Premwati Bansal vs M/S. Shri Ganpati International
1999 Latest Caselaw 856 Del

ORDER

Vikramajit Sen, J.

1. The plaintiff has brought this suit under Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958 as well as under Section 51 of the Indian Copyright Act, 1957 seeking the relief of permanent injunction and rendition of accounts. The case disclosed in the plaint is that the Plaintiff is the proprietor of the trade mark 'HARIYALI LABEL' in relation to rice which was adopted on 1.4. 1993 and has been continuously in use thereafter. It is averred that in order to acquire statutory rights for the trade mark HARIYALI LABEL, an application in clause 30 of the Trade & Merchandise Marks Act, 1958 was filed on 9.8.1996 and this application is still pending. It is further averred that the Plaintiff is the proprietor in the artistic feature of HARIYALI LABEL and that she holds its copyright. An Application for registration under Section 45(1) of the Copyright Act was filed by her on 22.2.1999 and No objection Certificate was granted by Registrar Trade Marks on 7.7.1999. Since the plaint is dated 6.7.1999 it is obvious that this Certificate is springboard for the litigation. It is further averred that the trade mark HARIYALI LABEL has become distinctive to the Plaintiff's goods, on accounts of its extensive and exclusive user. The Plaintiff has further set out its sales figures commencing with the year 1992-93. It has thereafter been pleaded that considerable expenses have been incurred by the Plaintiff towards its advertisement of the trade mark HARIYALI LABEL.

2. It is the Plaintiff's case that Defendant No. 2 of which Defendant No.1 is a sister concern was the commission agent of the Plaintiff who used to sell rice bearing this trade mark and that the Defendant was fully. aware about the use and reputation of the Plaintiff in respect of the trade mark HARIYALI LABEL. On this premise it was pleaded that the use of this trade mark by the Defendants could not be anything but a deliberate imitation. Keeping all this in perspective, it is the Plaintiff's allegation that the public, when dealing with the Defendant in respect of this product would in fact be misled into thinking that they were dealing with the Plaintiff. Since both parties are rice dealers confusion in the mind for of the public is certain to be caused.

3. It is further averred in the plaint that a criminal complaint under Sections 78 and 79 of the Trade & Merchandise Marks Act, 1958 as well as under Sections 63 and 64 of the Indian copyright Act, 1957 was filed against unknown persons and that the Plaintiff effected seizure at the Defendants premises of large quantity of spurious rice duly labelled "HARIYALI LABEL".

4. In the conspectus of these alleged facts an ex parte and interim injunction has had been granted on 3.8.1999 to the Plaintiff in I. A. 7268/99. I.A. 7965/99 was thereafter filed under order 39, Rule 4 of the CPC by the Defendants. A Reply to the Plaintiff's I.A. 7268/99 together with written statement was also filed.

5. The case pleaded by the Defendants, inter alia, is that the Plaintiff has not only sworn a false affidavit but has also filed false documents inasmuch as the word 'HARIYALI' has been added in the invoices filed on Pages 42 and 53 of the document file. it is further pointed out that these invoices relate to a period prior to 1.4.1993 and therefore contradicts the averment in the plaint that the Plaintiff has been using "HARIYALI LABEL" since 1.4.1993. It is stated that Defendant No. 2 is the proprietor of the trade mark HARIYALI LABEL. In relation to rice and that this has been adopted by the Defendant since 1.1.1994 and has been continuously in use from that date. Whilst it is pleaded by the Plaintiff that Defendant No. 2 is its commission agent. in contradiction thereto it is also pleaded that the Plaintiff came to know only on 8.7.1999, when the Registrar of Trade Marks, Bombay, issued a show cause notice to Defendant No. 2 for cancellation of " No objection Certificate". The Written Statement further contains. the averment that the Plaintiff is well aware that the Defendant No. 2. is the originator and proprietor of HARIYALI trade mark since 1.1.1994. The motive in filing the plaint is business rivalry and to pressurise Defendant No. 2 to discontinue that the prosecution of the his complaint against the Plaintiff under Section 81 of the Trade & Merchandise Marks Act, 1958 which is pending disposal since 19.3.1999. It is further averred that Defendant No. 2 has made a publication in the Sandhya Times on 8.3.1999 about the misuse of its trade name HARIYALI. The Defendant laid stress on the fact that although the Plaintiff was fully aware of the trade activities of Defendant No. 2 since they are carrying on business in the same trade and same market the complaint before the Chief Metropolitan Magistrate, Delhi was filed against unknown persons and a general search warrant had been obtained. On the Defendants insistence in the Crl. M. (Main) petition this Court has stayed proceedings before the Chief Metropolitan Magistrate, Delhi and has summoned the file.

6. The Defendants have also placed on record bills since January 1994 onwards. It has been pleaded that the trade name HARIYALI was applied by M/s. Deva Nand Umesh Kumar on 28.2.1994 while showing the actual user since 1.1.1994. According to the Written Statement his mother was a partner in M/s. Kharatilat Bhaniram and on her death he became a partner. The Search Report dated 22.2.1994 obtained from the office of the Registrar of Trade Marks disclosed that no other person had made a similar application. An application for correction/amendment was made by the Defendant vide appli-

cation dated 17.3.1999 and the Registrar of Trade marks vide letter dated 26.4.1999 allowed the application TM-16. It is emphasised by the Defendants that the Plaintiff's application for registration of trade mark is dated 9.8.1996 that is much after the application of the Defendants. The defendants alleged that they are the proprietors of an artistic feature HARIYALI and hold copyright therein and the Registrar of Trade Marks has issued no objection Certificate and that the final registration certificate is likely to be granted shortly.

7. What falls for consideration is whether the ex parte orders passed in I.A. 7268/99 deserve to extended or whether this application and the orders passed thereon deserve dismissal as prayed for in the Defendants I.A. No 7965/99.

8. In Century Traders Vs. Roshan Lal Duggar & Co. & Ors., a Division Bench of this court had observed that " in an action for passing off in order to succeed in getting an interim injunction the Plaintiff has to establish user of the mark prior to point of time the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led of or is available of user of their registered trade mark".

9. In Gora Mal Hari Ram Vs. Bharat Soap and Oil Industries, , another Division Bench of this Court had recorded the following caution:

"It is difficult to draw a line between cases in which the interim injunction has to be issued and those in which it has to be refused. If it is granted as a matter of course, then the defendant will immediately stop trading in the article in question and the suit will become infructuous. If that happens, the plaintiff would have achieved his purpose without a trial. It can only be allowed to happen if the plaintiff has such a strong case that it is almost impossible to refute. We have not been shown any such material on record as would establish in our minds that the plaintiffs enjoy such a reputation in relation to the soap 'Savera' as would impel the grant of an interim injunction. The fact is that a limited registration has been granted to some other manufacturers, so we doubt very much that the plaintiffs have reputation irrevocably connected with the trade mark. It may be that at the trial such a reputation may be established and the plaintiffs may get a permanent injunction to restrain the defendants. We are satisfied that an interim injunction could not be granted on the facts and circumstances of the present case."

10. In similar vein another Division Bench of this Court in M/s Niky Tasha India Pvt. Ltd. Vs. Faridabad Gas Gadgets Private Ltd. AIR 1985 Delhi 136 observed as follows:

"I cannot accept the argument that the plaintiffs on the strength of the registration certificate have an absolute right, a right which is good even against independent designers. "The Court is not the habit of granting injunctions until the title has been established". "The Court leans against monopolies". The certificate does not establish a conclusive right. It has to be tried and tested in the laboratory of Courts. We must not forget that the registered design of the plaintiffs is of a very recent date. In case of a recent monopoly which is seriouslydisputed on various grounds such as prior publication, a lack of originality, trade variation etc. it will not be proper to grant an injunction. There is a serious question to be argued as to whether the design is valid or not, and on the facts I am not satisfied that the balance of convenience requires an interim injunction, particularly in view of the under taking which the defendants are prepared to give."

11. Another Division Bench of this Court in N.R. Dongre and Others Vs. Whirlpool Corporation and Others, followed the judgment in Century Traders case (supra) and held that registration of a trade mark under the Act would be irrelevant in an action for passing off.

12. In Garden Perfume (P) Ltd. Vs. Anand Soaps & Detergents, 1994(1) Arb. L.R. 107 A single Judge of this Court had held that "If there is an honest concurrent user of a trade mark then an injunction ought not to issue".

13. In M/s. Wattan Singh and Sons Vs. The Registrar of Trade Marks and Ors., AIR 1977 Delhi it was reiterated that " it is by now well settled, and does not admit of any controversy, that concurrent user need not be continuous and uninterrupted to satisfy the requirements of Section 12(3) or that it must be of great magnitude. What is required is a consistent use of the mark in a commercial sense. The quantum of production and sale may very from time to time and there may even be interruption in the business on a variety of reasons but none of these would deviate from the conclusion of concurrent user if the use was in the course of trade and was resumed after interruptions."

14. In Smt. Vinay Chawla Vs. M/s. Chandamama Toytronix Pvt. Ltd. a single Judge of this Court held that " injunction was called for where the defendant was selling his goods under the same name, ' CUDDLES'. which was the trade mark of the plaintiff of a prior user.

15. In Pritam Das Vs. Anil Food Industries, 1995 PTR 233 Single Judge of this Court upheld the refusal of an injunction where the prior user of the trade mark had not been established.

16. The decision of the Orissa High Court in Brundaban Sahu Vs. B. Rajendra Subudhi, is also to the affect that where the plaintiff had not registered his wrapper or label with the Registrar of Copyrights no prima facie case in relation to the infringement there of could be made out.

17. In Bimal Govindji Shah Vs. Panna Lal Chandu Lal, 1997 PTC (17) 347 learned single Judge of this Court had declined to accept the defendant's plea for dismissal of an application for temporary injunction on the ground that the registration of the trade mark in question had been obtained by the defendant in 1987 whereas the petition had been filed in 1996. In that case learned Judge had held the defendant to be equally lax in complaining of the use of the mark FLORA by the Plaintiff and for the this reason had issued an injunction in favour of the plaintiff. The main consideration in the FLORA case, however, was that the registration of the trade mark would not be absolute right such as would defeat a prayer of injunction. In the view that I have taken i.e. that prior user has not been clearly established and that concurrent user has been clearly established, the said decision would not apply to the facts of the present case.

18. Various other judgments were cited but considering the frequency with which actions of the present nature are filed, and decisions thereon given, it would be pointless to consider all the decisions.

19. In the present case it is not in dispute that the parties are known to each other on commercial transactions inter se. The Plaintiff had applied for registration of the trade mark HARIYALI on 9.8.1996 claiming user from 1.4.1993, whereas the Defendant had applied for registration on 28.2.1994 and claims user from 1.1.1994. Learned senior counsel appearing on behalf of Defendant argued that the bills submitted by the plaintiff Pertain to a period prior to 1.4.1993. The genuineness of these bills is seriously disputed and it is argued that these have been prepared keeping the suit in mind. Whatever be the legitimacy and truth in the rival contentions it is clear that both parties have been using the trade mark HARIYALI for several years now and both parties have also applied for registration. Accordingly concurrent user is clearly established . The temporary injunction has been prayed for after the lapse of five years of the user of trade mark HARIYALI by both the parties. It cannot be appreciated why the Plaintiff has approached the Court after the lapes of this long period, and as observed earlier, the issuance of the No Objection Certificate in July 1999 appears to be the springboard for this litigation. In my view it has not been established in such a way as to leave little doubt that the Plaintiff is prior user of the trade mark HARIYALI. The arguments revolving around the concurrent user of this mark ought to convince a Court to refrain from the grant of prohibitory injunction. Therefore a prima facie case for the issuance of ad interim injunction, in the circumstances of this case, do not exist.

20. As has been narrated hereinabove the plaintiff had filled a complaint before the Chief Metropolitan Magistrate, Delhi under Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 and Sections 63 and 64 of the Indian Copyright Act, 1957. This complaint was however filed against unknown persons but seizures were effected at the Defendants premises. It cannot be appreciated why the Plaintiff did not specifically direct his complaint against the Defendants herein and I cannot by but arrive at the conclusion that its action in those proceedings were mala fide. Furthermore the report of the sub Inspector regarding the seizures made in these proceedings before the ACMM, Delhi has been suppressed by the Plaintiff. This was perhaps for the reason that the said Sub Inspector had recorded a finding that the Plaintiff's assertion that it had adopted the HARIYALI LABEL with effect from 1.4.1993 was not supported by any independent documentation. The Sub Inspector had further recorded a finding that the Defendants had applied for TM registration in 1994 whereas the plaintiff had applied in 1996. In order to counter these arguments the plaintiff had relied on a decision of the Supreme Court in State of U.P. Vs. Ram Nath, wherein it was held that for the proposes of chapter 10 of the Trade and Merchandise Marks Act, a trade mark includes registered as well as unregistered trade mark and that on offence under Sections 78 and 79 relates to both registered and unregistered trade marks. This controversy is not in consideration in these proceedings but what would weigh in the mind of the Court for granting injunction, would be prior user of the trade mark concerned and, therefore, this precedent is of no assistance to the Plaintiff. Learned counsel for the Plaintiff had also relied on the decision of the Supreme Court in M/s. Karam Chand Ganga Prasad & Anr. Etc. Vs. Union of India & Ors, but I fail to appreciate its relevance to the facts of the present case. Had the Plaintiff paced the report of the Sub Inspector on the record. it is quite likely that these observations of a third party, uninterested in the dispute, would have weighed in the mind in declining an injunction. The Plaintiff has not approached the Court with clean hands. Learned counsel for the Plaintiff had argued that there was no proper assignment of the trade mark HARIYALI in favour of the Defendants since the application was not made by the Defendants. This is seriously disputed in the written Statement and the manner in which the trade mark has come to be owned by the Defendant has been traversed in detail in the Written Statement. In any event, since it is my conclusion that there has been concurrent user for a period of almost five years, and in view of the fact that registration of a trade mark would only provide a Prima facie case for the existence of an injunction, this controversy loses significance.

21. For the reasons stated above plaintiff's I.A. 7268/99 is dismissed with costs quantified at Rs. 5.000/-. The interim order previously passed is vacated. I.A. 7965/99 filed under Order XXXIX Rule 4 is, therefore, allowed.