Atul Rawal T/A M/S. Navin Polycon vs Sb Equipments
2008 Latest Caselaw 1835 Del

                IN THE HIGH COURT OF DELHI AT NEW DELHI

                       FAO (OS) 364/2008 & CM APPL No. 12142/2008

                                         Reserved on: September 2, 2008
                                         Date of decision: October 20, 2008

                ATUL RAWAL T/A M/S. NAVIN
                POLYCON                       ....APPELLANT
                                  Through Mr. C.M. Lal with
                                  Mr. Dushyant K. Mahant and Mr.
                                  Kripa Pandit, Advocates

                             versus

                S.B. EQUIPMENTS                            ..... Respondent
                                         Through Mr. Akhil Sibal with
                                         Mr. Salim A. Inamdar, Advocate

                       CORAM:
                       HON'BLE THE CHIEF JUSTICE
                       HON'BLE DR. JUSTICE S. MURALIDHAR

                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 Yes
                       in Digest?

                                      JUDGMENT

S. MURALIDHAR, J.

1. Admit. With the consent of learned counsel for the parties, the appeal is

taken up for final hearing.

2. This appeal is directed against the impugned order dated 11 th July 2008

passed by the learned Single Judge dismissing the appellant‟s IA No. 9140

of 2007 being application under Order 39 Rules 1 and 2 of the Code of

Civil Procedure, 1908 („CPC‟) in suit CS (OS) No. 1454 of 2007 filed

against the respondent-defendant. The prayer in IA No.9140 of 2007 was

for an ad interim injunction restraining the defendant from manufacturing,

selling, marketing, advertising or in any manner whatsoever using the

trademarks „SUPER BRIGHT‟, SUPER BRIGHT EL‟, „SUPER BRIGHT

EL-C‟, „SUPER BRIGHT EL-81‟, „SUPER BRIGHT HD ULTRA‟ and

„SUPER BRIGHT Bleach‟ or any other trademark which is deceptively

similar or confusingly similar to the above trademarks.

3. The appellant is in the business of manufacturing and selling various

detergent products. The case of the appellant is that it has developed several

unique and novel detergent products solely on the basis of its own research.

Its products are being marketed and sold under the trade mark „SUPER

BRIGHT‟ followed by suffixes, such as EL, EL-C, EL-81, HD ULTRA,etc

. These products, according to the appellant, identify specific detergent

products. The documents placed on record in the suit go to show that the

appellant has been using the trade mark since 1990 in respect of detergent

chemicals. In the year 1999 the appellant developed two different products

and starting marketing its products as „SUPER BRIGHT ULTRA‟ and

„SUPER BRIGHT EL-81‟. In the year 2001 it applied for and initiated talks

for supply of its „SUPER BRIGHT‟ range of detergent to the Armed Forces

for use in various Army hospitals all over the country. It is submitted that

the appellant developed specific formulations for the Army and on 12 th

October 2004 Director General of Armed Forces (Medical Services) called

the appellant for a technical discussion regarding the products. The sample

of the appellant‟s product was tested and approved by the army

establishments. In June 2004 the appellant was awarded ISO 9001: 2000

Quality System by International Certifications Limited. On 17 th August

2006 the appellant applied for registration of its trade mark „SUPER

BRIGHT‟ under Class 3 of the Schedule to the Trade Marks Act, 1999 and

the said application is stated to be pending registration with the Registrar of

Trade Marks. In the plaint the appellant has given the sale figures for the

product „SUPER BRIGHT‟ for the last four years are as follows:

                   Year                Net Sales (Rs.)

                2003-2004              1,26,44,573.36
                2004-2005              1,43,75,606.61
                2005-2006              2,43,36,047.47
                2006-2007              4,87,17,617.88

4. It is claimed that on account of the popularity of its product and use of

the mark by it, the appellant has become the exclusive owner of the trade

mark SUPER BRIGHT and that any use to the contrary without the leave

and consent of the appellant would constitute passing off and encroachment

upon the appellant‟s intellectual property.

5. On 20th December 2004 the Director General of Ordinances Service s

(Procurement Division) invited tenders for supply of „SUPER BRIGHT

Bleached (not for coloured cloth).‟ The technical specification of product

was also indicated. The requirement as to marking on the packages, as

indicated in the terms and conditions attached to the tender form reads as

under:

"6. Marking: On initial pack,

(a) Cat/Part No. NIV, Nomenclature, Name of manufacture, quality contained therein shall be legibly and indelibly marked on each container.

(b) On final pack. Cat/part No. NIV, Nomenclature, Name of manufacture, quality contained therein shall be legibly and indelibly marked on each container also A/T No. and date, inspection Note No. and date, Name and address of manufacturer, Name and address of the consignee should be clearly visible.

The tenderer has also to fill the questionnaire which is column No. 8

requires to indicate "whether you are the manufacturer of the stores"

6. According to the defendant, the Army follows two separate processes for

inviting tenders. One is the PAC tendering which is resorted to when the

Army seeks to purchase a proprietary product of a manufacturing firm.

There is also an open tender mode of procurement for common use items of

generic or commercial specifications to ensure adequate competition. The

tender in the instant case was invited following an "Open Tender"

procedure whereby the Army had used the word „SUPER BRIGHT‟ as a

descriptive term to describe the product as per specifications provided in the

tender documents, and not as a brand name for the product manufactured by

the appellant. Ten parties participated in the tender for supply of the

aforementioned product „SUPER BRIGHT‟ detergent. According to the

defendant-respondent, it was awarded contract by the Army for supply of

both products „SUPER BRIGHT EL and EL-81 on 23rd June 2005.

Likewise tenders were invited by the Army for the supply of „SUPER

BRIGHT Bleach" in February 2006 and pursuant to the bid offered by it the

defendant-respondent was awarded that contract on 25th April 2006.

Another tender advertisement was issued on 28th September 2006 for

„SUPER BRIGHT Bleach‟ and the respondent was awarded that contract on

31st May 2007.

7. According to the appellant, it came to its knowledge sometime in

June 2007 that the respondent had submitted a bid for the supply of the

SUPER BRIGHT range of chemicals to Army Hospitals. Immediately the

appellant published a trade mark caution notice in leading newspapers

cautioning the public not to deal in the products under the trade mark

SUPER BRIGHT except those originating from the appellant. Likewise it

also wrote to the Government authorities (Armed Forces) informing that the

trade mark „SUPER BRIGHT‟ is a property of the appellant and that the

respondent has no authority to use the said trade mark. A legal notice was

also issued to the respondent. The appellant contended that there was a

likelihood of confusion on the part of the public, including associating the

trade mark „SUPER BRIGHT‟ used by the respondent with the trade mark

„SUPER BRIGHT‟ of the plaintiff; that the adoption of the mark by the

respondent was both „deceptively and confusingly similar‟ and „completely

dishonest and mala fide.‟ Accordingly, the appellant filed the

aforementioned suit in this Court on 13th August 2007. The aforementioned

application being IA No. 9140 of 2007 under Order 39 Rules 1 and 2 CPC

was also simultaneously filed.

8. After notice was issued in the suit, the defendant appeared on 20th August

2007 and informed the learned Single Jude that "the defendant has been

supplying goods to Army and other authorities under the same trademark

since the year 2005." The learned Single Judge then passed the following

conditional order on 20th August 2007:

"20.08.2007

Present: Mr. C.M. Lall, Advocate for the plaintiff.

Mr. Salim Inamdar, Advocate for the defendant.

& 2CPC) Learned counsel for the defendant has entered appearance and as prayed for is granted three weeks time to file the written statement, reply and documents. Replication and rejoinder, if any, be filed within two weeks thereafter.

Learned counsel for the defendant states that he has obtained instructions that the defendant has been supplying goods to Army and other authorities under the same trademark since the year 2005.

It has been put to learned counsel for the defendant that in case these averments are found incorrect, the Court would even examine the aspect of interim compensatory

damages while deciding the interlocutory application since no interim relief has been granted to the plaintiff in view of this stand of the defendant.

List on 9.10.2007."

9. After pleadings were complete, the plaintiff apparently filed three

interlocutory applications IA Nos. 11203/2007, 13536/2007 and

10753/2007 seeking an ad interim injunction against the respondent. In

these applications, the plaintiff sought to point out that the statement made

by the defendant before the learned Single Judge on 20 th August 2007 was

erroneous. However, according to the defendant, since the learned Single

Judge was not inclined to grant any interim relief, the plaintiff withdrew IA

No. 10753 of 2007.

10. The learned Single Judge took up the application IA No. 9140 of 2007

for disposal and formulated the following question:

"5. This case raises interesting questions relating to passing off. This is so because, according to the defendant, the Army has invited tenders from time to time in respect of various kinds „SUPER BRIGHT‟ detergents. The defendant has submitted its bid for the said detergents on the understanding that „SUPER BRIGHT‟ is only used as a description along with suffixes so as to identify the products according to the specifications given in the tender invitations. The defendant has never

regarded „SUPER BRIGHT‟ as a brand name or a trademark. Interestingly, the defendant does not supply or sell any of its products in the open market under the mark „SUPER BRIGHT‟. The only supplies that are made, are to the Army on the basis of tenders invited by the Army. The interesting question of passing off that arises is

- whether in such circumstances, where a single consumer invites tenders for a particular product using the mark 'SUPER BRIGHT' along with its suffixes and several persons submit their bids for the same products, do such persons intend to pass off their products as those of others?" (emphasis supplied)

11. The learned Single Judge opined that the question whether the

defendant intended to pass off its products as those of the plaintiff when it

was the Army which invited tenders which used the word „SUPER

BRIGHT‟ was a debatable question and could not be decided at that stage

"without examining the evidence that may be led by the parties." The

learned Single Judge nevertheless held that the plaintiff was aware in

December 2004 that "there was other parties, including the defendant, who

were submitted their bids and that at times the tenders were not being

awarded in part or in whole to the plaintiff." It was accordingly held that

this would "disentitle the plaintiff to an interim injunction and the plaintiff

would have to wait for a final decision in the suit."

12. Towards the end of the impugned order dated 11 th July 2008 the

learned Single Judge recorded the following assurances of the defendant:

"7. ....... It must, however, be noted that the learned counsel for the defendant assured this court that it is only supplying its detergents in response to the Army tenders which indicate the words „SUPER BRIGHT‟ and that the defendant by itself does not market or sell any detergents in the market to any other consumer under the mark „SUPER BRIGHT‟. The defendant shall abide by this undertaking and assurance till the disposal of the suit. It is also made clear that the non-grant of an injunction to the plaintiff quo supplies being made to the Army by the defendant would not, in any way, prejudice the plaintiff‟s case in respect of any other customers or the public at large and would not create any special equities in favour of the defendant qua the proprietorship of the mark „SUPER BRIGHT‟.

13. We have heard the submissions of Mr. C.M. Lal, learned counsel for

the appellant and Mr. Akhil Sibal, learned counsel for the respondent.

14. Mr. Lal submitted that the defendant misled the learned Single Judge by

making a statement on 20th August 2007 to the effect that it has been

supplying the product in question to the Army since 2005. This was a

blatant falsehood as admittedly the supplies were made by the defendant to

the Army only in March 2007. The statement to the contrary by the

defendant before the learned Single Judge was the principal reason why the

plaintiff was not granted an ad interim injunction even at that stage. He

submits that once the factual premise on which the order dated 20th August

2007 was proved to be false, an ad interim injunction in favour of the

plaintiff should have automatically followed. He submits that the appellant

could in any event not have come to the Court at any earlier point in time,

since the use of the trade mark of the plaintiff by the defendant would

actually commence only with the supply of the product under that mark and

that was when the plaintiff actually could have complained of infringement.

Therefore, the learned Single Judge erred in denying an interim injunction

to the plaintiff on the ground of either laches or acquiescence.

15. The defendant has chosen to file a reply dated 1 st September 2008

supported by an affidavit in the present appeal. While Mr. Akhil Sibal,

learned counsel for the defendant was hard pressed to deny the fact that the

statement made on behalf of the defendant to the learned Single Judge on

20th August 2007 was incorrect, he accused the plaintiff of suppressing a

material fact that the invitation by the Army of the tender for supply of

SUPERBRIGHT detergent was through the „open tender process‟ and not

the PAC process.

16. As regards the conduct of the defendant, in paras 4 and 5 of the

memorandum of appeal the appellant has averred thus:

"4. Thereafter, pleadings were completed and documents filed by both parties which conclusively established that the defendant/respondent in the first instance had not even attempted to supply goods to any "other authorities" as stated by the defendant before Court on August 20, 2007. In its written statement the defendant itself stated that:

"It is significant to note however that the defendant supplies its product to the Army and has not launched or advertised its product in the open market."

Hence, the statement made to the learned Single Judge that the defendant supplied goods to "other authorities" since 2005 is clearly false.

5. In fact, the learned Single Judge in his order has categorically recorded the statement of the defendant. The order of the learned Single Judge records:

"It must, however, be noted that the learned counsel for the defendant assured this Court that it is only supplying its detergent to the Army tenders which indicate the words SUPER BRIGHT and that the defendant by itself does not market or sell any detergents in its market to any other consumer under the mark SUPER BRIGHT."

The learned Single Judge, has in the humble opinion of the plaintiff/appellant completely ignored the contradictory statements made by the defendant after different points of time. The equities were clearly against the defendant for its dishonest conduct."

17. In its reply dated 1st September 2008 the respondent defendant has

stated as under:

"That in reply to paragraphs 4 and 5, it is admitted that the respondent has never supplied to any consumer other than the Army and that the respondent does not supply its product in the open market. However, it is submitted that this fact was clearly brought out in the written statement and it was never the intention of the respondent to mislead this Hon‟ble Court. Nevertheless, to the extent that the statement as recorded in the order dated 20.8.2007 was not accurate, the answering respondent sincerely and unequivocally apologizes to this Hon'ble Court and reiterates that it was never the intention of the answering respondent to mislead this Hon'ble Court. It may be noted, as stated above, that the respondent ahs willfully suppressed in the instant FAO the interim applications filed subsequently by the appellant (IA Nos. 11203/2007, 13536/2007 and 10753/2007) before the same learned Single Judge who had passed the order dated 20.8.2007

and who failed to grant any relief to the Appellant in the said applications. Instead of inviting a dismissal, the appellant chose to withdraw the last of such applications filed. It may be noted further that as recorded in the impugned order, the respondent assured the learned Single Judge that it is only supplying its product using the words „Super Bright‟ in response to the Army tenders and that the respondent does not market or sell any detergents in the market to any other consumer using the said words and to that extent, the learned Single Judge has in the impugned order directed that the respondent shall abide by its undertaking and assurance till the disposal of the suit. As such, no prejudice has been caused to the appellant as no supplies have been made at any point by the respondent to anyone other than the Army and to that extent the impugned order protects the appellant. It is denied that the equities were against the respondent." (emphasis supplied)

18. Again, in para 6 of the memorandum of appeal it is stated as under:

"6. Additionally the pleadings established that the defendant/ respondent had not made even a single supply to the Army prior to 2007. The statement that it had "been supplying goods to Army" since 2005 has been established as false. The award of a tender in favour of the defendant/ respondent does not constitute supply of goods."

19. In reply thereto the defendant states as under:

"6. That in reply to paragraph 6, it is submitted that on the basis of the documents adduced by the respondent in the suit. It is clear that the first formal supply orders were placed by the Army upon the respondent in June 2005, which have been suppressed by the appellant in the instant FAO. Further, the appellant framed its allegations of unfair trade practice and passing off on the sole basis of the respondent‟s action of „offering‟ its product to the Army using the mark „Super Bright‟. The pleadings filed by the respondent clearly stated that this act of „offering‟ its product to the Army using the words „Super Bright‟ was in consonance with the tender process of the Army and the conditions regarding nomenclature incorporated therein. The fact of actual physical supplies was never made a basis for seeking relief either in the suit or in the application for interim relief. Notwithstanding what is stated hereinabove, to the extent that the statement recorded in the Order dated 20th August 2007 suggests that the actual physical supplies were made to the Army since 2005, the respondent sincerely and unequivocally apologizes to this Hon'ble Court and reiterates that it was never the intention of the answering respondent to mislead this Hon'ble Court." (emphasis supplied)

20. To this Court it appears from the above pleadings, the defendant has

clearly tried to mislead the learned Single Judge by stating that it had been

supplying the concerned product to the Army and other parties under the

same trade mark since 2005. The apologies tendered in this behalf by the

defendant are unconvincing and unsatisfactory. It may be recalled that the

order dated 20th August 2007 was conditional and the learned Single Judge

had categorically observed as under:

"It has been put to learned counsel for the defendant that in case these

averments are found incorrect, the Court would even examine the

aspect of interim compensatory damages while deciding the

interlocutory application since no interim relief has been granted to

the plaintiff in view of this stand of the defendant."

Once the said statement was found to be factually incorrect, the sequitur

was that an interim injunction should follow in favour of the plaintiff. The

conduct of the defendant in misleading the learned Single Judge into

proceeding on the footing that it had commenced supplies to the Army

since 2005 should by itself have disentitled the defendant to any relief.

21. It was contended by learned counsel for the respondent defendant

that the plaintiff had approached the Court with unclean hands and that it

had suppressed the fact that it had participated in the tenders in which the

other bidders had also participated; that the plaintiff knew that these tenders

were for „SUPER BRIGHT‟ products; that the plaintiff therefore made a

false averment that he knew of the award of the tender to the defendant only

sometime in March 2007. It was sought to be contended that being in the

same trade it would have been impossible for the plaintiff not to know that

the tender had in fact been awarded to the defendant, particularly when the

plaintiff was not awarded the tender.

22. We are not impressed with the above submissions. It appears that the

Army in fact does not announce publicly or place in the public domain

information as to who has been awarded the contract for supply of the

product. It is plausible therefore that the aggrieved party would come to

know that it has not been awarded the tender only when supplies are made

by some other party pursuant to that tender. When the admitted position is

that the defendant made the supplies only in March 2007, it is quite possible

that the plaintiff knew of the award of the tender to the defendant only

thereafter. We also do not appreciate the submission about the plaintiff

having acquiesced in the defendant supplying the goods under the trade

mark „SUPER BRIGHT‟. Till such time the defendant in fact supplied the

goods under that trade mark, the plaintiff could not have been said to have

suffered any injury on account of the infringement.

23. This Court is also not impressed by the distinction sought to be drawn

by the defendant between a PAC tendering process and an open tendering

process. The defendant cannot be seen to take advantage of the lapse of the

army in inviting tenders for supply of a non-generic goods through an open

tender process particularly when it is the plaintiff alone which has been

manufacturing the said product under the said mark. The defendant cannot

claim to be unaware of the legal consequences of knowingly using the

plaintiff‟s mark on similar goods and supplying them to the army.

24. It was sought to be contended that for the purpose of an action in

passing off it would have to be shown that the person to whom the goods

were supplied would have been deceived into believing that the goods were

that of the plaintiff when in fact they were not. The case of the defendant is

that the army was under no such deception or confusion as it knew that the

goods supplied by the defendant under the trade mark „SUPER BRIGHT‟

were not manufactured by the plaintiff. Reliance was placed on the

judgments in Harrods Ltd. v. Harrodian School Ltd. (1996) RPC 697

where certain tests have been laid down for determining if there is

deception. To underscore the distinction between an action on passing off

and an action in infringement reliance was also placed on the decisions in

Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145,

Bhavnesh Mohanlal Amin v. Nirma Chemicals Works Ltd. (2006) 1 SCC

185, Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) 5

SCC 73, Durga Dutt Sharma v. Navratna Pharmaceuticals Laboratories

(1965) 1 SCR 737 and Wander Ltd. v. Antox India Pvt. Ltd. 1990 (Supp)

SCC 727. As regards the contention that the plaintiff had acquiesced in the

supply by the defendant of the „SUPER BRIGHT‟ product, reliance was

placed on the decision in Power Control Appliances v. Sumeet Machines

Pvt. Ltd. (1994) 2 SCC 448 and M.Gurudas v. Rasaranjan (2006) 8 SCC

367.

25. On the other hand learned counsel for the appellant plaintiff emphasised

that the supply by the defendant of the detergent using the trade mark

„SUPER BRIGHT‟ was plainly dishonest and such supply would result in

the dilution of the plaintiff‟s trade mark and loss of goodwill particularly if

the quality of the product supplied by the defendant was poor. It would

adversely affect the plaintiff‟s trade mark. Reliance is placed on Baker

Hughes Limited v. Hiroo Kushalani 1998 PTC (18) 580 which was

affirmed by the Supreme Court in Baker Hughes Limited v. Hiroo

Kushalani (2004) 29 PTC 153 (SC).

26. The law in regard to the distinction between an action for infringement

and an act for passing off is well settled. In Cadila Health Care the

Supreme Court, after referring to its earlier decisions, reiterated that "what

has to be seen in the case of a passing off action is the similarity between

the competing marks and to determine whether there is likelihood of

deception or causing confusion. It is not correct to say that the difference in

essential features is more relevant. The principle of phonetic similarity

cannot be jettisoned when the manner in which the competing words are

written are different."

27. As far as the present case is concerned there are no two competing

marks one by the plaintiff and the other by the defendant. There is only one

mark used and that belongs to the plaintiff. Admittedly, the defendant is

supplying the product in question, using the plaintiff‟s trade mark „SUPER

BRIGHT‟. The only defence of the defendant is that as far as the army is

concerned there is no deception and since the supplies are being made only

to the army and in strict consonance with the terms of the tender and

therefore there is no cause of action in a suit for passing off. The precise

averment made by the defendant/respondent in para 8 of its reply dated 1 st

September 2008 in the present appeal is: "...the Respondent only supplies

its product to the Army and has been using the words „Super Bright‟ in

relation to its product and in connection with the tenders invited by the

Army since 2005." It is not possible to accept the submission of the

defendant that the army is under no deception that the product supplied by

the defendant is manufactured by the plaintiff and not the defendant.

Admittedly, the defendant does not manufacture the product in question

under the trade mark „SUPER BRIGHT‟. It uses this mark for its products

only when supplying to the Army. This alone should be sufficient to negate

the claim of the defendant about there being no deception. Further, it is

clear from the authorisation letter dated 4th June 2007 that what was tested

by the Army authorities and cleared for supply were only the product of the

plaintiff and that "no other products were tested/approved." Given the open

tender process it is possible that the army was under the impression that the

defendant and other manufacturers had purchased the product of the

plaintiff in the market and were supplying it to the army. This is very much

contemplated from the questions asked of each tenderer in the open

tendering process, which have been set out earlier. The defendant in the

instant case does appear to have held out to the army that the product

supplied by it is „SUPER BRIGHT‟. It is not as if the defendant informed

the Army that the product supplied by it is not the plaintiff‟s product

purchased from the market. In the circumstances, it is not possible to accept

the defendant‟s contention that the Army was not under any confusion that

the defendant is supplying its own product and not that of the plaintiff‟s.

The supply of its product by the defendant under the mark SUPER

BRIGHT without informing the army that it is not manufacturing the said

product under the mark SUPER BRIGHT is prima facie a dishonest use of

the plaintiff‟s mark. This essential feature of the case cannot be ignored and

belies the claim of the defendant about there being no deception.

28. We also find considerable merit in the submission of the appellant about

the likely loss of goodwill and reputation by the plaintiff if the injunction

were refused. The factors to be taken into consideration for grant of

injunction in an action of passing off, as explained in Satyam Infoway Ltd.

(supra) includes the loss or likelihood of reputation. In Baker Hughes Ltd.

v. Hiroo Khushalani, 1998 (18) PTC 580 a learned Single Judge of this

Court, after noticing several judicial decisions summarised the position thus

(at page 618):

"If the defendant is in direct competition with the plaintiff, the court will readily infer the likelihood of the damage to the plaintiff‟s goodwill not only through loss of sales but also through loss of exclusive use of his name or mark in relation to the particular goods or business."

A reference was made to para 5.04 of the treatrise "Pasing Off Law

and Practice" by John Drysdale and Michael Silverleaf (Second

Edition, 1995, Butterworths) which reads thus (at page 618):

"5.04. If a defendant is in direct competition with the plaintiff, the court will readily infer the likelihood of damage to the plaintiff‟s goodwill, not merely through loss of sales but also through loss of the exclusive use of his name or mark in relation to the particular goods or business concerned, on evidence of the plaintiff‟s reputation in the goods or business and a relevant misrepresentation by the defendant in relation to the same or similar goods or the same or a similar business."

Reference was also made to the observations of Neville, J. in Warwick Tyre

Co. v. New Motor and General Rubber Co., [1910] 1 Chancery Division

248 (at page 255):

"Practically the sole asset possessed by the plaintiff is the goodwill which attaches to the name of Warwick in the tyre market, and I think the evidence shows that the goodwill is an asset of great value. It would not be doubted that the value of the trade name Warwick in the tyre market would be considerably lessened by the fact that there was another person in the market who was entitled to deal in tyres in connection with the name Warwick. In the first place it would limit the right of the owner of the name Warwick in the tyre market, to the use of his name in respect of those articles only those actual articles on which he had used it hitherto, and in the second place, it puts the reputation of the plaintiffs in the hands of persons over whom they have no control whatever."

We are informed that although a Division Bench of this Court had reversed

the above judgment of the learned Single Judge, the Supreme Court in

Baker Hughes Limited v. Hiroo Kushalani 2004 (29) PTC 153 (SC)

affirmed the judgment of the learned Single Judge by setting aside the

judgment of the Division Bench. We are in complete agreement with the

exposition of the law by the learned Single Judge and are of the view that it

would apply on all fours in the instant case.

29. Admittedly, the appellants have been using the mark in question earlier

than the defendant. The balance of convenience in granting the injunction

is clearly therefore in favour of the Appellant. The observations of the

Supreme Court in N.R.Dongre v. Whirlpool Corporation 1996 (16) PTC

583 and Milment Oftho Industries v. Allergan Inc. 2004 (28) PTC 585

(SC) as to the equities weighing in favour of the prior user are equally

relevant in the present context.

30. The law being sufficiently clear, this Court is of the view that the

Appellants have demonstrated that not only they have a prima facie case but

that the balance of convenience in granting the interim injunction as prayed

for is entirely in their favour.

31. We are not impressed with the submission of the Defendant Respondent

that the plaintiff should be denied an injunction on the grounds of delay and

acquiescence. The decision Power Control Appliances v. Sumeet

Machines Pvt. Ltd. in fact does not support the defendant. On the facts of

the said case the Supreme Court held that there was nothing on record to

show that the first Defendant in that case was an earlier manufacturer and

that "there can be only one mark, one source, and one proprietor. It cannot

have two origins." On the materials placed on record in the said case it was

held that "the denial of injunction, once the infringement of trade mark,

copyright and design is established, cannot be supported." Reverting to the

case on hand, for the reasons already explained, in the present case we are

satisfied that the plaintiffs have been able to show prima facie that they are

the prior users of the mark and that they have made out a prima facie case

for grant of an ad interim injunction in their favour.

32. Accordingly the impugned order of the learned Single Judge is set

aside. There will be injunction in favour of the plaintiff appellant

restraining the respondent defendant from manufacturing or authorising the

manufacture, selling or offering for sale, marketing, advertising, promoting,

displaying or in any other manner whatsoever using the trade mark SUPER

BRIGHT and/or SUPER BRIGHT EL and/or SUPER BRIGHT EL-C

and/or SUPER BRIGHT EL 81and/or SUPER BRIGHT HD ULTRA

and/or SUPER BRIGHT Bleach and/or any other trade mark which is

deceptively or confusingly similar to the above trade marks. The injunction

will operate prospectively subject to the condition that the defendant will

maintain complete accounts of all the sales made by it of the products sold

to the army or any other persons till the date of the present order. The

injunction will continue till the disposal of the Suit. We are informed that

the Army authorities have since desisted from inviting tenders for supply of

SUPER BRIGHT products through the open tender process. In any event,

the law as explained in this judgment will continue to govern future similar

tenders.

33. The observations in this judgment are for the purposes of determining

the case for grant of injunction pending the final disposal of the suit. The

final determination of the issues in the suit will be arrived at on an

independent assessment of the evidence uninfluenced by this judgment.

34. The appeal is allowed with costs of Rs.20,000/- which will be paid by

the Respondent to the Appellant within a period of four weeks.

S. Muralidhar, J.

Chief Justice 20th October 2008 rk-dn