Sudhir Batra Trading As Mech ... vs Arjies Aluminum Udyog
2001 Latest Caselaw 1220 Del

JUDGMENT

V.S. Aggarwal, J.

1. Sudhir Batra Trading as Mech (India) has filed a suit against the defendant/respondent (Arjies Aluminum Udyog) seeking to restrain the defendant from selling or offering from sale or advertising the aluminum door and widow fittings or any other goods made of ferrous/non ferrous metal under the trade mark ARJIES. According to the plaintiff it amounts to infringement of his trade mark No. 479648 ARCHIS. It also seeks to restrain the defendant from selling the aluminum doors or other goods as builder's hardware under the trade mark ARJIES.

2. The facts alleged are that plaintiff is using the distinctive mark ARCHIS. It was adopted by him in the year 1981 and has been used continuously since then. He is the proprietor of the trade mark ARCHIS. In order to protect the rights in the aforesaid distinctive trade mark the plaintiff filed an application for registration. The said application was advertised in the trade mark general of 1st June, 1990. There was no objection with the result that the trade mark of the plaintiff named above was registered. The plaintiff subsequently filed an application for renewal of the said trade mark which is pending. In pursuance thereto the plaintiff conducted huge sales under the trade mark ARCHIS all over the country and has given publicity to the said trade mark.

3. In the month of October, 1994 the plaintiff received a letter from the trade mark registry drawing the attention of the plaintiff to the pending application relation to deceptively similar trade mark arjies. The plaintiff called upon the defendant not to use the said trade mark but the defendant instead filed a suit under Section 120 of the Trade and Merchandise Marks Act, 1958 in the Court of the Additional District Judge, Delhi. It is alleged that defendant is adopting phonetically deceptively similar trade mark and it is calculated to mislead the public at large and infringes the rights of the plaintiff. Accordingly the present suit as such has been filed. During the pendency of the suit the plaintiff by virtue of IA No. 1629/95 prayed for an ad interim injunction to restrain the defendant or his agents from selling or offering for sale or advertising aluminum doors and window fittings under the trade mark ARJIES. By this order the said application is proposed to be disposed of.

4. In the written statement filed the defendant had contested the said suit. It is denied that the plaintiff is proprietor of trade mark ARCHIS in respect of building fitting material. Plaintiff is stated to have never used the said trade mark in relation to these goods. The goods of the plaintiff under the said trade mark are not available in Indian markets. The plaintiff got the trade mark registered under No. 479648 in respect of builder's, hardware made of ferrous and non-ferrous metal without any bona fide intention to use the same in course of the trade. The defendant has already filed an application for rectification in the trade mark and for cancelling the trade mark of the plaintiff. The said petition had been filed on 28th November, 1994. It is pending.

5. Defendant further asserts that the trade mark of the defendant is absolutely different and distinct from the trade mark of the plaintiff. There is no similarity between the trade mark of the defendant and of the plaintiff. Plea has been raised that the defendant is using the trade mark ARJIES in a distinctive get up, make up and latin style. He has honestly using the same since the year 1990. The defendant filed an application for registration of the trade mark ARJIES. The said application has been advertised and defendant is likely to get the same registered. It has also been pleaded that there is an inordinate delay in filing of the present suit.

6. Learned counsel for the defendant at the outset had highlighted the fact that the controversy as to if the defendant is entitled to the registration of the trade mark ARJIES or not is pending. His application had been allowed by the Assistant Registrar and only an appeal is pending. Thus according to him keeping in view the said fact this Court should not pass any ad interim injunction in support of his arguments. He strongly relied upon the decision of the Supreme Court in the case of Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. and Ors. 2001 PTC 417 (SC). In the cited case before the Supreme Court there were two separate suits that had been filed complaining of similar trade mark against each other. The Supreme Court in this regard concluded that the Court should have been restrictive in granting the injunction and that when both the sides have applied for registration injunction should not be granted in favor of either person. The Supreme Court observed:-

"In this state of materials the courts below should have been wary and cautious in granting an injunction which would affect the trade and business of another person using and identical trade mark. Both the appellant and the respondents have applied for registration of their respective trade marks before the Registrar under the Trade and Merchandise Marks Act, 1958 and the respective rights of the parties will have to be investigated by the Registrar and appropriate registration granted to either of them or both of them, as the cost may be, bearing in mind the provisions of Section 12(3) of the Trade and Merchandise Marks Act, 1958. There are many precedents to the effect that for inherently distinctive marks ownership is governed by the priority of use of such marks. The first user in the sale of goods or service is the owner and senior user. These marks are given legal protection against infringement immediately upon adoption and use in trade if tow companies make use of the same trade mark and the gist of passing off in relation to goodwill and reputation to goods."

7. Ultimately the injunction prayed was refused holding:-

"Therefore, we think, the appropriate order to be made is that injunction either in the favor of the appellant or against them or vice-versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the Registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties."

8. In the case of Uniply Industries Ltd (supra). indeed will not come to the rescue of the defendants. This is for the reason that in the case of Uniply Industries Ltd. (supra) both the parties and applied for registration of their respective trade mark and it was to be investigated by the Registrar. In the present case in hand the position is different. So far as the plaintiff is concerned he has his trade mark registered under the name of ARCHIS. While in the case of defendant his application though allowed by the Sub-Registrar is still subjudice because appeal is pending. His application for rectification of the trade mark with respect to the plaintiff also is pending decision, therefore, it is not a case where both the parties are striving to get the trade mark registered. The cited case, therefore, is patently distinguishable.

9. In fact one is constraint to observe that mere pendency of an application for rectification by itself will not be a good ground to hold that the person who is having his trade mark registered also has no right to seek the ad interim injunction. Reference that advantage can well be made to the decision of this Court. In the case of Gold Star Co. Ltd. v. Gold Star Industries and Ors. reported as 1995 PTR 78 a similar argument that an application is pending have been raised but it was repelled by this Court holding:-

"16. Relying on these observations it can be said that mere pendency of the rectification proceedings would not disentitle the plaintiff from relief sought particularly when plaintiff is proprietor of registered trade mark in respect of washing machines. The trade mark was registered vide registration No. 333391 "Gold Star" as on 10th February, 1978 in class 7. What would happen to the rectification proceedings nobody, can predict. As of today prima facie evidence established plaintiffs exclusive right regarding trade mark "Gold Star" in respect of washing machine etc. Plaintiff cannot be deprived the fruit of registered trade mark nor can the defendant be allowed to use the trade mark of the plaintiff for passing off it is goods. The plaintiff has an international market and is a registered trade mark proprietor in about 100 countries. Because of the quality of its goods it has acquired an international reputation and goodwill. Therefore, prima facie, if the defendants are allowed to use the trade mark of the plaintiff it would adversely affect the business of the plaintiff, internationally as well as in India. In fact the "Gold Star" is a household word for quality product all over the world and associated with the plaintiff. In the words of Mahinder Narain...."

10. Thereupon the Court concluded further:-

"The defendant cannot be allowed to carry on the use of this significant world wide renowned name of the plaintiff. Relying on the decision of Supreme Court in the case of Powder Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd , it can be said that there can be only one trade mark, one source and one proprietor. It cannot have two origins. Hence, on the basis of admitted facts that the plaintiff is the registered proprietor of the trade mark "Gold Star" for its products falling in class 7 to 11 inclusive of the washing machines, the defendant cannot be permitted to use the same trade mark for its electric products."

11. Similar was the decision arrived at in the case of Avis International Ltd. v. Avi Footwear Industries AIR 1991 Delhi 32. A similar argument that an application for rectification is pending had been advanced. This Court had repelled the same holding:-

"16. Phonetically the word AVIS, which is registered mark for footwear, and the word AEVI'S have to be pronounced identically. The business name of the defendants is known as AVI Footwear Industries. Prima facie, if it was the intention of the defendants by affixing the label AEVI'S on the footwear made by them was to indicate that the footwear carrying that label is made by the AVI Footwear Industries, then the mark they would have adopted would have been AVI, but that they have not done. They have tries to bring their mark/label as close as possible phonetically to the registered mark AVIS.

17. In my view, the statutory monopoly which has been conferred upon the plaintiffs in connection with use of the mark AVIS for footwear has to have primary precedence over any other consideration in relation to grant or non-grant of an injunction, especially when the matter is at an interlocutory state and is yet to be tried, and it cannot be foreseen as to whether the defendants who seek rectification of the plaintiffs mark, on account of non-user would be above to prove their case. The statutory registration establishes prima facie case in favor of the plaintiffs."

12. One finds one has in respectful agreement with the said view point. This is for the reason that as yet it is not certain if the application filed by the defendant for cancellation of the trade mark of the plaintiff has to be allowed or what would be the ultimate fate. At this day when the plaintiff is having his trade mark so registered in that event if there is any violation of the rights of the plaintiff he indeed has a reason to complain. Things may be different if the said application is allowed. Ultimately a care in this regard can well be taken. However, at this stage the plea so raised by the defendant indeed can hardly be accepted.

13. In that even it was urged further that the defendant also prayed for registration of his trade mark ARJIES. The matter as such has been contested before the Assistant Registrar trade marks. The application of the defendant had been allowed on 17th July, 1997. A copy of the order as such has been appended. If that was so one should urge vehemently and successfully that there are two trade marks that have been allowed and the Court should not choose between either of them but admittedly an appeal against the same order is pending and the matter is still subjudice subject to the decision on this. Therefore, it cannot be termed that defendant can defend the claim of the plaintiff because as pointed out above the appeal is pending.

14. Admittedly the plaintiff had got his trade mark registered and the application was allowed in 1990. It in any case was registered even before the defendant applied for registration of his trade mark with basic name of ARJIES. Once the plaintiff got his trade mark registered before that of the defendant he gets certain rights subject to the final outcome of the other controversies. The user of the defendant can hardly be taken to be before that of the plaintiff or in other words before the plaintiff got it registered. In this regard the attention of the Court has been drawn towards the decision of this Court in the case of Tata Oil Mills Co. Ltd. v. Wipro Ltd. and Anr. AIR 1936 Delhi 345. This Court while rejecting the contention that merely because application of the defendant for registration is pending is no ground to refuse the ad interim injunction but further held that persons who can defend the exclusive use of the trade mark which is registered are those who are covered under Section 33 of the Trade and Merchandise Marks Act, 1958. If there is a user prior to the date of registration then user may continue. In the present case it has not been so used. The result would be the plaintiff indeed has a reason to complain and it cannot be termed that he has no prima facie case.

15. On almost identical terms in the case of Pidilite Industries P. Ltd. v. Mittees Corporation and Anr. 19882) Arb.LR 436 besides going into the question as to how one has to look into the two names who has phonetically similar or otherwise held that if the plaintiff has been using his trade mark earlier then that of the defendant then it would be taken that he has a prima facie case.

16. Identical was the view expressed by this Court in the case of Revlon Inc. v. Sarita Manufacturing Co. 1997 PTC 394. This Court after going through different other precedents concluded that plaintiffs were the registered proprietors of the trade mark Revlon. Intimate and Charlie and the defendant could not use the same once the plaintiffs have been got their registered trade marks'. The Court held:-

"No satisfactory explanation has been given by the defendants as to how they came to adopt the trade marks which are registered in the name of the plaintiffs. Word "Revlon" does not appear in the dictionary. It cannot be a mere co-incident that the defendants had adopted the same mark for their products which was registered in the name of the plaintiffs and which have a world wide market. In my view, the adoption of marks registered in the name of the plaintiffs by the defendants for their products cannot be considered honest and in such a case even the plea of delay and laches in my opinion, would be of no avail to the defendants. In case, the defendants had chosen to continue to use the trade marks registered in the name of the plaintiffs, in spite of plaintiffs' objection, they in my view, had been doing so at their own risk and they cannot derive any advantage from such user. From the record, I find that the defendants firm had been describing itself as importers and exporters of Revlon perfumes. It is not even the case of the defendants that they had at any tie imported these perfumes. It clearly shows that the intention of the defendants from the very beginning had been fraudulent and dishonest and their adoption of the marks "Charlie", intimate" and "Revlon", prima facie, appear to have been done to deceive the general public so as to encash upon the reputation and goodwill of the products of the plaintiffs and pass off their goods as those of the plaintiffs."

17. Identical is the position herein the plaintiff is the registered owner of the trade mark ARCHIS and the defendant as is apparent from the record started using the same subsequently. It applied for its registration also subsequently. This suit should give prima facie right to the plaintiff to seek and interim injunction.

18. During the course of submission it has further been pointed that there has not been much use of the said trade mark and the learned counsel particularly urge that after 1986 the plaintiff is not shown to be using the said trade mark. However, the record does not show that it is a case of total abandonment of the trade mark that was got registered. Once there is no abandonment and there is user shown on the record by the plaintiff with respect to the trade mark ARCHIS the very arguments so much thought of the by the learned counsel must fail.

19. As regard the artistic features that was referred to be little different, it must be stated that it is a case of first impression which an ordinary consumer has to formulate. Phonetically the words ARCHIS and ARJIES look identical and the ordinary consumer can easily be mislead and, therefore, slight difference in artistic features here and there cannot be the tilting factors in this regard.

20. A plea had further been raised that there can be concurrent user of the same and attention of the Court was being drawn to the decision of The Fairdeal Corporation (Pvt.) Ltd. v. Vijay Pharmaceuticals 1985 PTC 80. The ratio decidendi of the decision referred to above has been that the plaintiff was aware of the use of the offending trade mark by the defendant and that he could not get temporary injunction as a matter of course. There were falls averments noted by the Court prompted to have been made by the plaintiff. It was these facts which prompted this Court to hold that ad interim injunction cannot be denied. In the peculiar facts of this case it cannot be so concluded and, therefore, the decision so referred to must be held to be distinguishable.

21. The defendant's counsel further referred to the decision in the case of Jain Rubber Industries v. Frown Pvt. Ltd. and Ors. 1988 PTC 82. This Court held that under the provision of Section 28 of the Trade and Merchandise Marks Act, 1958, registered owner of a trade mark has the exclusive right to use the trade mark registration whereof is validly granted but under Section 33 if another person is using the same or identical trade mark earlier in point then ad interim injunction necessarily cannot be granted. Indeed that is the proposition of law which has not to be found fault with. But in the peculiar facts it cannot be termed that defendant is using honestly and deligently the said trademark before it was registered in the name of the plaintiff. Resultently it must follow that the plaintiff cannot take advantage of the decision of the Jain Rubber Industries.

22. Lastly it was further held that in the case of Hindustan Pencils Ltd. v. Aptudet Industries 1991 PTC 204 the arguments referred to above had found with the Court. Once constraint to observe that therein also the Court had found that there were falls statement in the plaint and application and further that there was delay. This was the tilting factor in the balance held by the Court. In the present case it is not so. Consequently, it must held that the said plea is also without any merit.

23. The balance of convenience in this regard must also stated to be in favor of the plaintiff. He has been indulging in the trade and the registered trade mark is available to him. He has advertised and invested amount and merely because if the defendant has also started using a similar mark must not prompt to hold that balance of convenience would be lost. The work done by the plaintiff cannot be taken away in this process.

24. In these reasons recorded above the application filed by the plaintiff is allowed. The defendant is restrained during the pendency of the suit from selling or offering for sale or advertising the aluminium door and window fittings under the name and style of ARJIES. This is, however, made clear that it is subject to the following conditions:-

(a) In case the application filed by the defendant for registration of his trade mark is allowed or in other words the decision in appeal is favorable to the defendant the ad interim injunction shall stand vacated automatically.

(b) Similarly if the application filed by the defendant for rectification of the trade mark of the plaintiff is allowed in that event also the ad interim injunction would stand vacated automatically.

Suit No. 458/95

List it for framing of issues on 22nd January, 2002.