being used along
with, "CHEMCO PLAST". It would be contextually relevant to note that
in the Affidavit filed in Support of the Application for registration of the
trade mark "CHEMCO" in Class 21, the partner of the Defendant
affirmed that the said trade mark has been used by the Defendant
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continuously since 22nd August 1998 in relation to the goods
enumerated therein. The printout of the Defendant's website also reveal
that "CHEMCO" and "CHEMCO PLAST" were being used
by the Defendant.
85. In the Reply to the cease and desist notice dated 14 th
October 2015, on behalf of the Defendant, it was contended that the
Defendant was carrying on business under the name and style of,
"CHEMCO PLAST" since the year 1998 and that the Defendant was
manufacturing and/or marketing wide range of products under the
trade mark, "CHEMCO" and trade name, "CHEMCO PLAST" and the
domain name "www.chemcoplast.com" sine the year 2006.
86. In the face of the aforesaid material, the submission on
behalf of the Defendant that the Plaintiff is relying upon stray sentences
and sporadic use to establish that the Defendant is using, "CHEMCO" as
a mark, cannot be readily acceded to. Cumulatively, the aforesaid
material prima facie indicates that the Defendant has used and/or
attempted to use "CHEMCO" as a mark and, when confronted, even
asserted that it has been using "CHEMCO" as a trade mark. Thus, the
submission that the case, at best would be governed by the provisions
contained in sub-Section (5) of Section 29 of the Act, 1999 loses
traction. Resultantly a prima facie case that the Defendant has invaded,
attempted to invade and, in the least, threatened to invade the rights of
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the Plaintiff as a registered proprietor of the trade marks, can be said to
have been made out.
PASSING OFF:
87. Passing off is a right for protection of goodwill against the
misrepresentation actuated by a design to show that the business
belongs to the person whose goodwill is sought to be exploited. The
classical elements of the passing off action are : (1) goodwill owned by
a trader, (2) misrepresentation by the defendant so as to cause
confusion as to the source, and, (3) resultant damage to the goodwill of
the trader who has built a reputation and goodwill by prior user. The
goodwill, misrepresentation and damage form a trinity which sustains
an action for passing off.
88. In the case of S Sayed Mohideen Vs P. Sulochana Bai
(supra), after adverting to the classical requirements of an action in
passing off, the Supreme Court exposited that the passing of action is
essentially an action in deceit where common law rule is that no person
is entitled to carry on his or her business on the pretext that the said
business is that of another. It was held that the Supreme Court has
given its imprimatur to the aforesaid principle in the case of Laxmikant
Patel Vs Chetanbhai Shah & Anr. (supra), wherein it was enunciated
that three elements of passing of action are, reputation of the goods,
possibility of deception and likelihood of damage to the Plaintiff. In the
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said case, the Supreme Court further enunciated that the same principle
which applies to trademark is applicable to trade name.
89. With regard to the necessity of injunction, where an action
is for passing off, the Supreme Court postulated that, it is usual rather
essential to seek an injunction temporary or ad-interim. The principles
for grant of such injunction are the same as in the case of any other
action against the injury complained of. The Plaintiff must prove a
prima facie case, availability of balance of convenience in his favour,
and, he is suffering an irreparable injury in absence of grant of
injunction. It was further clarified that, as to how the injunction
granted by the Court would shape, depends on the facts of the each
case. Where the Defendant has imitated or adopted the Plaintiff's
trademark or business name, the order may be an absolute injunction
that he would not use or carry on business under that name.
90. With the passage of time, the concept of passing off has
evolved to cover in its fold the misrepresentation even where the goods
and services in respect of which the goodwill and reputation is sought
to be exploited do not fall within "common field of activity". If the
trademark or trade name of the Plaintiff which has garnered formidable
reputation and goodwill is used to pass off dissimilar goods and
services, then an action also in passing off is sustainable on the
foundational premise that no one has a right to represent his goods or
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services as those of someone else who has earned a reputation in trade,
albeit in relation to different goods and services.
91. In the case of RPG Enterprises Ltd Vs Riju Ghoshal & Anr.
(supra), this Court has, after adverting to the previous pronouncements
in the cases of Kirloskar Diesel Recon Pvt Ltd & Anr Vs Kirloskar
Proprietary Ltd. (supra), and, Bata India Limited Vs Pyare Lal & Co.
(supra), ruled that the principle that the "common field of activities" is
not essential to succeed in case of passing off, is well established. Thus,
in the facts of the said case, the fact that the Plaintiff and Defendant's
field of activities were not identical, was held to be of no consequence.
Such representation by the Defendant was certainly likely to cause
damage to the Plaintiff.
92. The aforesaid being the position in law, the aspect of
similarity or dissimilarity of the goods wanes in significance. It has to
be seen, whether the classical trinity of elements is prima facie made
out. On the first count of goodwill and reputation, the Plaintiff relies
upon invoices, audited financial statements, Chartered Accountant's
Certificate, volume of sales and promotional expenses. Most of the
aforesaid documents pertain to the period 2003 and onwards. In
addition, the Plaintiff has relied upon the material available in public
domain, which shows the repute of the Plaintiff's business under the
mark and name "CHEMCO".
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93. The point in time at which the person, who seeks
protection of rights on account of prior user, ought to have garnered the
reputation, is of critical salience. The aforesaid material pressed into
service to show the goodwill and reputation of the Plaintiff is required
to be co-related with the commencement of the complained action of
passing off the goods by the Defendant. Whether at that point of time,
the Plaintiff had the reputation and the Defendant tried to ride on the
said reputation and goodwill so as to pass off the Defendant's goods as
that of the Plaintiff becomes critical.
94. What is the relevant date to judge, whether the Plaintiff
had established reputation or goodwill ? In the case of Cadbury
Schweppes Pty Limited Vs The Pub Squash Co Pty Limited (supra), the
Judicial Committee of the Privy Council enunciated that, in that case,
the Judge had misdirected himself in holding that the relevant date for
determining whether the Plaintiff has established the necessary
goodwill or reputation of his project, is the date of the commencement
of the proceedings. The relevant date is in law the date of the
commencement of the conduct complained of i.e. when the Respondent
began to market his product.
95. In the case of Wyeth Holdings Corporation Vs Burnet
Pharmaceuticals (Pvt) Ltd. (supra), a learned Single Judge of this Court
held that the relevant date for determining whether the Plaintiffs have
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established reputation or goodwill is the date of the commencement of
the conduct complained of.
96. In Corona Remedies Private Limited Vs Franco-Indian
Pharmaceuticals Private Limited (supra), a Division Bench of this Court
reiterated that, there can be no quarrel with the principle that, in an
action for passing off, it is incumbent upon the Plaintiff to show that he
has acquired goodwill and reputation in respect of his goods and/or
services for which mark is used. However, it is also settled principle of
law that, in determining this question, it must be proved that the
Plaintiff had acquired such goodwill and reputation when the
Defendant began use of its trade mark.
97. Reverting to the facts of the case at hand, the aspect of
acquisition of goodwill and reputation is required to be appreciated in
two parts. First, the time from which the Plaintiff started to use
CHEMCO in its own name, and the Defendant's alleged first use of the
same in its individual capacity. Second, the user of CHEMCO by the
predecessor-in-interest of the Plaintiff and Defendant. The second part
has been discussed hereinabove.
98. The Plaintiff's user of CHEMCO, in its own name, prima
facie, commenced in the year 1998, as is evident from the invoices
raised from 4 April 1998 (Exhibits B-1 to B-5 - further Response
Affidavit). Rest of the documents in respect of the claim of user since
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1996, namely, the Memorandum of Association of CHEMCO Plastic
Industries Ltd., Certificate of Incorporation of Netguard Polynet Pvt.
Ltd., and the certification of incorporation pursuant to the Plaintiff's
change in name, are prima facie of no assistance in demonstrating that
the Plaintiff has been using CHEMCO as a mark or tradename, and,
more importantly, by that time, the Plaintiff had acquired the reputation
and goodwill in the mark CHEMCO.
99. Keeping the aforesaid factors in view, if the time of the
commencement of the conduct of the Defendant complained of, is
considered, prima facie, it appears that the Defendant's invoices bearing
the name CHEMCO were raised since the year 1999. The Defendant
has placed on record the financial statements commencing from the
years 1998-99. There was a time lag of hardly one year in the first
user of CHEMCO by the Plaintiff and Defendant in their individual
names.
100. The material on record, prima facie, does not indicate that
by the time, the Defendant commenced the use of CHEMCO i.e. 1999,
the Plaintiff had established a formidable goodwill and reputation.
Thus, the existence of goodwill and reputation as of the relevant date
i.e. commencement of the offending act so as to taint the user by the
Defendant, with a view to ride on the reputation and goodwill of the
Plaintiff cannot be said to have been made out. The fact that
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subsequently the Plaintiff succeeded in establishing a more formidable
business and reputation than the Defendant, does not seem to be
decisive as at the commencement of the user by the Defendant prima
facie there was no element of misrepresentation.
ACQUIESCENCE:
101. Acquiescence on the part of the Plaintiff was sought to be
demonstrated with reference to parallel online presence of the Plaintiff
and Defendant since the year 2006; the Plaintiff and Defendant being
the members of the same trade association, i.e., All Indian Plastic
Manufactures Association, since the year 2011-2012, and direct
interactions between the Senior Officers of the Plaintiff and Defendant.
The exchange of correspondence would indicate positive actions on the
part of the Plaintiff to draw an inference of clear acquiescence.
Therefore, the Plaintiff who has allowed the Defendant to build up a
formidable business is not entitled to seek equitable relief, was the
thrust of the submission of Mr. Khandekar.
102. Acquiescence is one of the defences available to the
Respondent in an action for infringement of a trade mark. In the case of
Power Control Appliances (Supra), the Supreme Court elucidated as to
what constitutes acquiescence. The observations in paragraphs 26 and
27 read as under:
"26. Acquiescence is sitting by, when another is
invading the rights and spending money on it. It is a
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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 Vs White (1860) 28
Beav 303 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.) & Co. Vs. Boehm (1884) 26
Ch D 406. The acquiescence must be such as to lead to
the inference of a licence sufficient to create a new right
in the defendant as was laid down in Rodgers Vs Nowill
(1847) 2 DE GM&G 614.
27. The law of acquiescence is stated by Cotton, L.J. in
Pro tor Vs Bannis (1887) 36 Ch D 740 as under:
"It is necessary that the person who alleges this lying by
should have been acting in ignorance of the title of the
other man, and that the other man should have known
that ignorance and not mentioned his own title." In the
same case Bowen, L.J. said:
"In order to make out such acquiescence it is necessary
to establish that the plaintiff stood by and knowingly
allowed the defendants to proceed and to expend money
in ignorance of the fact that he had rights and means to
assert such rights."
(emphasis supplied)
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103. In Amritdhara Pharmacy (Supra), the Supreme Court, in
the facts of the said case found that the plea of acquiescence was
established. The observations in paragraph 14 reads as under:
"14. We now go the second question, that of
acquiescence. Here again we are in agreement with the
Registrar of Trade Marks, who in a paragraph of his
order quoted earlier in this judgment has summarised
the facts and circumstances on which the plea of
acquiescence was based. The matter has been put thus
in Halsbury's Laws of England, Vol. 32 (second edition)
pages 659-657, paragraph 966.
" If a trader allows another person who is
acting in good faith to build up a reputation
under a trade name or mark to which he has
rights, he may lose his right to complain, and
may even be debarred from himself using such
name or mark. But even long user by another,
if fraudulent, does not affect the plaintiff's
right to a final injunction; on the other hand
prompt warning or action before the
defendant has built up any good- will may
materially assist the plaintiff 's case".
We do not think that there was any fraudulent user by
the respondent of his trade name 'Lakshmandhara'. The
name was first used in 1923 in a small way in Uttar
Pradesh. Later it was more extensively used and in the
same journals the two trade marks were published. The
finding of the Registrar is that the appellant and its
agent were well aware of the advertisements of the
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respondent, and the appellant stood by and allowed the
respondent to develop his business till it grew from a
small beginning in 1923 to an annual turnover of Rs.
43,000/- in 1949. These circumstances establish the plea
of acquiescence and bring the case within sub-s. (2) of S
10, and in view of the admission made on behalf of the
respondent 'that his goods were sold mainly in Uttar
Pradesh, the Registrar was right in imposing the
limitation which he imposed.
(emphasis supplied)
104. Dr Tulzapurkar would urge the plea of delay and
acquiescence is not at all sustainable. Mere delay in itself is of no
significance. A party who infringes the rights of another, dishonestly is
not entitled to raise the plea of acquiescence. To buttress the submission
that, where the adoption of the mark is not honest the defence of delay
and acquiescence looses significance, strong reliance was placed on the
judgment in the case of Bal Pharma (Supra), wherein a Division Bench
of this Court, after following the judgment in the case of Power Control
Appliances (Supra) and the Appellate Court in England in the case of
Electrolux LD V Electrix enunciated that there is no hard and fast rule
that delay per se would defeat an Application for interlocutory
injunction. In a situation where the Defendant to an action has been
using the mark, even if concurrently without making himself aware of
the fact as to whether the same mark is subject matter of the
registration and belongs to another person, the first person cannot be
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heard to complain that he has been using it negligently in as much as,
he has not taken elementary precaution of making himself aware by
looking at the public record of Register as to whether the mark in
question is the property of another.
105. In Cadila Health Care Ltd (Supra) a Division Bench of this
Court referred to a judgment of a learned Single Judge of Delhi High
Court in Hindustan Pencils Private Limited Vs India Stationery Products
Co,45 wherein it was observed that where there is an honest concurrent
user by the Defendant then inordinate delay or laches may defeat the
claim of damages or rendition of accounts but the relief of injunction
should not be refused. Thus the interest of the general public, which is
third party in such cases which has to be kept in mind.
106. In the instant case, the prime question that wrenches to the
fore is, whether the concurrent user of "CHEMCO" by the Defendant
can be said to be dishonest. The material on record would prima facie
indicate that there is a chain of entities which had been using,
"CHEMCO" culminating in user by the Defendant. Even the user of,
"CHEMCO" by Plaintiff' and Defendant, in their individual capacities,
commenced in the year 1998 and 1999, respectively. Both the parties
claim a right of prior user on the basis of user of "CHEMCO" by their
predecessors-in-interest. The concurrent user by the Defendant has
continued for over 15 years before the mark, "CHEMCO" came to be
45 IR 1990 Del 19.
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registered in the name of the Plaintiff. Thus, in the considered view of
this Court, at this interim stage, the user of "CHEMCO" by the
Defendant cannot be termed as dishonest.
107. Whether the factors like, online presence of the Defendant
in proximity with the Plaintiff, both the Plaintiff and the Defendant
being the members of the same Association and that the officers of the
Plaintiff and the Defendant have had exchange of correspondence,
constitute positive acts of acquiescence may warrant adjudication at the
trial. At the same time, there is material to indicate that since the year
2015, the Plaintiff took efforts to secure its intellectual property. A cease
and desist notice was issued to the Defendant. Criminal complaints
were filed with the police seeking action for infringement of the trade
mark. Certainly, these actions on the part of the Plaintiff cannot be
termed as positive acts of acquiescence. Thus, whether the Plaintiff
stood by and allowed the Defendant to build up a formidable business
appears to be debatable.
108. Nonetheless, the material on record does indicate that
there were multiple opportunities for the Plaintiff to become aware of
the presence of the Defendant in the market as a competing
manufacturer of the goods in which the Plaintiff has been dealing. The
trail of purported user treacable to the predecessor-in-interest of the
Defendant prima facie shows that the user was neither dishonest nor
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negligent. Even if the claim of prior user is kept aside, the use of
"CHEMCO" by the Defendant, in its individual capacity, is traceable to
the year 1999. Prima facie it does not appear that the user of
"CHEMCO" was either clandestine or dishonest.
EQUITY AND BALANCE OF CONVENIENCE:
109. At this juncture, the element of balance of convenience and
equity comes into play. Should the Court grant the injunctive reliefs in a
situation where the concurrent user competes in probability, with a
claim of prior user which is also for the comparable period, arises for
consideration.
110. In the case of Hubbard And Anr (Supra), the Court of Appeal,
postulated that, in considering whether to grant an interlocutory
injunction, the right course for a Judge is to look at the whole case. He
must have regard not only to the strength of the claim but also to the
strength of the defence, and then decide what is best to be done.
Sometimes, it is best to grant an injunction so as to maintain the status
quo until the trial. At other times, it is best not to impose a restraint
upon the Defendant but leave him free to go ahead.
111. In the case of Uniply Industries Ltd (Supra) in an action
for passing off, the Supreme Court observed that, in a case where the
serious questions are required to be determined, those questions should
be thrashed out at the trial.
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112. In the case of Yonex Kabushiki Kaisha (Supra), a learned
Single Judge of the Delhi High Court, after noting the facts of the case
observed that, inter alia, there was delay in approaching the Court and
a number of years had passed since the Defendant therein had
established business with significant sales and there was a serious
dispute as to who was the prior user of the mark in India, and, thus,
following the observations of Lord Denning in Hubbard And Anr
(Supra), declined to grant interim order in favour of the Plaintiff
therein. The learned Judge observed, each individual factor, by itself,
may not have been sufficient but it was the combined effect thereof and
by taking a holistic view in so far as the aspect of injunction was
concerned, the case did not warrant grant of injunction.
113. Dr. Tulzapurkar would submit that, balance of convenience
plays a part in cases of infringement of the trade mark only in unusual
circumstances. It was submitted, though the balance of convenience is a
relevant factor, yet, where a clear case of infringement is made out the
Plaintiff would continue to suffer grave and irreparable loss if the
element of balance of convenience is placed on a higher pedestal.
114. Reliance was placed on a Division Bench judgment of this
court in the case of Express Bottlers Services Pvt Ltd (Supra) wherein it
was enunciated that it is only in unusual circumstances that the balance
of convenience should play a part in a matter where the Plaintiff is the
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owner of a registered trade mark. Reliance was also placed on the
observations of a learned Single Judge in case of Dr Ashok M. Bhat
(Supra).
115. On a careful analysis of the factual context, this Court finds
that the period of user of "CHEMCO" by the Defendant, in its individual
capacity, is almost parallel to its user by the Plaintiff. Secondly, the
commencement of user of "CHEMCO" by the Plaintiff and the
Defendant before the cease and desist notice was issued by the Plaintiff
was for almost 18 years. Thirdly, the first trade mark came to be
registered in the name of the Plaintiff in the year 2014. Fourthly, the
prior user through the predecessor-in-interest by both the Plaintiff and
the Defendant is for a comparable period of almost 20 years, before the
individual user. Fifthly, it does not appear that the Defendant had
resorted to the user of "CHEMCO" dishonestly. Sixthly, the user of
"CHEMCO" by the Defendant, in its individual capacity, as of now, has
been for almost 25 years. Lastly, prima facie, there is material to show
that there were multiple occasions for the Plaintiff to become aware of
the existence of the Defendant as a competing trader and use of
"CHEMCO" by the Defendant.
116. In my view, the aforesaid factors, cumulatively render
balance of convenience to have a significant role. Admittedly, there are
serious questions of facts as regards the prior user, which warrant
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adjudication at the trial. The time lag also assumes significance. Thus, a
blanket order of injunction may not be justifiable, as it would cause
irreparable loss to the Defendant.
117. In my view, a distinction is required to be drawn between
the user of "CHEMCO" and "CHEMCO PLAST" as a trade mark (word or
device) and use of "CHEMCO" as a part of trade/business name and
domain name. In the light of the presence of the Defendant in the
market with the trade name "CHEMCO" for almost 25 years, grant of
injunction from using "CHEMCO" as a trade name/business name or
part of the domain name may not be justifiable. Conversely, as discussed
above, there is prima facie material to show that the Defendant
invaded, attempted to invade and threatened to invade the registered
trade mark of the Plaintiff and, thereby, committeed breach of its
obligation qua the Plaintiff. Morever, since it is the case of the
Defendant that it has never used "CHEMCO" as a mark, injunction can
be granted to restrain the Defendant from using "CHEMCO" and
"CHEMCO PLAST" as a mark in relation to its goods and service.
118. Since, for the reasons recorded under the caption "Passing off",
the action for passing off was prima faice found unsustainable, no
interim relief in that regard can be granted.
119. Resultantly, the Application deserves to be partly allowed.
120. Hence, the following order:
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:ORDER:
(i) The Interim Application stands partly allowed.
(ii) Pending hearing and final disposal of the Suit
the Defendant by itself, its partners, servants and
agents, dealers, distributors and all persons acting for
and on its behalf are restrained from infringing all or
any of the Applicant's Mark CHEMCO registered under
Nos. 4487323 in Class 11, 4696915 in Class 16,
4487326 in Class 20, 2275010 in Class 21 and
4487327 in Class 22 by use of the impugned mark
CHEMCO, and/or CHEMCO PLAST or any other trade
mark which is identical with and/or deceptively similar
to the Applicant's registered Mark CHEMCO in respect
of the impugned goods including plastic bottles, caps
for plastic bottles and other plastic packing materials
and/or same or similar goods or services or in any
other manner whatsoever.
(iii) Rest of the prayers in the Application stand
rejected.
Costs in cause.
[N. J. JAMADAR, J.]
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At this stage, Mr. Khandekar, the learned Counsel for the
Defendant, seeks stay to the execution and operation of the order.
Ms. Pratik Pawar, the learned Counsel for the Plaintiff,
resisted the prayer for stay.
In the light of the view this Court has taken in this order,
the execution and operation of this order is stayed for a period of six
weeks.
[N. J. JAMADAR, J.]
