Virumal Praveen Kumar vs Gokal Chand Hari Chand
2000 Latest Caselaw 782 Del

ORDER

Mukul Mudgal, J.

1. The plaintiff has filed the suit claiming to be the lawful proprietor of the trade mark bearing numerals '555' for buttons, safety pins, hooks, eyelets, fasteners etc. and the said trade mark was registered under application No.555498 dated 30th July, 1991. It is also averred by the plaintiff that the defendant was the dealer of the plaintiff since 1991 and the suit was filed on the plaintiff coming to know that the defendant had also started marketing its product under the similar trade mark '555' and were attempting to pass off their inferior quality goods as of the plaintiff's. On the basis of the above averments while registering the suit on 15th September, 1998, this Court in IA 7984/98 by an ex parte order had restrained the defendants, their servants, agents etc. from manufacturing, selling or offering for sale or otherwise dealing in buttons and safety pins under the trade mark '555'.

2. Thereafter on 23rd October, 1998 the present IA 9347/98 under Order 39, Rule 4 CPC was filed by the defendant for vacation of the interim order. The case made out by Mr. Ghiraya, learned counsel for the defendant, of the defendant is that the statement made by the plaintiff that the plaintiff was a lawful proprietor of the trade mark bearing numeral '555' was a wrong statement as the plaintiff was not the proprietor of the registered trade mark '555' and had merely applied for the same. He has relied on judgment in case Metro Playing Card Company Vs. Wazir Chand Kapoor reported as AIR 1970 Delhi 248 to contend that no right is conferred on an application for registration of a trade mark. The other plea made by the defendant is that the defendant uses the trade mark 'V.R' device of SWAN in a flower with numerals '555' and the trade mark is used as a carton and which carton has not been placed in this Court. The main plea of the learned counsel for the defendant is that the plaintiff is not the proprietor of the trade mark '555' and in fact is the pirator of the trade mark '555' which dispute is the subject matter of Suit 2018/95 which suit was filed against the plaintiff by M/s. Needle Industries Limited. In support of this plea the plaintiff has relied upon the judgments reported as 1988 PTC 182 and 1989 PTC 98. It has been submitted by the defendant that the plaintiff has concealed a vital fact from this Court while obtaining an ex parte interim order that the Suit No. 2018/95 has been filed against the plaintiff, which concealment in itself is sufficient to warrant the vacation of the ex parte interim injunction.

3. In my view the plea of the defendant which is relevant and material is the plea of the concealment pof material facts from this Court. In support of the defendant's averments that the pendency of suit No.2018/95 filed by M/s. Needle Industries against the plaintiff was kept back from this Court the defendant pleaded in para 7 of his application as under:- "The plaintiff has not come to this Hon'ble Court with clean hands and have concealed the material facts before this Court in respect of that M/s Needle Industries (India) Limited and William Prim GmbH & Co. Ltd. have instituted legal proceedings by filing of suit No.2018/95 against the plaintiff seeking the relief of infringement of trade mark `555' and passing off and rendition of accounts etc. etc. against the said plaintiff and same is pending before this Hon'ble Court. The present plaintiff have filed the written statement in suit No.2018/95 and certified copy of the same is filed in the proceedings. Thus, plaintiff is not the proprietor and lawful owner of the trade mark `555' in respect of Spring Snap Fastners, buttons, safety pins, hooks, eyelets and fastners, if any, plaintiff is subsequent in adoption and use of trade mark `555', therefore, plaintiff is pirator of the trade mark `555' which is the subject matter of suit No.2018/95 and has been brought into existence admittedly much before plaintiff started using similar trade mark by M/s Needle Industries (India) Limited and M/s William Prym GmbH & Co. KG, therefore, use of trade mark `555' on the part of plaintiff being tained with piracy from the very beginning and no law having been brought to notice providing protection to pirator and, therefore, plaintiff is not entitled to the equitable relief of injunction against the defendant, as such, suit as well as application of the plaintiff deserves dismissal."

4. The plaintiff in his reply to the said para 7 of the defendant's application stated as follows in paragraph 7:- "That the contents of para 7, as stated are wrong and denied. It is denied that the plaintiff has not come to this Hon'ble Court with clean hands and have concealed the material facts before this Hon'ble Court, as alleged. So far as institution of Suit No.2018/95 against the present plaintiff is concerned, the same is denied and it is submitted that no such suit being No.2018/95 is pending against the present plaintiff before this Hon'ble Court. However Suit No.2098/95 is pending before this Hon'ble Court but, the parties in the said suit are different. The defendant is not a party in that suit. Howsoever, it is respectfulz ly submitted that because of the admission made by the defendant that the defendant was the distributor of the plaintiff's goods marked under the trade mark `555', the defendant cannot use the said mark `555' with any prefix or suffix after termination of the distributorship by the plaintiff. It is also, therefore, wrong to say that the present plaintiff is not entitled to the equitable relief of injunction against the defendant. As such it is denied that the present suit as well as application filed by the plaintiff deserves dismissal."

5. The above pleadings demonstrate eloquently that the plaintiff has not come to this Court with clean hands. The plaintiff did not state in the plaint that a suit filed in respect of the impugned trade mark against the plaintiff was pending in this Court. Merely taking recourse to the error of the defendant in giving the wrong number of suit in this Court cannot justify the conduct of the plaintiff particularly when the defendant had clearly specified the subject matter of the suit filed by the Needle Industries against the plaintiff. The plaintiff could not have been in any doubt as to what suit the defendant was referring to in paragraph 7 of the application. The concealment of this fact is not without significance and the reply of the plaintiff to the averments in paragraph 7 of the application of the defendant under Order 39 Rule 4 is vague, evasive and obviously an attempt to cover up the fact that a material fact was not pleaded in the plaint with obvious motives. It is clear that if the plaintiff had pleaded that a suit had been filed in this Court by M/s Needle Industries against the plaintiff averring breach of their mark '555' in respect of similar goods this Court may not have passed an interim order of injunction in favour of the plaintiff. Even in its reply to the averment of concealment made by the defendant in paragraph 7 the defendant while attempting to take unfair advantage of the wrong suit number given by the defendant glosses over the contents of the plaint filed by M/s. Needle Industries against it by stating that the defendant is not a party to the Suit No. 2098/95. Significantly the plaintiff fails to note that while the defendant may not be a party to the suit No. 2098/95 the plaintiff certainly was and, therefore, could and should have disclosed the subject matter of the said suit to this Court in the plaint. I have called for the file of Suit No. 2098/95 and find that the said suit filed by M/s. Needle Industries was in respect of the same subject matter alleging an infraction of M/s. Needle Industries's rights and claiming unlawful passing off by the plaintiff in the present case.

6. In my view without going into the other pleas raised by the defendant it is clear that having suppressed material and relevant facts having a vital bearing on the present dispute the plaintiff is not entitled to the equitable relief being granted in its favour and the interim injunction granted on 15th September, 1998, therefore, deserved to be vacated. The plaintiff has not only thus concealed the material fact of Needle Industries having filed a suit No.2098/95 in respect of the same trade mark '555' against the plaintiff from this Court but thereafter in reply to the application filed by the defendant has given vague and evasive replies without bringing on record the correct facts. The reliance on the hyper technicality of the suit number not being correctly mentioned by the defendant in the application under Order 39, Rule 4 loses significance because the plaintiff in any event in its plaint ought to have disclosed that a suit filed by Needle Industries in respect of the same product and mark was pending in this Court against the plaintiff.

7. Thus I am satisfied that the plaintiff's conduct of concealment of material facts disentitles it to any indulgence of continuance of an interim order in its favour. Accordingly this application is allowed and the interim injunction granted on 15th September, 1998 is vacated. The defend- ant/applicant will be entitled to costs quantified at Rs. 5,000/-.