[Cites 12, Cited by 0]
Bombay High Court
Minco India Private Limited vs Minco India Flow Elements Private ... on 6 January, 2026
2026:BHC-OS:138
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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO.12616 OF 2024
IN
COMMERCIAL IP (L) NO.12477 OF 2024
Minco India Private Limited ...Applicant
In the matter between
Minco India Private Limited ...Ori. Plaintiff
Versus
Minco India Flow Elements Private Limited ...Respondent/
Defendant
VISHAL
SUBHASH
PAREKAR ------------
Digitally signed by
VISHAL SUBHASH
PAREKAR
Mr. Pranshul Dube a/w. Ms. Maithri Porwal, Ms. Tarika Jaitley, Ms. Asma
Date: 2026.01.06
19:19:12 +0530 Nadaf, for the Applicant/ Plaintiff.
Mr. Hiren Kamod a/w. Mr. Anees Patel, Mr. Amritraj Roychowdhary, for
the Respondent/Defendant.
CORAM : SHARMILA U. DESHMUKH
RESERVED ON : DECEMBER 05, 2025
PRONOUNCED ON : JANUARY 06, 2026
--------------
JUDGMENT :
1) The present suit has been filed for infringement of trademark
and passing off. The Plaintiff is engaged in the business of gauges,
pressure, temperature, temperature gauges, temperature switches
etc in the name of Minco India Private Limited and is using the mark
"Minco India" in respect of its goods and services since the year 1982.
The Plaintiff applied for registration of its trade mark "MINCO INDIA"
on 5th June 2023 with user claim of 6th October 1982 and has secured
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registration in Class 9. It is stated that owing to the extensive and
continuous use of its trademark, the Plaintiff has garnered reputation
and goodwill among the public and trade members. To substantiate
the goodwill and reputation, the sales turnover of the Plaintiff from
the year 1989-1990 onwards duly certified by the chartered
accountant is placed on record.
2) It is pleaded that in the first week of February 2024, the
Plaintiff found that the Defendant is manufacturing and offering for
sale identical goods and services using identical mark "MINCO". The
Plaintiff had earlier received information about the use of the mark
"MINCO" but could not specifically find the goods and services
offered by Defendant. On 14th February, an email was received by
the Plaintiff from third-party complaining about defective flow
nozzle at which point of time the Plaintiff realised that the defective
product has been supplied by the defendant. The search of trade
mark registry revealed the Defendant's application for registration of
the device mark "MINCO" to which trade mark registry has raised
objection on 18th July 2022 under section 11 of the Trade Marks Act,
1999 (for short "T.M.Act") to which the Defendant has filed counter
statement on 10th August 2022. It is stated that the use of an
identical or similar trademark will lead to confusion and the
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defendant has infringed the plaintiff's registered trademark by use of
identical trade mark "MINCO". Hence the present suit.
3) The Defendant initially filed a limited affidavit in reply dated 30
September 2024 raising preliminary objection on the ground of gross
suppression of material and relevant facts and documents in the
plaint. It is stated that the purported date of knowledge of the
Plaintiff as stated is false to the Plaintiff's own knowledge as the
Plaintiff is aware of the use by the Defendant of the trademark
"MINCO" since the year 2012. The family history of incorporation of
various companies including the Plaintiff and Defendant by Manohar
Mahadeo Kulkarni, who is the father of Amarendra and Raghvendra,
the directors of the plaintiff and defendant company respectively is
set out. It is stated that by reason of partition/family arrangement,
initially Amarendra and Raghvendra were appointed as director of the
plaintiff as well as of the Defendant. A change of the Defendant
Company's name from Tivim Instruments, Company Pvt Limited to
Minco (India) Flow Elements Pvt Limited was caused with consent of
Plaintiff under board resolution dated 2 nd July, 2012 and fresh
certificate of incorporation was issued on 1st September 2012. As per
the family arrangement and post an extraordinary general body
meeting of Defendant Company, the name of the Defendant company
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was changed to the present Minco (India) Flow Elements Private
Limited with consent of Plaintiff.
4) It is contended that Plaintiff and Defendant are part of MMK
group promoted General Instruments Consortium/General Group of
Companies (GICON) and all all names, marks, assets etc is the property
of GICON which was spearheaded by the family patriarch Manohar.
Reliance is placed on resolution of GICON to show its complete
control over the functioning of the group companies including the
plaintiff and the defendant company. From 2012 till mid-2022, the
Plaintiff and Defendant both had their respective offices in the same
premises. It is contended that the Will executed by Manohar led to
dispute between Amarendra and Raghvendra. On 15 th December,
2015, Amarendra and Raghvendra in accordance with Will of Manohar
resigned from Defendant and Plaintiff Company respectively.
Subsequently, in terms of the Will, the shareholdings in the Plaintiff
and Defendant Company were duly transferred.
5) Since 1st September, 2012, the Defendant is using the trade
mark "MINCO" openly extensively continuously and and
uninterruptedly. The Defendant has cumulative sales turnover of INR
1,11,88,73,822/ from the year 2012 till date. The balance sheets from
the years 2014 to 2023, certified by chartered accountant showing
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overall sales of the goods and services under the trademark
/tradename "Minco" is annexed to the plaint. It is stated that the
Defendant's registration application for device mark "MINCO" is
erroneously filed on proposed to be used basis as the Defendant is
using "MINCO" since the year 2012 and and the specific device mark
was not being used until shortly after the date of filing of the
application on 29th April 2022. The defence of delay, laches and
acquiescence is raised as the Plaintiff was aware of the Defendant
and they shared the same office premises. There is bonafide adoption
of the mark "MINCO" by the Defendant and being part of MMK
Group/GICON the Plaintiff and Defendant are equally entitled to their
respective use of "MINCO".
6) The rejoinder affidavit contends that the Defendant is trying to
give the colour of family dispute to the suit for infringement. The
change of Defendant's name has taken place to ride upon the
goodwill and reputation of Plaintiff's mark "MINCO". The director of
Defendant Company - Raghvendra fraudulently and on his own accord
signed the NOC for change of name on behalf of the Plaintiff and also
signed the special resolution on behalf of the Defendant accepting
the change of name. In the year 2015, Amarendra, the director of
Plaintiff resigned from the Defendant upon becoming aware of
change of Defendant's name which constitutes a negative act. The
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Plaintiff or Amarendra never consented to the use of the mark
"MINCO" by the Defendant. The mere change of name by the
Defendant would not constitute open or continuous use of the mark
"MINCO". Since the consumers very well knew that the director of
Plaintiff and Defendant are brothers, they used to reach out to
Amarendra to resolve the situation of the Defendant, which
Amarendra used to resolve.
7) The Defendant has filed further Affidavit in reply and re-joinder
is filed by the Plaintiff which re-iterates their respective stands.
8) Mr. Dube, learned counsel for the Plaintiff submits that the
Plaintiff and Defendant are using the same mark and are located at
the same address. He submits that there is similarity in the trade mark
"MINCO " used by the Plaintiff and Defendant. He points out the
registration of the trade mark "MINCO INDIA" in Plaintiff's favour. He
points out the chartered accountant certified sales turnover from
1989 to show the goodwill and reputation in 'MINCO INDIA". He
submits that the sales turnover is consistently reduced due to the use
by the Defendant of the trademark "MINCO".
9) He submits that the Defendant has applied for registration of
device mark "MINCO" on proposed to be used basis on 29 th April,
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2022, which mark has already been used and adopted by the Plaintiff
since 1982. He submits that the family history set out in the affidavit
in reply is immaterial in present case as there is no concept of
succession under the trademark act which recognizes only
assignment. He submits that GICON is neither the registered
proprietor nor prior user of the trademark. He submits that the
Plaintiff was unaware of change of Defendant's name, which change
was effected fraudulently in the year 2012 and therefore there is no
acquiescence. Pointing out to the resolution of Plaintiff and the
Defendant Company, he submits that the resolutions have been
signed by Raghvendra on behalf of Plaintiff as well as Defendant and
no reliance can be placed on the resolutions by the Defendant.
10) Mr. Dube submits that in February, 2024, the Plaintiff came
across the goods/services of Defendant marketed under the mark
"MINCO" and points out to the specific averment in the plaint. He
submits that considering the Defendant's application for registration
is on proposed to use basis, it cannot be contended that Plaintiff had
knowledge in the year 2015 about use of the mark and there is no
suppression of facts. He submits that for applicability of delay and
acquiescence there is requirement of positive act on the part of the
Plaintiff which is missing in present case and the resignation by the
Plaintiff's Director from the Defendant company cannot be construed
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as positive act. He would further point out the confusion which has
occurred by reason of use of the mark by Defendant and points out
the email dated 14th February, 2024. He would further point out to the
email addressed by Defendant to its customer making false
statement that the Defendant has secured registration of the
trademark 'MINCO". He would submit that considering that the
application for registration is filed by the Defendant on proposed to
be used basis, the Defendant has not used the mark and there is no
question of acquiescence. In support he relies upon the following
decisions:
(1) Pidilite Industries Limited vs. Jubilant Agri and Consumer
Products Limited1
(2) M/s. Power Control Appliances and Ors. vs. Sumeet Machines
Pvt. Ltd.2
(3) M/s. Hindustan Pencils Pvt. Ltd. vs. M/s. India Stationery
Products Co. and Anr.3
(4) Abdul Rasul Nurallah Virjee and Anr. vs. Regal Footwear 4
(5) Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia and Ors. 5
11) Mr. Kamod learned counsel for the Defendant submits that
both companies carry on similar business since inception. He submits
1 2014 SCC OnLine Bom 50.
2 (1994) 2 SCC 448.
3 IA No. 2275/1988 in Suit No. 941/1988 Dt.23/01/1989.
4 2023 SCC OnLine Bom 10.
5 (2004) 3 SCC 90.
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that there is gross suppression of material facts which disentitles the
Plaintiff from seeking equitable relief. He has taken this Court
through the pleadings in the plaint and would point out the vague
reference to the Director of Defendant being the brother of Director
of Plaintiff. He submits that there is no disclosure as regards the
manner in which Amarendra and Raghvendra came to be appointed
as Director in the companies incorporated by their father Manohar,
the history of partition/family arrangement and the Will of Manohar.
He submits that it was necessary to plead about the No Objection
granted by Plaintiff to change of Defendant's name which is a
material and relevant fact. He submits that the plaint pleads false
date of knowledge of the year 2024, when the Plaintiff was aware of
the Defendant's change of name in the year 2012 itself. He submits
that both the Plaintiff and Defendant had their respective offices at
the very same location and points out to the income tax notices, the
bank mandate of Defendant company etc. He submits that the
Plaintiff utilized the human resources of the Defendant company to
deal with the notices of the income tax department.
12) He submits that the Plaintiff and Defendant being part of
GICON are entitled to their respective use of the mark "MINCO". He
would further submit that the Defendant has acquired reputation
and goodwill in the trademark/trading name Minco which is
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demonstrated from the sales turn over of about Rs 111 crores from
2012 till date. He submits that the trademark "MINCO" is used by the
Defendant since September, 2012 and the specific device mark
"MINCO" in saffron colour was used subsequently after the filing of
the trademark application in the year 2020. He submits that the
Defendant's adoption and use of mark "MINCO" is bonafide and
there is no question of any confusion as the clients are industries such
as BHEL Steel Authority, Seimens etc. He submits that the Plaintiff is
guilty of acquiescence as the Plaintiff waited for more than 12 years
allowing the Defendant's business to grow with full knowledge of the
Defendant's use and therefore the balance of convenience is in favour
of the Defendant.
13) In rejoinder Mr. Dube contends that the primary defense of the
Defendant is suppression which finds place in Order 39 Rule 4 of CPC
and as the Plaintiff has moved with notice, the issue of suppression
cannot be considered. He would further submit that in so far as the
NOC for the change of the Defendant's name is concerned, the same
was a fraudulent act as Mr. Raghvendra himself had signed for both
the companies. He submits that there is no honesty in adoption as
"MINCO" is an arbitrary word and the Defendant was aware of the
Plaintiff's use of the trademark since 1982. He submits that there is
no positive act of encouragement on part of Plaintiff shown by the
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Defendant. He submits that there is no C.A. certified turn over
showing the use of the mark "MINCO" by the Defendant. He submits
that as the Defendant seeks to use the word "MINCO" as part of their
trade name, the provisions of Section 29(5) of the T.M. Act would
apply. He submits that as the trademark is used as part of the trade
name, by the Defendant, there is bound to be confusion.
REASONS AND ANALYSIS:
14) The Plaintiff and the Defendant are both private limited
companies duly incorporated under the relevant statutory enactment.
It is well settled that the statute recognises a Company as an artificial
person having its own identity, capable of owning assets, incurring
debts, entering into contracts in its own name, suing or being sued in
its own name and is distinct from its shareholders and Directors.
Given this corporate existence of the Plaintiff and the Defendant
Company, in an action for infringement of trade mark and passing off,
the relevant issues to be considered is the entitlement of the Plaintiff
to restrain the Defendant from using the mark "MINCO" as part of
trade name and the defences to the infringement and passing off
allegation.
15) The Plaintiff and Defendant were both incorporated in the year
1982 and the name of the Defendant Company was Tivim Instruments
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Company Private Limited. In so far as the business of both the
entities is concerned, there is specific pleading in the reply Affidavit
that both were in same or similar businesses promoted by their father
Manohar to which there is no denial. Prima facie there is
identity/similarity of the goods/services offered by the Plaintiff and
the Defendant. As infringement is claimed of the mark "MINCO", a
specific query was put by this Court as to the manner of infringement,
to which the response was that the trademark is not affixed
/imprinted on the products supplied, which are customised as per the
customer's specifications, but the mark is used as part of tradename.
Perusal of the sales invoices of the Plaintiff on record does not show
the product description therein using the trademark "MINCO INDIA".
Therefore what is put to use in trade mark sense is the trade name of
which "MINCO" forms an essential part. The Plaintiff and the
Defendant use the word "MINCO" as part of its trade name in a trade
mark sense. It follows that the objection of the Plaintiff is to the use
of the word "MINCO" by the Defendant as part of its trade
name/domain name which according to the Plaintiff constitutes
infringement of its trade mark "MINCO INDIA" and amounts to
passing off.
16) The statutory provisions of T. M. Act provides for registration
and protection of trade marks and for grant of relief against
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infringement of registered trade mark. Under Section 28 of T.M. Act,
the registration of a trade mark, if valid, grants exclusive right to the
registered proprietor to use the trade mark and to obtain relief in
respect of infringement of trade mark in manner provided by this Act.
Section 29 of the T.M. Act governs the infringement of trade mark and
sub section (5) of Section 29 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 dealing in goods and
services in respect of which the trade mark is registered. Chapter V of
the T.M. Act deals with assignment and transmission and permits the
proprietor of registered trade mark to assign the trade mark with or
without the goodwill of the business concerned. Section 45 of T.M.
Act permits the assignee of registered trade mark to apply to the
Registrar to be registered as subsequent proprietor of the trade
mark. Chapter VI of the enactment deals with use of trade mark and
registered users. Section 48 and Section 49 provides for registration
as registered user of a person other than a registered proprietor of a
trade mark.
17) The statutory framework thus recognises the registered
proprietor of the trade mark and grants exclusive right to the
proprietor to use the trade mark, to obtain relief against infringement
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of the trade mark and also permits the use of the registered trade
mark by a person other than a registered proprietor by assignment or
as permitted user.
18) Coming to the proprietary right of the Plaintiff, it is specifically
pleaded that the Plaintiff is using the trade mark "MINCO INDIA" in
respect of its goods/services since the year 1982 and had applied for
registration of the word mark on 5 th June, 2023 with user claim of 6 th
October, 1982. There is no denial to the prior adoption and use of the
trademark by the Plaintiff. The question to be considered is whether
the Defendant should be restrained from use of the mark "MINCO" as
part of its trade name. The defence raised is of concurrent
entitlement to use the mark "MINCO" and bonafide adoption of the
mark on two grounds i.e. firstly by reason of being part of GICON
consortium and secondly by reason of no objection granted by
Plaintiff to change of Defendant's name.
19) To support its entitlement to use of the trade mark "MINCO",
the Defendant has pleaded the history of the incorporation of the
various companies by the family patriarch, the partition, family
settlement, the Plaintiff and Defendant being part of consortium
"GICON" etc. The dispute between Amarendra and Raghvendra who
are part of the same family is also set out. In an action for
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infringement and passing off, the manner of succession of the
controlling share holdings in both the companies is immaterial. The
family dispute between the Directors of the companies has no
relevance in teeth of the statutory scheme of the T.M. Act.
20) In so far as the bonafide adoption of the trademark as part of
trade name by Defendant is concerned, in the communication dated
7th March, 2020, the Plaintiff has prima facie accepted that GICON
served as nodal agency for routing the family business and that the
Plaintiff and Defendant were part of GICON which are now separated.
The resolution dated 18th May, 2012 precisely records the same fact of
splitting of the units of GICON which included the Plaintiff and the
Defendant. The terming of the said resolution of GICON as sham in
absence of any details about the Directors present, approval etc is
prima facie contradicted by the Plaintiff's own communication dated
7th March, 2020. Prima facie perusal of the resolution indicates that
the resolution was passed in the year 2012 to provide clarity on
overall control of GICON over its group companies. The material on
record would prima facie demonstrate that the Plaintiff and the
Defendant were in similar business and part of GICON group of
companies. There is another document of GICON dated 20 th April,
2016 certifying the status of the manufacturing units of GICON and
states that for more than 25 years, the four manufacturing units have
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been manufacturing their respective products and supplying to all
their esteemed customers and now GICON has been split up in
respect of the respective products as shown in the communication
and the units are free to register in their individual names. The
communication of 20th April, 2016 has not been specifically dealt with
by the Plaintiff in its rejoinder. Prima facie the material on record
indicates that the Plaintiff and Defendant were part of GICON
consortium and the four units including the Plaintiff and Defendant
were split up in terms of their products in the year 2016.
21) In this background of existence of the Plaintiff and the
Defendant, the change of the tradename of Defendant to Minco
(India) Flow Elements Pvt Ltd using the mark "MINCO" is required to
be appreciated. The Defendant has placed on record the resolution
of Plaintiff Company dated 2nd July, 2012 granting No objection to
change of the Defendant's name using the word MINCO as part of its
trade name and the Extra Ordinary General Body Meeting held on 16 th
August,2012. The explanatory statement of the EGM of Defendant
Company specifically records that the name "MINCO" is name of
Company of same group and is well known in the market for flow
measurement apparatus and instruments. Prima facie it appears that
the intent was to extend the benefit of the mark MINCO to the
Defendant Company being part of GICON consortium. The resolution
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is termed as fraudulent by the Plaintiff on the ground that the NOC as
well as the special resolution has been signed by Raghvendra Kulkarni
himself who at the relevant time was Director in both the companies
and is presently the Director of Defendant Company. Perusal of the
certified true copy of the resolution at Exhibit "F" indicates that the
resolution was pursuant to a meeting of Board of Directors held on
2nd July, 2012. Admittedly at the relevant time, Raghvendra was
Director of Plaintiff and was thus entitled to accord No Objection on
behalf of the Plaintiff. The fallacy in terming the NOC as fraudulent
by reason of sole objection of Amarendra after the filing of the suit is
that the submission equates the Director of the Plaintiff Company
with the Plaintiff Company ignoring the separate and distinct
existence of a Company apart from its Director and shareholders.
22) Prima facie the resolution indicates a meeting being held by the
Board of Directors of Plaintiff Company on 2 nd July, 2012 resolving to
give its no objection to the change in name of Defendant Company. It
is not prima facie shown that other Directors of the Board of
Directors of Plaintiff had not consented and the resolution was a
unilateral act on part of Raghvendra Kulkarni. The resolution of the
Defendant Company accepting the change of the name has been
passed in the extra ordinary general meeting which was attended by
other Directors apart from Raghvendra Kulkarni. For a period of three
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years after the NOC issued by the Plaintiff Company, Amarendra
Kulkarni continued as Director of the Defendant Company, which
prima facie shows knowledge and acceptance of the Defendant's
change of name. Even after becoming aware of the change in the
Defendant's trade name which results in use of the registered trade
mark of the Plaintiff Company as part of the trade name, the Plaintiff
and Amarendra Kulkarni remained inactive and took no steps to
challenge the validity of resolutions passed by the Plaintiff and
Defendant Company as regards change of name. Considering the
material on record, prima facie at the interim stage, I am not inclined
to accept that the use of the tradename by Defendant is dishonest
adoption and a fraudulent act. The decision of Hindustan Pencils
Private Limited (supra) considering the defence of delay and laches in
the background of tainted user does not assist the case of the
Plaintiff.
23) Even accepting the bonafide adoption of the trade name by the
Defendant using the mark "MINCO" with consent of the Plaintiff, the
proprietary right of the Plaintiff in the mark "MINCO INDIA" cannot be
denied. It is equally true that GICON is not the proprietor of the mark
"MINCO INDIA" and there is no intragroup arrangement
demonstrated, which would entitle the Defendant to concurrent use
of the mark "MINCO". The Defendant, however, does not rest its case
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only on right to concurrent use by reason of Plaintiff's No Objection
and being part of GICON, but has mounted a challenge to the
Plaintiff's entitlement to interim relief on ground of suppression of
facts. One of the key submissions canvassed is the false date of
knowledge pleaded in the plaint.
24) The pleading of suppression of fact is pressed by Mr. Kamod in
the context of grant of discretionary relief and not for the purpose of
Order 39 Rule 4 of CPC. It is trite that a party seeking equitable relief
is required to approach the Court with clean hands. Upon holistic
reading of the plaint, the impression that the plaint conveys is that
apart from the fact of the Director of the Defendant being at one
point of time the Director of the Plaintiff, the Plaintiff is totally
unaware of the existence of the Defendant Company, the use of the
trade mark as part of Defendant's trade name by the Defendant and
the business of the Defendant till February, 2024. Though it may not
be relevant to set out the family dispute between the brothers
Amarendra and Raghvendra, the Will of Manohar etc, considering that
the infringement is alleged under Section 29(5) of T.M. Act by reason
of use of the mark "MINCO" as part of the Defendant's trade name,
the manner of change of Defendant's trade name was a material and
relevant fact required to be pleaded. The plaint conveys the
impression that the Defendant Company is an unassociated third
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party Company with no concern or relevance to the Plaintiff Company.
The fact about the common directors, the manner of change of name
of Defendant Company, the business of identical goods/services
being carried out by the Defendant since inception are all relevant for
the purpose of deciding whether the adoption of the trade name by
the Defendant is bonafide and honest adoption and from the point of
view of concurrent user which has an impact on the balance of
convenience.
25) The plaint feigns complete ignorance about any association
with the Defendant and claims to be aware of Defendant only in the
year 2024. The Plaintiff and Defendant had common directors atleast
till the year 2015 and therefore the Plaintiff had complete knowledge
about the Defendant. Given the factual scenario, the pleading in
paragraph 12 and 13 of the plaint regarding the knowledge of
Plaintiff about the Defendant offering identical goods using the mark
"MINCO" in the year 2024 and being unable to find the goods/services
of Defendant using the mark "MINCO" is prima facie false statement
on oath. The date of knowledge of the Plaintiff is prima facie of the
year 2012, when the Defendant changed its trade name by using the
mark "MINCO" as part of its trade name and at the very least since the
year 2015.
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26) Though delay per se may not be available as defence to an
infringement action, the said legal position cannot give a carte
blanche to the Plaintiff to make incorrect statement of oath about
knowledge about the Defendant's infringing activity. Assuming
arguendo that the change of name was by reason of fraudulent act on
part of the Director of the Defendant, the knowledge about the fraud
and change of name was acquired by the Director of Plaintiff and
Deponent of the plaint in the year 2015 itself, which should have been
pleaded in the plaint. The products which are marketed by both the
companies are orifice plate, orifice meter run assembly, flow
instruments, level gauges, temperature controlling apparatus etc
since inception. It is incomprehensible that the Director of the
Plaintiff who was the Director of Defendant till the year 2015 was
unaware of either the change in the name in the year 2012 or about
the business of the Defendant. There is not a whisper in the entire
plaint about the the Directors of both the companies being common
till the year 2015 and the change of the name of Defendant company
incorporating the word MINCO as part of its trade name in the year
2012.
27) After the facts were set out in the reply Affidavit, in rejoinder it
is admitted that the Director of Plaintiff Company was the Director of
Defendant Company and vice versa. What is significant is that in
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paragraph 6 of the rejoinder affidavit, it is pleaded that the Director
of Plaintiff Company resigned from the Defendant Company in the
year 2015 upon becoming aware of change of name. The resignation
letter dated 15th December, 2015 by the Director of Plaintiff is
addressed to the Board of Directors of Minco (India) Flow Elements
Pvt Ltd which demonstrates knowledge about the use of the word
"MINCO" as part of the changed name by the Defendant. The Plaintiff
and the Defendant are located at Tivim Industrial Estate, Mapusa Goa
and their Mumbai address earlier was at 194/195 Gopi Tank Road, Off
Pandurang Naik Marg, Mahim and the cause title of the plaint show
that both are located at Kohinoor Square at Dadar, Mumbai. In the
rejoinder Affidavit, there is specific pleading in paragraph 18 that the
Defendant has throughout been known to provide sub standard
products/services and since consumers knew that Amarendra and
Raghvendra were brothers, they used to reach out to Amarendra to
resolve the situation , who used to address the situation. The reply
dated 7th March, 2020 by the Amarendra Kulkarni on behalf of General
Instruments Consortium accepts that the Plaintiff and Defendant
Company are intertwined and that their offices are located within the
same premises. In light of the material on record prima facie the
Plaintiff was well aware of the nature of business of the Defendant
and that the Defendant was carrying on business using the word
MINCO as part of its trade name and in trade mark sense since atleast
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the year 2015 and prima facie proves the falsity in the pleadings at
paragraph 12 and 13 of the plaint.
28) While considering the grant of interim injunction equity and
balance of convenience play significant role. The making of false
statement and suppression of material facts militates against grant of
discretionary relief. In Ramjas Foundation and Another (supra), the
Hon'ble Apex Court has held that the principle that a person who
does not come to the Court with clean hands is not entitled to be
heard on merits of his grievance and in any case such person is not
entitled to any relief is applicable not only to Petitions filed under
Article 32, 226 and 136 of Constitution but also to cases instituted in
other courts and judicial forums. In Pernod Richard India Pvt Ltd
(supra), the Hon'ble Court culled out the legal principles governing
grant of injunction to hold that the grant of injunction whether for
infringement or passing off is ultimately governed by equitable
principles and is subject to the general framework applicable to
proprietary rights. In Chemco Plastic Industries Pvt Ltd (supra), the
restraint was sought against use of the mark CHEMCO, the impugned
trading name CHEMCO PLAST and the impugned domain name
www.chemcoplast.com. This Court considered the facts of that case
to hold that there were multiple opportunities for the Plaintiff to
become aware of the presence of Defendant. This Court considered
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the aspect of equity and balance of convenience in that case of
concurrent user and held that balance of convenience to play a
significant role and did not grant injunction against use of the trade
name.
29) The present case stands on a better footing as the Plaintiff was
very well aware of the Defendant's change of name atleast from the
year 2015. Prima facie there is honest adoption of the mark by the
Defendant as part of its trade name. There was no action initiated by
the Plaintiff despite being aware of change of trade name way back in
the year 2015. Prima facie even the instance of confusion appears to
be doubtful as the response email is addressed by Plaintiff from
[email protected] and mentions the name of General
Instruments Consortium. Surprisingly, the response mail of the
Plaintiff states that the replacement flow nozzle has been supplied by
the Plaintiff. As the defective flow nozzle is claimed to have supplied
by the Defendant, in usual course of action, the client would be
directed to the Defendant for replacement instead of the Plaintiff
replacing the defective product. The pleading in paragraph 18 of the
rejoinder affidavit about Amarendra salvaging the situation when
need arose, when accepted, rules out that the email was by reason of
confusion amongst the consumers.
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30) The principles of equity and balance of convenience rules
against the grant of interim relief in favour of the Plaintiff who has
prima facie made false statements on oath and suppressed material
facts. The Defendant is using the mark MINCO as part of its trade
name since the year 2012 and has produced duly certified balance
sheet which prima facie shows sales turnover of approximately Rs
1,11,88,73,822/ since the year 2012. The contention is that there is no
positive act on part of the Plaintiff to infer acquiescence as
Amarendra has resigned from the Defendant Company upon
becoming aware of the change of name. The contention once again
blurs the separate existence of the Plaintiff from its Director and in
any event the resignation of Amarendra shows that the same was for
personal reasons. In Power Control Appliances and Others (supra), it
was held in paragraph 26 as under:
"12. 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 in involved in laches. In
Harcourt vs 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 become necessary to crush it, then the
plaintiff would be stopped by their acquiescence. If the
acquiescence in the infringement amounts to consent, then
it will be a complete defence as was laid down in Mouson
(J.G) & Co vs Boehm. The acquiescence must be such as to
lead to the inference of a license sufficient to create a new
right in the defendant as was laid down in Rodgers vs
Nowill."
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31) The principle laid down is that the Plaintiff cannot stand by and
allow the Defendant to carry on business by expending money and
after long lapse of time seek stoppage of the business. The
Defendant has been openly using the mark "MINCO" as part of its
trade name since the year 2012 to the complete knowledge of the
Plaintiff. Despite being aware of since the year 2012, the Plaintiff
Company has remained passive till the year 2025. For the past
thirteen years, the Defendant has continued its business using the
trade name MINCO INDIA and has build a formidable business which is
prima facie evident from the sales turnover. Though it is contended
that there is no acquiescence as the Defendant's registration
application mentions the use of the mark "MINCO" on proposed to be
used basis, the contention is misplaced. The registration application
seeks registration of device mark "MINCO" in saffron colour and there
is sufficient material on record such as invoices, balance sheets etc to
prima facie show the use of the mark "MINCO" as part of the trade
name by the Defendant since the year 2012.
32) There is no quarrel with the decisions of Pidilite Industries Ltd,
Abdul Rasul Nurallah Virjee and Midas Hygiene Industries (P) Ltd ,
however its applicability to facts of present case is doubtful.
Considering the nature of products which are orifice plates, orifice
assembly, venturi tubes, these products are part of niche market and
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are not regular products which are bought off the shelf. These
products are stated to be customised products as per the client's
specifications and bought by discerning clientele which are major
industries. Prima facie it is difficult to accept that the clientele for
such products would be confused in soliciting the goods/services.
Even accepting the email of 14th February, 2024, the same is a solitary
incident which has occurred since the year 2012 after change of name
and is insufficient to make out a case of confusion and deception.
33) There are no pleadings and no material to prima facie support
the case of passing off. The Plaintiff and Defendant are dealing in
identical goods/services since inception. There is nothing to persuade
this Court to come to a prima facie finding of misrepresentation by
the Defendant or that the Defendant has marketed its
product/services as that of Plaintiff intentionally or unintentionally.
There has to be cumulative satisfaction of the classical trinity (a)
goodwill (b) misrepresentation and (c) damage to goodwill, which is
not satisfied in the present case.
34) In light of the above discussion, no case has been made out for
grant of interim relief. Interim application stands dismissed.
(SHARMILA U. DESHMUKH, J.)
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