M/S S. Narendra Kumar & Co. vs Everest Beverages And Foods ...
2008 Latest Caselaw 908 Del

              THE HIGH COURT OF DELHI AT NEW DELHI

%                                         Judgment delivered on: 03.07.2008

+            IA No.2463/2008 in CS (OS) 355/2008 (u/O 39 R 1 & 2 CPC)
             & IA No. 3031/2008 in CS (OS) 355/2008 (u/O 39 R 4 CPC)

M/s S. Narendra Kumar & Co.                                     ... Plaintiff

                                         - versus -


Everest Beverages and Foods Inudstries & Anr.                   ...Defendants

Advocates who appeared in this case:
For the Plaintiff      : Mr Jagjit Singh with Mr Shekhar Guj
For the Defendant     : Mr S. K. Bansal with Mr Pankaj Kumar

CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED

      1.

Whether Reporters of local papers may be allowed to see the judgment ? YES

2. To be referred to the Reporter or not ? YES

3. Whether the judgment should be reported in Digest ? YES

BADAR DURREZ AHMED, J

1. IA No. 2463/2008 has been filed by the plaintiff under Order 39

Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to

as the ‗CPC') seeking an interim injunction restraining the defendants from

using the mark ‗EVEREST' in respect of any of their products falling under

Classes 29 and 30 of the Fourth Schedule to the Trademark Rules, 2002

inasmuch as such use allegedly amounts to infringement of the plaintiff's

alleged registered trademark ‗EVEREST'. By an order dated 25.02.2008

this Court had granted an ex parte ad-interim injunction against the

defendants in respect of the use of the said mark ‗EVEREST'. The

defendants, after notice of the said order dated 25.02.2008, have not only

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.1 of 19 filed their written statement in the suit and reply to the plaintiff's

application under Order 39 Rules 1 and 2 CPC but have also filed an

independent application (IA No. 3031/2008) under Order 39 Rule 4 seeking

vacation of the ex parte ad interim injunction granted by this Court on

25.02.2008. Both the applications are taken up together.

2. In the plaint the plaintiff had stated that it is the proprietor of the

registered trademark ‗EVEREST' in classes 29 and 30 of the Fourth

Schedule to the Trademark Rules 2002 under a deed of assignment dated

26.09.1994 executed by the original owners -- (1) Smt. Gulabben Nand Lal

Shah (2) Sh. Vadilal Nandlal Shah and (3) Sh. Narendra Chamapk Lal Shah

who were allegedly jointly carrying on business under the name and style of

―Vadilal Champak Lal & Co.‖. That firm is said to have been conducting its

business from 1967 to 1995 whereafter the plaintiff firm has been running

the business stemming out of the business of Vadilal Champak Lal & Co.

3. It has also been alleged in the plaint that the plaintiff is carrying

on the business of manufacturing and marketing masalas of different types

and that they are well known manufacturers and merchants of all kinds of

spices, pan masala, betel-nuts, papad, pickles, cosmetics, heena powder

(mehandi powder) etc. since the year 1967. It has also been alleged that the

plaintiff has been using the registered trademark ―consisting of and

containing the word ‗EVEREST' since the year 1967 in respect of their

aforesaid products‖. It is stated that the plaintiff is the registered proprietor

of the trademark ‗EVEREST' in many classes including Classes 29 and 30

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.2 of 19 of the Fourth Schedule to the Trademark Rules 2002 in respect of goods

falling in these classes which include ―vinegar , sauces, spices of all kinds

including pickles‖. It is further stated that the plaintiff has about 40

registered trademarks and they are all registered and renewed up to date.

The list of the trademarks and renewals is set out in paragraph 6 of the

plaint. The earliest registration indicated in the said list is of 13.07.1981

and that pertains to Class 31. The earliest registration in respect of Class 30

(spices of all kinds, tea masala and milk masala) bears No. 431291 and is of

21.12.1984. The earliest registration under Class 29 is registration No.

461928 dated 20.10.1986 in respect of ―preserved, dried, cooked and tinned

fruits and vegetables, jellies, jams, milk and other dairy products, preserves

and pickles‖. There is another registration bearing No. 461929 of the same

dated i.e. 20.10.1986 under Class 30 which is, inter alia, in respect of

vinegar, sauces and spices of all kinds. On going through the entire list

given in paragraph 6 of the plaint it is apparent that the trademark

registrations in respect of which the plaintiff claims proprietorship primarily

relate to spices of all kinds, tea masala and milk masala. There are a few

registrations as noted above appearing for the first time on 20.10.1986

under Class 29 and 30 which cover other products such as preserved, dried,

cooked and tinned fruits and vegetables, jellies, jams, vinegar, sauces and

spices.

4. It was alleged by the plaintiff that the defendants have used the

identical trademark ‗EVEREST' in respect of identical and similar goods

despite the fact that the defendants do not have any registration under the

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.3 of 19 Trademarks Act, 1999 (hereinafter referred to as the ‗said Act') or under the

Trade and Merchandise Marks Act, 1958 in respect of the mark

‗EVEREST'.

5. As noted in the order dated 25.02.2008, the learned counsel for

the plaintiff had submitted that the mark ‗EVEREST' had been used by the

plaintiff since 1967 and that their registrations date back to 1981 onwards.

The learned counsel, at that point of time, had also submitted that the

defendants have been made aware of the infringement being done by them

through various letters from the year 2000 onwards upto 2006. But the

defendants had not refrained from using the mark. It was contended that

the mark employed by the defendants was identical to the plaintiff's

registered trademark ‗EVEREST' and was being used in respect of the very

same goods falling under Classes 29 and 30 and, therefore, it was a clear-cut

case of infringement of the plaintiff's registered trademark. It had also been

contended by the learned counsel for the plaintiff, as noted in the order

dated 25.02.2008, that the plaintiff had decided to file the present suit in

2008 because the defendants had ―recently‖ entered the market in Delhi

whereas prior to November-December 2007 the defendants had confined

their activities to smaller towns in and around Meerut, U. P.

6. Considering all these factors, this Court took a view on

25.02.2008 at the ex parte stage that the mark employed by the defendants

was identical to the registered trademark of the plaintiff and was also in

respect of similar, if not identical, goods and consequently the defendants

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.4 of 19 were restrained from using the mark ‗EVEREST' in respect of any of their

products falling under Classes 29 and 30 so as to amount to infringement of

the plaintiff's registered trademark ‗EVEREST'.

7. In their written statement as also in the application under Order

39 Rule 4 CPC (IA No. 3031/2008) the defendants have taken the stand of

prior user. It has been contended that the firm by the name of Everest Fruit

Products had been constituted in 1965-1966. All the assets and liabilities of

Everest Fruit Products were taken over by the present defendant No.1

(Everest Beverages and Foods Industries) on 01.04.2001. It is alleged that

Everest Fruit Products was using the mark ‗EVEREST' even in 1965 as

would be evident from the licence under the Fruit Products Order, 1955

issued on 03.11.1965 by the licencing Officer, Agricultural Marketing

Advisor to the Government of India from Nagpur in respect of squashes,

synthetic vinegar, ready to serve beverages, tomato ketchup and sauces.

8. The defendant has also placed on record various renewals upto

date of the said FPO licence. The defendant has also indicated that in 1991

additional items were included in the licence on 19.01.1987 and again on

12.02.1991 by including even pickles and chutney. The defendants have

also filed sales tax assessment orders in respect of the period 1969-70 which

indicates that the defendant No.1 was in the business of manufacture of fruit

juices. There are other sales tax assessment orders also placed on record.

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.5 of 19

9. It has, therefore, been contended on behalf of the defendants that

assuming, without admitting, that the plaintiff is the registered proprietor of

the mark ‗EVEREST', the present suit for infringement of the said mark

would not lie against the defendants in view of the fact that the defendants

are prior users of the mark ‗EVEREST' which they have been continuously

using since 1965 till date in respect of their products which are - tomato

ketchup, sauces, vinegar, fruit juices, non-alcoholic drinks, noodles and

pickles. The defendants are, therefore, protected under Section 34 as also

under Section 27 of the said Act. It was also contended that in any event the

defendants have been using the mark honestly and concurrently for all these

years.

10. It was also contended on behalf of the defendants that the

plaintiff is not entitled to any interim injunction on account of delay and

acquiescence. It was submitted that, as admitted in the plaint, the plaintiff

was aware of the defendants using the mark ‗EVEREST' in respect of their

products in the year 2000 yet they chose to file the suit only in 2008 on the

false pretext that till November-December, 2007 the defendants were

localized in small towns in and around Meerut, U.P and that the defendants

had only recently entered the market in Delhi. It was also contended that

apart from the fact that the defendants have been in the market in Delhi for a

long time, the plaintiff ought to have filed the suit as soon as it became

aware of the defendants in the year 2000. The fact that the plaintiff delayed

the filing of the suit disentitled the plaintiff to any interim injunction.

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.6 of 19

11. It was then contended on behalf of the defendants that while the

suit filed by the present defendant No.1 (Suit No. 4/2006) in the District

Court at Meerut against the present plaintiff has been mentioned in the

plaint, the averments made therein and the stand taken by the parties have

not been indicated in the plaint. Particularly the plea of prior use taken by

the defendant No.1 in the said suit has not been mentioned in the plaint. It

has also been contended that the plaintiff suppressed the defendants reply

dated 08.04.2000 to one of the legal notices issued by the plaintiff. In that

reply, as also in other replies, the defendants had taken the specific plea of

prior use. In particular, it was pointed out that in the plaint filed by the

present defendant No.1 in the Meerut suit prior user since 1965 has been

pleaded. On the other hand, in the written statement in the Meerut suit, the

present plaintiff has stated that they are ―well-known manufacturers and

merchants of spices of all kinds, pan masala, betel-nuts, papad, pickles,

cosmetics, heena powder (mehandi powder) etc. since the year 1967‖. It is

further stated that the plaintiff herein had been using a registered trademark

―consisting of and containing the word ‗EVEREST' since the year 1967 in

respect of their products.‖ According to the defendants, even if what is

stated by the plaintiff in its written statement in the suit at Meerut is taken to

be true, three things are apparent -- (i) That the trademark which has been

used by the present plaintiff ―consists of and contains‖ the word

‗EVEREST'; (ii) The trademark in question has been used by the present

plaintiff since 1967 and (iii) It has been used in respect of pan masala,

betel-nuts, papad, pickles, cosmetics, heena powder (mehandi powder). It

was contended on behalf of the defendants that had the pleadings in the

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.7 of 19 Meerut suit as well as the defendants' reply dated 08.04.2000 to the

plaintiff's legal notice been brought to the notice of this Court, the Court

would have been aware of the defendants' consistent stand since 2000 of its

legitimate use of the trademark ‗EVEREST' on the ground of prior user and,

in such an eventuality, this Court may not have passed the order that it did

on 25.02.2008. It was contended that since the plaintiff suppressed and

concealed these material facts, the ex parte ad interim order passed on

25.02.2008 deserves to be vacated on this ground alone.

12. In response to these submissions made on behalf of the

defendants, the learned counsel for the plaintiff submitted that the entire

defence of the defendants to the plaintiff's suit for infringement is based

upon the plea of prior user. He submitted that the first registered trademark

of the plaintiff (through its predecessor-in-interest) was the registration

No. 243840 dated 24.08.1967 and that the defendant has to show user prior

to this date. According to the learned counsel for the plaintiff the only

evidence that has been produced by the defendants is the FPO licence of

1965 which does not indicate user of the mark ‗EVEREST'. It has been

contended that the defendants have produced voluminous records but the

records are from 1968 onwards. Consequently, it is submitted, the entire

documentary evidence indicates that the business of the defendants under

the said mark is after the registration of the trademark in favour of the

plaintiff and that the defence of prior user has not been, prima facie,

established. Consequently, such a defence is not available to the defendants

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.8 of 19 and, therefore, the plaintiff is entitled to seek the relief of interim injunction

purely on the ground of infringement as stipulated under the said Act.

13. With regard to the objection in respect of delay in filing of the

suit, the learned counsel for the plaintiff submitted that firstly there was no

delay because the plaintiff and the defendants were exchanging

communications in the form of legal notices and replies thereto and the

plaintiff was hopeful that the defendants would cease and desist from using

the mark ‗EVEREST'. It is when the defendants sought to enter the market

in Delhi in January 2008 that the plaintiff became sure that the defendants

would not cease and desist and, therefore, the present suit was filed. It was

contended, in any event, delay in instituting a suit cannot take away the

substantive right which the plaintiff has under the said Act. He placed

reliance on the decision of the Supreme Court in the case of Ramdev Food

Products Pvt. Ltd. v. Arvindbhai Rambhai Patel: AIR 2006 SC 3304 to

submit that in an infringement action, delay in filing of the suit would not

come in the way of the plaintiff to assert his exclusive rights over a

registered trademark. The principles of delay which apply to an action of

passing off are different from those which apply to a suit for infringement of

a registered trademark.

14. With regard to the objection of non-disclosure of the pleadings in

the Meerut suit and the stand taken by the defendants in its reply dated

08.04.2000 of prior user, the response of the plaintiff is that the plaintiff has

mentioned about the Meerut suit in paragraph 11.1 of the plaint and has also

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.9 of 19 mentioned the letters/ notices issued by the plaintiff to the defendants in

paragraph 11 of the plaint. Therefore, according to him, there is no

suppression or concealment as alleged by the defendants. The learned

counsel requested that the ex parte order passed on 25.02.2008 be

confirmed till the disposal of the suit and the defendants' application under

Order 39 Rule 4 (IA No. 3031/2008) be dismissed.

15. Section 27 (1) of the said Act stipulates that no person shall be

entitled to institute any proceeding to prevent, or to recover damages for,

the infringement of an unregistered trademark. Sub-Section (2) of Section

27 is material for the purposes of the present case. It reads as under:-

―(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.‖

This provision makes it clear that the Act which deals with the statutory

rights flowing from registration of a trademark, does not affect the rights of

action against any person for passing off goods or services as the goods of

another person or as services provided by another person or the remedies in

respect thereof. Clearly the common law action for passing off and the

remedy by way of injunction and damages in respect of that have been

preserved and are independent of the rights conferred under the said Act

upon a proprietor of registered trademark. Section 28 (1) stipulates that

―subject to the other provisions of this Act‖, the registration of a trade mark

shall, if valid, give to the registered proprietor of the trade mark the

exclusive right to the use of the trade mark in relation to the goods or

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.10 of 19 services in respect of which the trade mark is registered and to obtain relief

in respect of infringement of the trade mark in the manner provided by this

Act. This provision entails that the registered proprietor of the trademark

has the exclusive right to the use of the trademark ―in relation to the goods

or services in respect of which the trade mark is registered‖. It also confers

upon such registered proprietor the right to obtain relief in respect of

infringement of the trademark in the manner provided by the Act. It is

important to note that this provision begins with the words ―subject to the

other provisions of this Act‖. Section 34 of the said Act reads as under:-

―34. Saving for vested rights.--Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods o services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior--

(a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his;

whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark.‖

This provision clearly indicates that the proprietor of a registered mark

cannot interfere with or restrain the user by any person of an identical

trademark in relation to goods or services when such person has

continuously used that trademark from a date prior to the use of the

registered trademark in relation to those goods or services or to the date of

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.11 of 19 registration of the said registered trademark, again, in respect of those goods

or services, whichever is the earlier. In plain words, this means that a

registered proprietor cannot bring an action under the Act against a person

who uses an identical trademark in relation to his goods or services from a

date prior to the date of user by the proprietor of the registered trademark or

the date of registration of such mark, whichever is earlier. Thus, in the

context of the present case, if the defendants are able to demonstrate that

they have been using the mark ‗EVEREST' prior to the user by the plaintiff

or prior to the date of registration of the trademark in favour of the plaintiff,

whichever is earlier, then the defendants would have set up a defence and

the plaintiff would not be entitled to any order which would interfere with

or restrain the use by the defendants of the said mark. It is in this context

that the defendants have taken the defence of prior user and have filed

various documents beginning from the FPO licence of November, 1965 and

including various sales tax assessment orders for the period 1969-1970 and

onwards to show that they have been in the business of, inter alia, fruit

juices for a long stretch of time and have been using the mark ‗EVEREST'

in respect of their products.

16. Before proceeding to examine the facts and circumstances of the

present case it would be necessary to point out the observations of this

Court in the case of Rana Steels v. Ran India Steels Pvt. Ltd.: 2008 II AD

(Delhi) 46 where I had an occasion to examine the provisions of Sections 28

and 29 of the said Act. The following observations in the said decision are

material:-

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.12 of 19 ―19. To examine the relative merits of these contentions a brief survey of the relevant provisions of the said Act would be necessary. Section 28 (1) of the said act prescribes that, subject to the other provisions of the said act, the registration of a trademark, if valid, gives to the registered proprietor of the trademark, the exclusive right to the use of the trademark "in relation to the goods or services in respect of which the trademark is registered" and to obtain relief in respect of infringement of the trademark in the manner provided by the act. Sub-section (2) stipulates that the exclusive right to the use of a trademark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. As already indicated earlier, sub-section (3) deals with a situation where two or more persons are registered proprietors of trademarks which are identical to or nearly resemble each other. In such a situation, the exclusive right to the use of any of those trademarks shall not be deemed to have been acquired by anyone of those persons as against the other ―merely by registration of the trademarks". Of course, each of those persons would otherwise have the same rights as against other persons, not being registered users using by way of permitted use, as he would have if he were the sole registered proprietor. It is noteworthy that the registered proprietor of a trademark gets the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. This means that a trademark is registered not merely in favour of a person but also bears relation to goods or services. So, while a particular trademark may be registered in favour of one person in respect of certain goods, that person may not have the exclusive right to use the mark in respect of other goods. This means that under normal circumstances the right to use a trademark to the exclusion of others is only in respect of the goods or services in connection with which the trademark is registered. There are exceptions which shall be alluded to presently.

20. Section 29 (1) of the Trade Marks Act, 1999, which deals with the issue of infringement of registered trade marks indicates that a trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with or deceptively similar to the trade mark ―in relation to goods or services in respect of which the trade mark is registered‖ and in such manner as to render the use of

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.13 of 19 the mark likely to be taken as being used as a trade mark. So, for an infringement action, it must be shown that -- (1) the registered trade mark is being used by a person other than the registered proprietor or by a person permitted to use the same; and (2) the use must be in the course of trade; and (3) in relation to goods or services in respect of which the trade mark is registered. This means that if a trade mark is registered in respect of a certain set of goods or services, then the use of that trade mark by a person other than the registered proprietor or by a person permitted to use the same would not, ipso facto, amount to infringement if such person uses the trade mark in relation to an entirely different set of goods or services. However, sub-section (2) of section 29 of the said Act brings within the fold of infringement, uses of the registered trade mark by a person other than a registered proprietor in respect of ―similar‖ goods also in three different sets of circumstances -- where there is (a) identity with the registered trade mark and similarity of the goods or services covered by the registered trade mark; or (b) similarity to the registered trade mark and identity or similarity of goods or services covered by such registered trade mark; or (c) identity with the registered trade mark and identity of the goods or services covered by the registered trade mark -- and there is likelihood of confusion being caused on the part of the public or the likelihood of such user having an association with the registered trade mark. Sub-Section (3) of Section 29 of the said Act provides that where there is an identity of the impugned trade mark with the registered trade mark and there is also an identity of the goods or services covered by the registered trade mark, the court shall presume that it is likely to cause confusion on the part of the public. By virtue of sub-section (4) of Section 29, there may be infringement of a registered trade mark even where the mark is used in relation to goods or services which are not similar to those for which the trade mark is registered provided, inter alia, the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to the, distinctive character or repute of the registered trade mark.

21. A reading of the relevant provisions of Sections 28 and 29 of the said Act, therefore, reveals that the registration of a trade mark is linked to the goods or services in respect of which the trade mark is registered. If a person uses a registered trade mark in

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.14 of 19 relation to goods and services which are different and distinct from the goods or services in respect of which the trade mark is registered, then he would not be infringing the registered trade mark except in the case covered by Sub-Section (4) of Section 29 which requires that the registered trade mark must have a reputation in India and the use of the mark without due cause would be amounting to taking unfair advantage of or would be detrimental to the distinctive character or repute of the registered trade mark.‖

A reading of the said extract makes it clear that in order to succeed in an

infringement action, the plaintiff must show that (1) the registered

trademark is being used by a person other than the registered proprietor or

by a person permitted to use the same; (2) the use must be in the course of

trade; and (3) in relation to goods or services in respect of which the trade

mark is registered. In the present case it is an admitted position that the

defendants have produced voluminous documents from 1968 onwards with

regard to the use of the mark ‗EVEREST' in respect of their products, which

were initially fruit juices but later on extended to tomato ketchup, sauces,

vinegar, non-alcoholic drinks, noodles and pickles. According to the

plaintiff this is not good enough inasmuch as their first registration dates

back to 24.08.1967. Therefore, the defendants would not be able to invoke

the provisions of Section 34 to set up their defence.

17. In the context of what has been noted in Rana Steels (supra), it

is necessary to examine as to in respect of which goods or services the

plaintiff (through its predecessor) claims registration for the mark

‗EVEREST'. The assignment deed under which the plaintiff claims title

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.15 of 19 over the said registration sets out all the trademark registrations which have

been assigned in Schedule A thereto. The trademark bearing registration

No. 243840 dated 24.08.1967 has been shown at serial No.1. It has been

shown to be registered in respect of goods falling under Class 30. The mark

which has been registered is -- Everest Milk Masala Label. It is obvious

that the said registration relates to milk masala. The mark registered is also

not just the word ‗Everest' but the ‗Everest Milk Masala' Label. It is

perhaps because of this reason that the plaintiff has cleverly used the

expression ―consisting of and containing the word Everest‖ whenever it has

referred to this registration and similar other registrations in its pleadings. It

is obvious that the Everest Milk Masala Label is registered in relation to

milk masala. By virtue of Section 28 (1) the proprietor of such a mark

would only get the exclusive right to use the said mark in relation to milk

masala and or similar goods. However, the defendants have been allegedly

using the mark ‗EVEREST' in respect of entirely different products -- fruit

juices, tomato ketchup, sauces, vinegar, non-alcoholic drinks, noodles and

pickles. Thus, insofar as the purported registration of 1967 is concerned,

prima facie, there is no infringement by the defendants. It is only when the

defendants obtained registrations in 1986 in respect of the products which

the defendants allegedly produce and market, that the plaintiff could sustain

an action for infringement. But, by that date, the defendants would be in a

position to show prior use in view of the documents beginning from 1968

onwards. Whether the defendants would be in a position to establish their

claim of prior use or not after a full-fledged trial is an altogether different

consideration. What is relevant for the present is that the defendants have

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.16 of 19 been able to set up a plausible defence of user prior to the plaintiff's

registrations under Classes 29 and 30 in the year 1986.

18. In coming to the aforesaid conclusion I have purposely ignored

consideration of the FPO licence of November 1965 which, according to the

defendants, clearly shows user even prior to the first registration of

24.08.1967 of the plaintiff's predecessors. It is obvious that even if the

said FPO licence of November 1965 is not taken into consideration, the

defendants have yet been able to demonstrate, prima facie, that they have a

plausible defence of prior user and that the plaintiff's case is not one of

clear-cut infringement under the said Act as it was thought to be at the time

this Court passed the ex parte order on 25.02.2008. However, if one were

to consider the FPO licence of November 1965 to be evidence of prior user,

then the plaintiff would have no case at all. But that is in the realm of

debate and controversy which can only be settled after the parties lead

evidence. For the present it is clear that the defendants have been able to

set up a plausible defence of prior user and that would be sufficient for me

to vacate the ex parte ad interim injunction granted on 25.02.2008 at least

insofar as the products of the defendants, namely, tomato ketchup, sauces,

vinegar, fruit juices, non-alcoholic drinks, noodles and pickles are

concerned.

19. As regards the question of delay and acquiescence, the plaintiff

is right in submitting that in a case of infringement mere delay would not

come in the way of a plaintiff seeking his remedy for such infringement

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.17 of 19 inasmuch as the right conferred by virtue of Section 28 (1) is an absolute

right (see Ramdev Food Products) (supra) (para 83). Thus, had it merely

been a case of delay, the plaintiff would not have been barred from the

remedy of injunction. But, as noted above, the defence raised by the

defendant of prior user invoking the provisions of Section 34 is, prima

facie, a plausible one and as such, the right conferred by Section 28 (1)

which is ―subject to the other provisions of the said Act‖, would have to

take a back seat.

20. With regard to the question of suppression and concealment,

while I am of the view that the plaintiff has employed ―clever drafting‖, it

cannot be said that it has indulged in out and out suppression / concealment.

However, this does not alter the position in any way inasmuch as the prima

facie finding is that the defendants have a plausible defence of prior user

and that their vested rights have been saved by virtue of Section 34 of the

said Act.

21. The result is that the plaintiff has not been able to establish a

prima facie case for the grant of an interim injunction in its favour.

Evidence would be required on both sides before a definitive answer can be

given with regard to the defendants' defence of prior user. It is apparent

that the defendant has been using the mark ‗EVEREST' for some time. As

per the plaintiff such user came to its notice in the year 2000. But, there is

material on record to show, prima facie, that the defendants have been using

the mark much prior to 2000 and at least from 1968 onwards. This is

without even taking into consideration the FPO licence of November, 1965.

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.18 of 19 In these circumstances, I allow the defendants' application under Order 39

Rule 4 but, only to the extent that the order dated 25.02.2008 shall not

operate in respect of the following products of the defendants:-

―tomato ketchup, sauces, vinegar, fruit juices, non-alcoholic drinks, noodles and pickles‖.

In respect of other products which the plaintiff manufactures and markets,

such as milk masala and spices of all kinds, the injunction order shall

operate inasmuch as in relation to those products the defendants have not

claimed any user, what to speak of prior user. The said applications are

accordingly disposed of with the aforesaid directions.

BADAR DURREZ AHMED (JUDGE) July 03, 2008 SR

IA Nos. 2463/2008 & 3031/2008 in CS(OS)355/08 Page No.19 of 19