Needle Industries (India) ... vs Virumal Parveen Kumar
2000 Latest Caselaw 360 Del

ORDER

S.K. Mahajan, J.

1. Plaintiff No.2, a company under the existing laws of Germany, claims to have established international business in the field of manufacturing and marketing snap fasteners, needles of all kinds, hooks and eyelets. Plaintiff No.1 is stated to be a subsidiary of plaintiff No.2 and claims to be manufacturers of high quality hand sewing needles, knitting pins, snap fasteners and allied products. Between 1963 to 1981, it is alleged, there existed a license agreement between the plaintiffs inter-se which authorised plaintiff No.1 to manufacture press studs in accordance with the specifications and standards of quality laid down by plaintiff No.2. Plaintiff No.1 was also authorised to use plaintiff No.2's allegedly world-wide famous mark "555" registered in India for press studs and snap fasteners, etc. in class 26. The trade marks are stated to be still valid and subsisting on the register of trade marks. During the subsistence of the aforesaid licensed use by plaintiff No.1, the product, with the trade mark "555", was allegedly regularly advertised in the Indian newspapers and magazines. The sale of the plaintiffs products was allegedly further supported by promotional material and a considerable amount is stated to have been spent by the plaintiffs in promoting the sale of their product. The product of the plaintiff had allegedly become a household name in India and the trade mark "555" was identified exclusively with the product and business of the plaintiffs alone. Though the license agreement between the plaintiffs inter-se came to an end in 1981, the trade mark "555" continued to be retained on the trade mark register and allegedly continues to retain goodwill and reputation in the Indian market.

2. Besides the use of the trade mark "555", the plaintiffs had allegedly also sold their products under a distinctive trade mark consisting of the word "PONY" and the device of a pony represented against a distinctive colour scheme of silver gray and orange. The aforesaid "PONY" card is registered as an artistic work under the Copyright Act in the name of plaintiff No.2. The artistic work was published in 1988 and has since been used as a trade mark on an extensive scale in India and abroad. "PONY" (label), "PONY" (device) and "PONY" (word and device) have been registered as trade marks in class 26 for knitting pins, snap fasteners, safety pins, etc. The products under these trade marks are being sold on an extensive scale in India and abroad and the plaintiffs have allegedly spent a considerable amount on the sales promotion of these products under the trade mark "PONY". It is alleged that as the products bearing the "PONY" card, conform to the proven international standards of quality the same enjoy substantial reputation and goodwill in the market place.

3. Defendant is also a manufacturer of snap fasteners. The plaintiffs filed this suit for an injunction and rendition of accounts on the allegations that the defendant had been marketing snap fasteners by way of cards bearing the trade mark "555" and an orange-gray combination, identical to the colour scheme of the "PONY" card. It is alleged that the defendant had surreptitiously adopted the registered trade mark "555" of plaintiff No.2 and the registered trade mark of the "PONY" card of plaintiff No.1 thereby achieving maximum proximity with the business of the plaintiffs. It is alleged that snap fasteners of the plaintiffs contain similar features as that of the "PONY" card of plaintiff No.1. The size and dimension of the defendant's card is alleged to be identical to that of the "PONY" card; the silver gray and orange colour combination/scheme of the defendant's card is identical to the colour combination/scheme of the "PONY" card of plaintiff No.1; printed matter on the defendant's card is identical in placement and content to the corresponding features of the "PONY" card and the trade mark "555" appears at the upper right hand corner of the defendant's card, copied from the trade mark of plaintiff No.2. With these allegations, the plaintiffs claiming themselves to be the registered owners of the trade mark as well as the copyright, seek an order of restraint against the defendant from marketing, manufacturing or selling snap fasteners either with a colour scheme of silver gray and orange , lay out and get up which is identical or deceptively similar to the registered copyright of "PONY" card or with the trade mark "555". Certain other reliefs were also claimed in the suit.

4. Alongwith the suit, an application for grant of ad-interim relief was also filed claiming similar reliefs as claimed in the suit. By this order, I propose to dispose of this application of the plaintiff for injunction.

5. The defense to the suit by the defendant is that the defendant was carrying on the business under the trade mark/label entitled "V.R." with the device of swan and the numerals "555" since 1989 openly, regularly, continuously, exclusively and extensively which they had bona fidely and honestly adopted and as such the plaintiffs cannot maintain this suit against the defendant. It is also alleged that the delay in bringing the suit has not been explained by the plaintiff and in the absence of any plausible explanation, the delay, laches and acquiescence on the part of the plaintiffs was fatal to their suit. It is also the case of the defendant that the impugned trade mark "555" has never been used in India even if it was registered in the name of the plaintiffs in India and no such label as filed alongwith the plaint was ever seen in the Indian market. It is also alleged that since no goods under the trade mark "555" were ever sold in the Indian market, there was no question of the plaintiffs issuing any advertisement for promoting the sale of the said product. It is also alleged that as no goods under the trade mark "555" were ever sold in the Indian market, there was no question of the said goods being identified exclusively with the plaintiffs. It is also the case of the defendant that admittedly the alleged license came to an end in 1981 and even if earlier they were being sold, as the plaintiffs were not using their trade mark "555" since 1981, they would be deemed to have abandoned the same. Though this was an argument raised during the course of arguments, however, I find that no such pleading about abandonment has been taken by the defendant in the written statement. It is further the case of the defendant that as regards sale of plaintiffs product under the trade mark "PONY" represented in a distinctive colour scheme of silver gray and orange, the colour scheme of silver gray and orange was common to trade and no one could claim its exclusive user including the plaintiffs. In any case, the said allegations, according to the defendant, were irrelevant as the defendant was not using the trade mark "PONY" or any other trade mark which may be identical and/or deceptively similar to this registered trade mark of the plaintiffs. It is stated that the defendants are the originators, owners and first adopters in the cartons and cards for packing snap fasteners since 1989 and they have been using the same openly and continuously in relation to the said products.

6. The trade mark "555" is registered in the name of the plaintiffs in class 26 under No.150770. By a letter dated NIL the Registrar of Trade Marks has registered plaintiff No.1 as the registered user of the trade mark for a period of seven years from the date of the application upto 20th February, 1977 or till the termination of the registered user agreement. By another letter dated 16th June, 1984 the name of plaintiff No.1 was registered as registered user of the trade mark. By another letter dated 30th March, 1995 the registration of the trade mark was renewed for a period of seven years from 19th September, 1994. It is thus clear that the trade mark "555" is registered in the name of the plaintiffs and continues to be so registered at least till 19th September, 2001. Question, therefore, is whether any person has a right to infringe the trade mark registered in the name of another person even assuming that the said person is not using the trade mark or is not manufacturing the product under the said trade mark.

7. Mr.Aggarwal, learned counsel for the defendant, has placed reliance upon the Judgment of the Supreme Court in Corn Products Refining Company Vs. Shangrila Food Products Limited, to contend that the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the mark in the register. It is, therefore, contended that as the plaintiffs were not the user of the trade mark at least since 1981, they cannot claim injunction against the defendant who has been openly using it since 1989. He has also relied upon a Judgment of the Bombay High Court in Cluett Peabody and Company Vs. Arrow Apparals, 1998 (18) PTC 156 to contend that the object of the Trade Marks Act is to protect the proprietary right of a registered trade mark holder. However, if the mark is registered and not used for thirty years, depending on the facts, prima facie, it becomes a source of monopoly which is not the object of the Act. It is also the submission of Mr.Aggarwal that as there was no user of the mark in India particularly when there was no evidence of the date on which reputation and the goodwill of the mark travelled into India, the plaintiff will not be entitled to an injunction and the defendant cannot be harassed by threat of litigation by the registered proprietor.

8. Under Section 28(1) of the Trade and Merchandise Marks Act, 1958, the registered proprietor gets exclusive right to use the trade mark in rela-

tion to the goods in respect of which the trade mark is registered and the owner also gets the right to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. Under Section 29(i) of the Act a registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade, mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods 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 trademark. Under Section 29(2) of the Act in an action for infringement of a trade mark registered in Part-B of the register the injunction shall not be granted if the defendant establishes to the satisfaction of the Court that use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark.

9. None of the judgments referred to by Mr.Aggarwal, in my view, will be of any assistance to the defendant. In Corn Products Refining Company Vs. Shangrila Food Products Limited (Supra), the Court was concerned with the registration of a trade mark. The respondent in that case had applied for registration of the mark "Gluvita" in respect of the goods specified in class 30 which mark, it appeared later, had not been used prior to that date by the respondent. The application was ordered to be advertised by the Registrar before acceptance on the respondent's agreeing to limit the registration to biscuits only which were one of the classes of goods specified in class 30. The appellant, a company registered in the State of New Jersey in the United States of America, opposed the respondent's application on the ground that it had already registered the mark "Glucovita" under the Act in class 30 in respect of "Dextrose (d-Glucose powder mixed with vitamins), a substance used as food or as an ingredient in food; glucose for food". On the same date, the appellant had also registered the trade mark in respect of infants and invalids foods. On this opposition by the Appellant to the registration of the trade mark, the Deputy Registrar held that Section 10(1) did not apply, for biscuits included in class 30 were not goods of the same description as glucose powder mixed with vitamins which was in the same class. Two marks were also held to be sufficiently distinguished phonetically and it was held that it was impossible for anyone to be deceived or confused. One of the finding of the Deputy Registrar was "that the appellant had acquired a reputation and goodwill for its trade mark "Glucovita" in respect of glucose powder mixed with vitamins". Against the order of the Deputy Registrar of Trade Marks, appeal was preferred by the appellant to the High Court at Bombay. The High Court disagreed with the view of the Deputy Registrar that the respondent's mark was not likely to cause deception or confusion and held that two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion. The order of the Deputy Registrar was, therefore, set aside and it was held that the respondent's mark could not be registered in view of Section 8(a) of the Act. Against this order of the learned Single Judge of the Bombay High Court, appeal was preferred by the respondent. The Appellate Bench of the Court took the view that there was no evidence that the appellants mark had acquired any reputation amongst the public but that the evidence produced showed that it had acquired a reputation among the trades people only who were discerning and were not likely to be deceived or confused. It was also held that there were series of marks in which the prefix or suffix "Gluco" or "Vita" occurred and that it could not, therefore, be said that the common features "Gluco" and "Vita" were only associated with the manufacture of the appellant's goods. They, therefore held that the proposed mark of the respondent was not likely to confuse or deceive anyone. The appeal was allowed and the order of the Deputy Registrar was restored. Against this Order, the matter was taken to the Supreme Court. The Supreme Court set aside the order of the Appellate Bench of the Bombay High Court and held that the mark "Glucovita" had acquired a reputation amongst the general public. Nowhere in this case the Supreme Court was referring to the mark of the appellant regarding its not being in use though registered in its name. The Supreme Court referring to an argument of the respondent in that case that there were large number of marks registered under the Act which had either "Gluco" or "Vita" as prefix or suffix, had observed "Now, of course, the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register". These observations were not in relation to the mark of the appellant in that case but were in relation to some other marks which were referred to by the Deputy Registrar of Trade Marks regarding the existence of a large number of marks having either "Gluco" or "Vita" as prefix or suffix in their names. The Supreme Court while referring to this held that the series of marks containing the common element or elements, therefore, only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants rely on those marks and in that case the applicant (the respondent before the Supreme Court) led no evidence as to the user of the marks with the common element. The Supreme Court having thus found that though some marks might have been registered but there was no evidence led by the applicant in that case to show the user of those marks by the registered owners. The aforesaid observations were made in that context. In my view, these observations are not at all applicable to the facts of the present case inasmuch as there is sufficient material on record before me to, prima facie, come to a conclusion that the plaintiffs were using the trade mark "555" at least till 1981 and this trade mark continues to be registered in their name at least till 19th September, 2001. Moreover, the case before the Supreme Court was a case of registration of trade mark and not infringement. The considerations for registration of a trade mark are entirely different from a case of infringement. As already mentioned above, under Section 28(1) of the Act, the registered proprietors gets exclusive right to use this mark in relation to the goods for which it has been registered.

10. In Cluett Peabody and Company Vs. Arrow Apparals (Supra), the other judgment relied upon by the defendant, the facts were that the plaintiffs in that case were owners of the trade mark "ARROW". The same having been registered in the name of plaintiff No.1 and plaintiff No.2 was a licensee to use the said trade mark. The trade mark was registered during the period 1955-60 and was since renewed every seven years. The amount expended towards advertisements in various media in print, radio and TV exceeded US $ 50,00,000 per annum. According to the plaintiff, such advertisements had appeared in various magazines right from 21st November, 1931. On 20th April, 1980 it appeared in TIME magazine, on 18th April, 1991 it appeared in ESQUIRE in April 1991 it appeared in GENTLEMAN quarterly and in a magazine called VANITY FAIR. It was not disputed that all these were foreign magazines. It was the case of the plaintiff in that case that publication of advertisement in those magazines had taken place after liberalisation came to the country in 1981 and, therefore, the only solitary magazine on which the plaintiff had placed reliance was the Time magazine dated 20th April, 1980 which, according to the defendants, was a banned item of magazine in India in 1980 which, of course, is disputed by the plaintiff. In or about September 1, 1980 plaintiff No.1 in that case had entered into a license agreement with two companies in India. The recorded of the registered user agreement of the trade mark "ARROW" was pending recorded with the Registrar of Trade Marks when the suit was instituted in the Court on 25th April, 1994. On 8th November, 1993 the defendants addressed a letter to the second plaintiff calling upon it to cease and desist using the trade mark "ARROW" on the ground that the defendants were the leading manufacturers of readymade garments particularly shirts and the defendants had been using the trade mark "ARROW" since 1985 and the trade mark "ARROW" was awaiting registration vide application No.543375 under the Act. It was claimed by the defendants that by way of long extensive use, efforts and amounts spent in promoting the sales of goods bearing the trade mark "ARROW", the said trade mark has come to be known to the purchasers that the goods sold thereunder are the defendants goods and the goods bearing the mark "ARROW" are exclusively identified with the defendants and their goods and since it had come to their notice that plaintiff No.2 recently (i.e. in 1992) had introduced shirts bearing the trade mark "ARROW", the said second plaintiff were instructed to cease and desist the use of the mark "ARROW" because it constituted trespass and passing off goods of the defendants as goods of the plaintiffs. The defendants had even applied for rectification/removal of the mark of the plaintiffs from the register/record of the Registrar of Trade Marks in India because the defendants claimed to be first user of the mark consisting the word ARROW and the device of ARROW in India. It was in these circumstances that the Court held that there was no, prima facie, case to show that the world-wide reputation enjoyed by the plaintiffs in several foreign came into India before 1985. The Court held that the case was required to be seen in the context of pre globalization which has come to India in 1991. The Court was concerned with the period 1985 when the defendants started using the trade mark and the Court, therefore, did not grant any injunction in favour of the plaintiffs.

11. This above judgment is not relevant to the matter in issue in the present suit. On the facts of that case, the Court held that the defendant company had already started marketing goods using the trade mark ARROW and they had also applied for the registration of the same. They had also applied for removal of the mark of the plaintiff from the register/record of the Registrar of Trade Marks because they claimed to be the first user of the mark consisting the word ARROW and the device of ARROW in India. In ARROW case the Appellant had not even started marketing its goods in India till 1985 when the defendant not only had started manufacturing and marketing its products under the trade mark ARROW but had also applied for its registration. It is not understood as to how the defendant can take support from the principles laid down in that case. I have already held that in the present case there is sufficient evidence on record to hold that the plaintiffs were using the trade mark "555" at least till 1981 in India when plaintiff No.1 was selling the goods under that trade mark.

12. In reply to the contentions of the plaintiff that the size and the dimensions of the defendants card is identical to that of the Pony card of the plaintiffs and the card of the defendant is identical to the colour combination Scheme of the Pony card of plaintiff No.1 and printed matter on the defendants card is identical in placement and content to the corresponding features of the Pony card of plaintiff No.1, it is submitted by Mr.Aggarwal that colour scheme of silver gray and orange was common to trade and no one could claim its exclusive user and in any case the defendant was not using the trade mark Pony or any other trade mark which may be identical and/or deceptively similar to the registered trade mark of the plaintiffs. It is submitted by him that the defendants are using the trade mark/label of V.R. with the device of a swan using numerals "555" on the card which are entirely different from the card of the plaintiff. It is, therefore, submitted by Mr.Aggarwal that the Pony card of the plaintiff and the swan card of the defendant are totally different from each other and there cannot be any confusion in the mind of any person who is the fasteners from the market. He places reliance upon the judgment Kellogg Company Vs. Pravin Kumar Bhadabhai, 1996 PTC 187.

13. In Kellogg Company Vs. Pravin Kumar Bhadabhai (Supra), the dispute pertained to the trade mark, emphasis being on trade dress. It was the case of the Kellogg Company in that case that it was selling flakes with cartons which described the cartons as Kellogg flakes. The respondent Pravin Kumar Bhadabhai was also selling flakes using the cartons more or less similar in size but with the title "AIMS ARISTO" flakes written just at the place where the appellant display the words Kellogg flakes. This was done at the left hand top of the carton. The contention of the plaintiff was that the carton of the defendant was likely to confuse the buyers of flakes and there was every likelihood of consumers purchasing the respondents goods in the belief that they were of the appellants. On these facts, the Court after examining the cartons of both the parties held that the trade dress or rather the whole thing must been seen in its entirety and not in parts. Court also held that it was not permissible to say that the square on the left side top had a small red and green border or there was a red band horizontally and defendants carton if examined from close quarters, showed these features. Viewed as a whole, one can see that the words Kelloggs and AIMS are prominently displayed on each and, therefore, there can be no confusion, prima facie.

14. I feel that there is much force in his contention that with the description of V.R. at the top of the label with a device of swan, there cannot be any deception or confusion in the mind of the customer who wishes to purchase similar goods in the market. The printed matter on the plaintiffs card is Pony with a device of Pony represented against a descriptive colour scheme of silver gray and orange. Merely because the size and dimension of the defendants card is almost similar to that of the plaintiffs with almost similar colour combination, in my opinion, there cannot be any confusion in the mind of the customers. The device of swan is prominently displayed on the left hand top corner of the defendants card whereas on the left hand top corner of the plaintiffs card the device of Pony is printed. Below the word Pony or any other portion on the top of the card nothing is written on the plaintiffs card whereas the letters V.R. (R) and the words "Press Tick Button" are prominently written at the top of the card of the defendant. Name of the manufacturer is also prominently displayed on both the cards. While even the price is mentioned on the card of the defendant, on the plaintiffs card the price is not mentioned. On a bare examination of the two cards, it is apparent that features of each of the two cards will be immediately noticed by the customer. Prima facie, I am, therefore, of the opinion that there cannot be any confusion in the mind of the customer while purchasing the similar type of goods. The customer will not purchase the defendants fasteners merely because they are in almost in same size of card with similar colour combination. Plaintiff, therefore, in my opinion, is not entitled to an injunction at least in respect of the card with which the fasteners are displayed and are sold to the customers.

15. The only other question, therefore, remains is whether the defendant can use the figure "555" as a trade mark for sale of its goods. Before I deal with the respective contentions, it will be useful to set out herein below the principles, as held in Cluett Peabody & Company Inc. Vs. Arrow Apparals, 1998 PTC (18) 156 that emerge under the Trade and Merchandise Marks Act:-

"(a) An application for injunction is an infringement action based on Trade Marks. It is an application in support of the right to property.

(b) Trade mark is a property. A mark which is used in the course of trade to indicate a connection between the goods and the proprietor of the mark is a Trade mark [See Trade Marks by Shavaksha, Page 14]. It is not a property in pervasive sense. It is property in the sense that proprietor is entitled to exclusive use of it or to prevent others from using it in relation to goods in respect of which it is registered or used. It must be adopted and used to distinguish the goods of the proprietor from goods of others. The mark must be distinctive. It must show the source or the goods to the customer. Words like, 'Best', 'Superior', etc. are not distinctive of the goods. They are only descriptive and hence cannot constitute trade mark. The vendor who sells his goods under a trade mark acquires a limited right to the use of the mark.

(c) An infringement action is based on invasion of the statutory right. The issues arise in this action are whether the plaintiff is a proprietor of the Trade mark and whether the defendant's mark is identical or similar to trade mark of the plaintiff. In an infringement action the question of deception or confusion will not arise.

(d) In an infringement action, defendant is restrained from using the infringed mark whereas in passing off defendant is restrained from using the mark in such a way so as to pass off his goods as that of the plaintiff.

(e) The abovementioned limited exclusive right to the use of the mark is acquired by use. It is recognised as property. A person can also acquire it by registration. [See Para 1.01 of Narayanan]. The proprietor of the mark gets a perpetual right to the exclusive use of it in respect of particular goods in respect of which it is registered or used [See Para 1.02 of Narayanan]. Therefore, it can be acquired in three ways viz. Registration, User and Assignment.

(f) Object of the Act is to protect the right and not to be a source of monopoly. It is also to protect on a fide interests of traders from harassment by registered owners of a trade mark, apart from protection of public fraud, fraud by infringers of genuine trade mark.

(g) Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used. Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act. This is the main defense put up on behalf of the defendants in this Notice of Motion. Therefore, prior user of the marks should be protected against monopoly rights conferred by the Act. [Pages 5 & 6 of Narayanan]. A trade mark has no meaning even if it is registered unless it is used in relation to goods. Otherwise, its non-use may lead to its death. A trade mark which drops out of the use dies. Where there are no goods offered for sale, there is no use of trade mark.

(h) Use of the trade mark does not mean user by affixing the word on the goods. It could be in the form of advertisements in Magazines, T.V., etc. It would be with regard to goods exported out of India. With advancement of technology and globalization after 1991, use of trade mark can take place in different ways. But, this case essentially concerns the period 1985-1990. Property in trade mark can be acquired by public use of it.

(i) The test as to "who gets it there first" is not applicable in cases where registration is sought under Section 18 [Page 26 of Narayanan].

(j) The mark can loose its distinctiveness by non-user. [Para 26 of Narayanan]. Therefore, the enforcement of the Right of exclusive use of a trade mark will depend on continuous use of the mark by the proprietor. If he fails, piracy will result and the mark will become common to the trade because there is no exclusive ownership of the symbol constituting a trade mark apart from the use of it in respect of vendible goods, particularly in context of principles governing them. Acquisition of proprietary right is different from enforcement of rights/reliefs.

(k) Courts shall not protect this right of a proprietor unless there is sale of the articles to which trade mark is attached or related to [Para 28 of Narayanan]. Without use of the mark, the proprietor cannot restrain others from use of it on similar goods [Page 29 of Narayanan].

(l) An infringement action is a suit on trade mark and not on reputation. The defendant (infringer) who copies the mark cannot plead delay as a defense particularly because the defendant is dishonest as he has copied the mark. But, priority in use cannot be dishonest and, therefore, the defendant who has prima facie evidence of priority in use, could plead delay as a strong defense. This principle is in context of defense to infringement action, particularly in context of this Notice of Motion."

16. The entire case set up by the defendant is that the plaintiffs have never sold their goods under the trade mark "555" and in any case it is the case of the plaintiffs themselves that since 1981 they have not been using their trade mark and they would be deemed to have abandoned the same. This argument, in my opinion, is only to be noticed and rejected. Firstly, this plea about non-user has not been taken in the written statement and secondly subject to other provisions of the Act,under Section 28 of the Trade Merchandise Marks Act, the registration of a trade mark gives to the registered proprietor the exclusive right to use the same in relation to the goods in respect of which the mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act. Plaintiffs have placed sufficient material on record that the mark "555" is duly registered in the name of the plaintiffs for a long time and it continues to be on the register of the trade mark at least till 2001. Under Section 28 of the Act, therefore, the plaintiffs get exclusive right to use the mark and to obtain a relief in respect of the infringement of the same in the manner provided by the Act. In case, the mark has not been used for a sufficiently long time, the remedy is available to the defendant to take appropriate proceedings under the Act but, in my view, the defendant cannot openly use the same mark which is registered in the name of another person/company. I am not impressed with the argument of the defendant that the mark "555" is common to the trade. I have not been shown any other similar product which is being marketed with the mark "555". The plaintiffs have placed on record the invoices to show that at least till 1981 the goods with the mark "555" were being exclusively sold in India. Invoices have also been placed on record subsequent to period 1990 to show that plaintiff No.2 is still manufacturing and selling the fasteners under the trade mark "555". Though these invoices are for sales made to Hongkong and other places, however, this in any case belies the contention of the defendant that the trade mark "555" is not in use. Admittedly, therefore, while till 1981 the goods were being sold in India, the same are being manufactured and marketed all over the world even after the filing of the suit. The reputation of the goods of the plaintiffs in any case had come to India in the 60's or 70's. The product of the plaintiffs is being advertised in magazines, newspapers, television, etc. and the defendants, therefore, who are manufacturers of similar items cannot claim ignorance of the goods of the plaintiffs being sold under the trade mark "555". The defendants have admittedly not started using this mark before 1991. To defeat the right of the plaintiff, therefore, under Section 29 of the Trade and Merchandise Marks Act, the defendants must prove that the use of the mark by them was prior to the user of the same by the plaintiffs or prior to the registration of the mark in the name of the plaintiffs and its user is not likely to cause any confusion or deception. The mark being duly registered in the name of the plaintiffs, in my view, the plaintiffs have a right to protect the same and to obtain the relief in respect of infringement in the manner provided by the Act. In case, the defendants had any grievance about the non-user of the mark by the plaintiffs, they had a right to move appropriate petition for rectification of the register of trade marks, however, till such time the mark is removed from the register, in my view, the defendants cannot infringe the same.

17. The provisions of Sections 28 and 29 of the Act being applicable to the facts of the present case, in my view, the plaintiffs have a right to protect their mark and get an injunction against the defendant. No satisfactory explanation has been given by the defendant as to how he came to adopt the trade mark "555". It cannot be a mere coincidence that the defendant had adopted the same trade mark for his products which was registered for similar product in the name of the plaintiffs and which has world wide market. In my view, the adoption of the mark registered in the name of the plaintiffs by the defendant for his products cannot be considered honest.

18. The last argument advanced by the defendant is that the defendant is using the mark since October, 1991 and it being a concurrent user, he is entitled to continue to use the same. It is also the contention of the defendant that the plaintiffs had become aware of the user of the mark by the defendant in 1992 and the suit having been filed only in 1994, the same suffers from delay and laches and the plaintiffs are not entitled to an injunction merely on this ground.

19. I have carefully considered the argument of the defendant and I have not been persuaded to agree with the same. Having held that the adoption of the mark by the defendant was not honest, in my view, the plea of delay and laches would be of no avail to the defendant. In M/s.Hindustan Pencils Private Limited Vs.M/s.India Stationery Products Company and Another, , it was held that even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, it has been consistently held that if the defendant acts fraudulently with the knowledge that he is violating the plaintiffs right then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. It is only in the case of an honest and concurrent user by the defendant that inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction cannot be refused. This is so because it is the interest of the general public which is a third party in such cases which has to be kept in mind.

20. Having, therefore, held that the plaintiffs are the registered owner of the trade mark "555" in respect of snap fasteners and the adoption of the same by the defendant being neither concurrent nor honest, in my view, the plaintiffs are entitled to the relief of injunction. I, accordingly, allow this application and restrain the defendant till the disposal of the suit from marketing his snap fasteners with the trade mark "555" or any other mark which is deceptively similar to the same.

21. Any observation made in this order will not have any bearing of the merits of the case.