J.K. Goe vs Grow On Marketing Ltd.
2003 Latest Caselaw 48 Del

JUDGMENT

Khan, J.

1. Trade mark `Energic-31' is at the root of controversy. Appellant's suit No. 304/99 for infringement and passing off of this trade mark has been dismissed by trial court by judgment dated 9.3.2000. Hence this appeal.

2. Appellant is carrying on the business of manufacturing and trading in Ayurvedic medicines under various trade marks and claims to be the proprietor of trade mark `Energic-31' also. Appellant filed an injunction suit claiming that he had coined and adopted this Mark way back in 1980 and had used it ever since and prayed to restrain Respondents from using this and his trade name and trading style. He obtained an interim restraint also.

3. Respondents contested this suit and filed their written statement pointing out that appellant had supressed material facts and had failed to disclose that his two applications for registration of trade mark `Energic-31' stood dismissed by the Registrar of Trade Marks and that his pending third application was also liable to be dismissed and that he had disclaimed exclusive use of numerical 31 which was published in the Trade Mark journal. They also alleged that he was using the word `R' to give a false impression to the public that his claimed mark `Energic-31' was a registered trade mark and explained that their company M/s. Moradabad Ayurved Vikas Sansthan Ltd. was duly incorporated and could not be accused of trading upon the goodwill and reputation of the appellant company's name.

4. We are told that Trial Court dismissed Appellants suit while it was considering the interim stay matter. It is submitted by the Learned Counsel for Appellant that the court had neither framed issues, nor asked parties to lead evidence and had on the contrary dismissed the suit summarily.

5. A perusal of the impugned judgment shows that Trial Court had dismissed the suit on finding that appellant had concealed the material facts about the dismissal of his applications for registration of the trade mark and had misused the judicial process by fiing the suit which was not maintainable as word `Energic' was not a coined word and was publici juris. The crux of the judgment reads thus:-

"I consider that the plaintiff's suit on the ground that he was proprietor of trade mark `Energic-31' is not maintainable because the word `Energic' is not coined word and it is publici juris. The plaintiff did not come to the court with clean hands and concealed material facts from the court about the rejection of applications of the plaintiff for registration of the trade mark twice. He has also failed to make out that he has in any way exclusive right over the word `Energic' or numeral `31'."

6. Appellant's counsel Mr. Aggarwal, submitted that Appellant could not be accused of supression or concealment of any material facts because rejection of his applications was under Appeal before this court and in any case such rejection or his disclaimer of numeral `31' had no bearing in his action for infringement and passing of the Mark on which he was claiming proprietership on the basis of long user. He has cited several judgments of the Supreme Court including "NATIONAL SEWING THREAD CO. LTD. VS. JAMES CHADWICK AND BROS LTD.," , "THE REGISTRAR OF TRADE MARKS VS. ASHOK CHANDRA RAKHIT LTD." 55 SCR 252 and "M/S. PARKASH METAL WORKS. VS. M/S. SQUARE AUTOMATION (P) LTD." 1992 PTC 29 to support this.

7. This apart, we are surprised at the approach adopted by the trial court in dismissing the suit. We find from the pleadings that Appellant had claimed to have coined and adopted "Energic-31" and had based his proprietership on its long user which was of course disputed and refuted by Respondents. That being so the court had no option but to raise the issues in the suit and require the parties to establish their rival claims. But the court had, on the contrary, adopted a novel method of dismissing the Appellants suit after giving a go-by to the procedure established by law and taking away the right of the parties to lead evidence and to prove their respective claims in the process. It had on its own assumed that `Energic-31' was not a coined word and was a publici Jurisdiction which finding could have been returned only after affording an opportunity and a chance to appellant to lead evidence and prove to the contrary.

8. Appellants suit was also dismissed for concealment of facts attributable to his failure to disclose that his two applications for registration of trade mark were dismissed by the Registrar. This in our view, may have constituted a circumstance to refuse grant of interim relief to Appellant but could not have led to dismissal of his suit. Because even if Appellants applications for registration of the Mark were rejected, it was open to him to claim proprietership on the basis of a long user and to maintain his infringement and passing of action.

9. Therefore all told, we find that Appellant suit was given a short shrift in a summary disposal in disregard of the procedure established by law and in violation of the rights of the parties to establish their rival claims. The impugned judgment therefore becomes unsustainable and is set aside to allow this appeal. Suit No. 304/99 shall revive and be dealt with and disposed of under law afresh. Status quo as on date shall be maintained in respect of claimed trade mark `Energic-31' for one month to enable the trial court to consider appellant's plea for interim injunction.

10. Parties to appear before the trial court on 14th February 2003.