Bihar Tubes Limited vs Garg Ispat Limited
2009 Latest Caselaw 4311 Del

*            THE HIGH COURT OF DELHI AT NEW DELHI

%                         Judgment Reserved on: 20.10.2009
                          Judgment delivered on: 26.10.2009

                         CS(OS) No. 1633/2009


BIHAR TUBES LTD.                                    ..... Plaintiff

                         Through : Ms. Kajal Chandra, Ms. Leena
                         Sehgal, Advocates.

                   vs.


GARG ISPAT LTD.                                     ....Defendant

                         Through : Mr. Chetan Sharma, Sr. Advocate
                         with Mr.Sanjay Aggarwal, Advocate.


CORAM :-
HON'BLE MR JUSTICE RAJIV SHAKDHER

1.

Whether the Reporters of local papers may be allowed to see the judgment ? No

2. To be referred to Reporters or not ? Yes

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

RAJIV SHAKDHER, J

IA No. 11296/2009 (O. 39 R. 1 & 2 of CPC)

1. In the captioned application filed by the Plaintiff under the

provisions of Order 39 Rules 1 & 2 read with Section 151 of Code of

Civil Procedure, 1908 (in short the „CPC‟) ad-interim injunction is

sought against the defendants in the following terms:-

"an order to interim injunction restraining the defendants, partners/promoters as the case may be, directors, servants, agents, franchisees or any one acting for or on their behalf in any manner using the mark "APOLLO" or any other mark identical or deceptively similar to the plaintiff‟s mark "APL APOLLO" in relation to their manufacturing, trading or any export in any other form whatsoever so as to result in violation of plaintiff‟s statutory and common law rights."

2. The plaintiff has based its action in the background of the

following averments made in the plaint/application:-

2.1 The plaintiff has stated that it had conceived the trade mark

"APL APOLLO" in the year 1999 in relation to its business of

manufacturing, trading and export of steel pipes and tubes. It is the

case of the plaintiff that it has been using the said trade mark i.e.,

"APL APOLLO" continuously and extensively in relation to the afore-

mentioned goods. It is also averred that due to the quality of goods

manufactured by it and the extensive publicity given thereto, the

trade mark "APL APOLLO" enjoys a reputation, and has consequently

earned for itself goodwill not only in India but also in the overseas

markets. In support of its case, the plaintiff asserts that its turnover

has grown from Rs 31 crores (approximately) in the financial year

1999-2000 to over Rs 420 crores (approximately) in the financial year

2008-2009. There is also reference to the fact that a vast amount of

money has been spent by the plaintiff towards advertisement in both

the print and electronic media for creating a brand image for its

mark "APL APOLLO". In this regard it is averred that its advertising

expenses have enhanced from a figure Rs 55,000/- (approximately)

incurred in the financial year 1999-2000 to a sum in excess of Rs 2.3

lakhs in respect of financial year 2005-2006.

2.2 In order to secure its interest the plaintiff in the year 2004

applied to the Registrar of Trade Marks (in short the „Registrar‟) for

registration of its trade mark "APL APOLLO". Consequent thereto, a

Certificate of Registration dated 10.08.2005 was issued by the

Registrar.

2.3 The plaintiff is aggrieved, by virtue of the fact that the

defendant who is engaged in the manufacturing of steel pipes and

tubes, and fittings which is an identical, or to say the least, a similar

field of business activity; is using a similar or deceptively similar

mark "APOLLO" for the purpose of its business.

2.4 The plaintiff has thus instituted the instant action on the

grounds that use of the mark "APOLLO" by the defendants has

resulted; in an infringement of its registered trade mark "APL

APOLLO"; commission of tort of passing off, and dilution of the brand

equity assiduously created by the plaintiff, in respect of its, mark

"APL APOLLO".

3. In support of the case set out in the plaint and averments made

in the interlocutory application, Ms. Kajal Chandra, Advocate drew

my attention to the following documents:-

(i) A certificate of Registration dated 10.08.2005 issued under

Section 23(2) of the Trade Mark Act, 1999 read with Rule 62(1)

framed thereunder, evidencing thereof the registration of trade

mark "APL APOLLO" in respect of M.S. Black and galvanized,

pipes and tubes included in Class 6. This Certificate has been

issued in favour of the plaintiff based on its claim that the said

Trade Mark has been used by it since 01.02.1999.

(ii) A caution notice issued in the Financial Express, in Chennai

edition, dated 07.08.2004. By this notice the plaintiff sought to

inform the public that its trade mark was being unauthorisedly

used to deceive general public and traders.

(iii) Reference was made out to photocopies depicting

advertisements.

(iv) An application made to the Bureau of Indian Standards (in

short "BIS") for carrying a BIS certification mark; which

indicated thereto the plaintiff‟s trade name as "APL APOLLO".

In this application the plaintiff has alluded to the fact that mark

"APL APOLLO" was introduced on 10.04.2000.

(v) A reference has also been made to a search report - TM 54/60

dated 09.01.2008 issued by the Examiner of Trade Marks to

demonstrate that the plaintiff has been using the trade mark

"APOLLO" even as per the said search report since 01.02.1999,

whereas the defendant has been using the same since

01.04.2001.

(vi) A reference was also made to the document dated 01.04.2007

pertaining to the defendant; (which the defendant has filed

along with his application under Order 7 Rule 11 of the C.P.C.)

to demonstrate that on its own showing the defendant‟s

turnover is substantially less than that of the plaintiff. As per

this document in the financial year 2001-02 the defendant

grossed a turnover of Rs 14.85 crores, which increased to Rs

42.81 in financial year 2004-05, and thereafter, dipped to Rs

29.03 crores in financial year 2006-07.

(vii) A reference was also made to the invoices of the defendant of

the recent past (filed by defendant with their documents under

Order 7 Rule 11 of the C.P.C.) for the period 30.11.2008 till as

recent as June, 2009 which did not carry the defendant‟s mark

"APOLLO". This is in contradiction to the invoices issued by

the defendant in the past which carried the infringing mark

"APOLLO". The purpose for which the said latest invoices of

the defendant were evidently referred to, was to demonstrate

that for a period of time the defendant had discontinued the use

of infringing trade mark "APOLLO"; which perhaps lulled the

plaintiff into complacency.

4. In the background of the above, the learned counsel for the

plaintiff made the following submissions:-

4.1 the plaintiff has been using the trade mark "APL APOLLO"

since February, 1999. In order to secure its interest an application

for registration of the mark was filed with the Registrar. A trade

mark registration certificate was issued to the plaintiff on 10.08.2005

with respect to its mark "APL APOLLO". Therefore, both by virtue of

prior user, as also the registration of the mark "APL APOLLO", the

defendant ought to be injuncted from using the infringing trade mark

"APOLLO", which is confusingly and deceptively similar to plaintiff‟s

mark.

4.2 In support of her submissions, relevance was placed on the

following judgments:

Larsen & Turbo Ltd. vs Lachmi Narain Trades & Ors. 2008 (36) PTC 223 (Del.); Syncom Formulations vs SAS Pharmaceuticals 2004 (28) PTC 632 (Del.); and Amar Singh Chawal Wala vs Shree Vardhman Rice & Gen. Mills 160 (2009) DLT 267.

5. As against this, Mr. Chetan Sharma, Sr. Advocate, learned

counsel appearing for the defendant made the following submissions:

(i) the plaintiff has displayed a lack of candour in not disclosing

that the defendant has also filed a notice of opposition bearing

No.127543 with the Registrar, in respect of, the plaintiff‟s application

for registration of the mark "APOLLO";

(ii) the defendant has filed an independent application for

registration of the mark "APOLLO" with the Registrar on 29.06.2004.

The said application was accepted on 05.08.2004 and published in

the trade mark journal dated 20.12.2004. The plaintiff has filed an

opposition (bearing No.DEL/186923) to the defendant‟s application

on 9/11.03.2005. The pleadings, as well as evidence, in the said

application are complete, as far back as 2007;

(iii) there has been delay of at least 5 years on the part of the

plaintiff in coming to court to seek an injunction, which is quite

evident from the plaintiff‟s own averments in paragraphs 12 and 14

of the plaint;

(iii)(a) A perusal of the averments made therein (i.e.,

paragraph 12 of the plaint) would show that the plaintiff on its

own showing became aware of the defendant using trade mark

"APOLLO" on coming across an advertisement in trade mark

journal dated 20.12.2004. Therefore, the averments made in

paragraph 14 of the plaint that, it was only upon a survey being

carried out by a surveyor, and on receipt of his report dated

09.01.2008, that it discovered infringement of its mark by the

defendant; was not quite accurate.

(iii)(b) The delay in the circumstances stated above would,

according to the learned counsel, amount to acquiescence; and

hence no order of injunction ought to be passed against the

defendant at the behest of the plaintiff. In support of his

submissions made hereinabove, the learned counsel for the

defendant also alluded to the fact that the defendant had, as a

matter of fact filed caveats before this Court on two dates, i.e.

24.08.2005 and 15.09.2006; as also a caveat in the District

Court on 19.09.2006. Therefore, having not come to the court

at the earliest, there was no good ground to entertain plaintiff‟s

prayer for injunction at this stage.

(iv) the plaintiff has not placed on record any evidence by way of

sales invoices or expenses incurred towards advertisement to show

prior use of its trade mark "APL APOLLO". It was contended that

since it is not disputed by the plaintiff that at least since April, 2001,

the defendant has been using the mark "APOLLO"; and given the fact

that the defendant has been in business for a period of eight years

(i.e., since 2001) and generated a turnover of nearly Rs 200 crores;

the balance of convenience was in its favour. An injunction if

granted, is bound to impact the defendant.

5.1. In support of his submission, the learned counsel for the

defendant has relied upon the judgments of the Supreme Court in the

case of Uniply Industries Ltd Vs. Unicorn Plywood Pvt. Ltd and

Ors AIR 2001 SC 2083, and S.M. Dyechem Ltd Vs. Cadbury

(India) Ltd. (2000) 5 SCC 573, and the judgment of this court in

Standard Electricals Ltd. Vs. Rocket Electricals & Anr. 2004

(28) PTC 26 (Del)

6. In rejoinder Ms Kajal Chandra, apart from reiterating what was

stated by her in the opening, sought to clarify by way of an emphasis

that the plaintiff is using not one (1) but three (3) trade marks.

These being: "APL APOLLO", "APOLLO" and "APL". The application

for registration(s) and opposition(s) thereto are pending with respect

to the other two marks and not with respect to "APL APOLLO" which

is already registered. She also referred to a response dated

06.10.2009 received by the plaintiff from BIS which seemed to

indicate that the defendant had been using the trade mark "APOLLO"

since, 02.07.2004, and not 01.04.2001 as represented to the

Registrar.

REASONS:

7. I have heard the learned counsel for the plaintiff, as well as, the

defendant. At the outset I must record that summons in the suit and

notice in the plaintiff‟s application under Order 39 Rules 1 & 2 of the

C.P.C. was issued on 02.09.2009. On that date the defendant was

represented through counsel, and time was sought for filing a written

statement and reply to the interlocutory application. Accordingly, a

period of four weeks for filing the written statement and two weeks

for filing a reply to the said interlocutory application was granted to

the defendant. The matter was posted for further proceedings on

20.10.2009. Since defendant failed to file, either the written

statement, or the reply to the interlocutory application within a

stipulated period of two weeks, the plaintiff was constrained to move

a fresh interlocutory application being: IA No.12645/2009. By this

application the plaintiff sought reliefs in terms of prayers made in the

earlier interlocutory applications i.e., IA No.11296/2009. This

application was listed before court on 25.09.2009. On 25.09.2009

the following order was passed:-

"IA No.12645/2009 in CS(OS) No. 1633/2009

The defendant was to file its written statement in the suit within four weeks and reply to the IA within two weeks. It is stated that neither has been done as of date. An advance copy of the applications was served on learned counsel for the defendant who was not present at the first call.

In the interest of justice, list on 5th October, 2009.

Sd/-

          September 25, 2009                 S.MURLIDHAR, J"


7.1    On 05.10.2009, the said application was renotified for the date

already fixed, i.e., 20.10.2009. The defendant, in the meanwhile,

filed an application under Order 7 Rules 10 & 11 of the CPC, being IA

No. 12877/09. This application was listed before court on

07.10.2009. Plaintiff was represented through counsel, and

accordingly, notice was accepted. The said application was also

posted for hearing on 20.10.2009.

7.2 At the commencement of hearing I was informed by the learned

counsel for the plaintiff that neither the written statement nor reply

to the application under Order 39 Rules 1 & 2 of the C.P.C. had been

filed by the defendant; whereas the plaintiff had filed a reply to the

defendant‟s application under Order 7 Rule 11 of the CPC. On a

query being raised, the learned counsel for the defendant informed

me that the written statement had been filed on 15.10.2009, with a

copy to the plaintiff vide diary no. 162763. The learned counsel for

the plaintiff emphatically denied having received a copy of the

written statement. To be noted that 15.10.2009 was the day the

court was closing for deepawali vacations and re-opening only on

20.10.2009.

7.3 It is clear from the events as noted above that the plaintiff has

been, in the very least, slothful in completing the pleadings, if not

guilty of deliberate proscasination. These stratagems ought to be

abjured. The learned counsel for the plaintiff is rightly aggrieved in

view of the fact that her plea for grant of an injunction was deferred

by the Court only to give time to the defendant to file a response, and

not to misuse the opportunity granted. Therefore, in effect on

record, there is only the say of the plaintiff.

8. However, despite these limiting factors, a complete hearing has

been given to the learned counsels for the parties. As a matter of

fact the learned counsel for the defendant, objected to the plaintiff

referring to certain additional documents, as an appropriate

application seeking leave of the court had not been filed. Faced with

this difficulty, the learned counsel for the plaintiff decided to press

her interlocutory application without referring to additional

documents that had been filed on behalf of plaintiff.

9. After considering the submissions of the learned counsels for

the parties the following facts and circumstances have emerged in

the case:-

(i) It is not disputed that the plaintiff has obtained registration of

its trade mark "APL APOLLO". This is evidenced at least

prima facie by a Registration Certificate dated 10.08.2005.

(ii) The plaintiff has made an averment both in the plaint, as well

as in the application, that the trade mark "APL APOLLO" has

been in use since February, 1999.

(iii) At least prima facie the plaintiff has been able to demonstrate

that its turnover has increased from Rs 31 crores

(approximately) in financial year 1999-2000 to nearly Rs 420

crores (approximately) in financial year 2008-2009, as also

that, a substantial amount of money has been spent over the

years in propagating the brand equity of plaintiff‟s trade mark

through advertisements in print and electronic media.

10. There is no doubt that the application of the plaintiff for

registration of trade mark "APOLLO" has been opposed by the

defendant, as also the defendant‟s application, stands opposed by the

plaintiff. But that cannot impinge upon plaintiff‟s case with respect

to infringement of its trade mark "APL APOLLO". Therefore, the

submission of the learned counsel for the defendant that the plaintiff

had failed to disclose the fact that the defendant had filed its

opposition to the plaintiff‟s application for registration of trade mark

"APOLLO" is not material in my view. In my opinion, failure to

disclose a fact which is not material, will not come in the way of the

court in granting the requisite relief, if the party approaching the

court is otherwise entitled to it. See observations in S.J.S. Business

Enterprises (P) Ltd. Vs. State of Bihar and Others (2004) 7

SCC 166 in paragraph 13 at page 173.

11. As regards the submission of the defendant that delay in

approaching the court ought to disentitle the grant of relief by way of

an injunction in an action for infringement of trade mark or a passing

off action; is also untenable in my view.

11.1 It is settled that a Court will not, in general, deny protection

to a plaintiff only on account of the reason of, mere delay and laches.

The rationale for this is that if Courts were to deny relief for this

reason, then in a sense, they would have put their seal of approval on

the conduct adopted by the plaintiff and the defendant in allowing

the public to believe that the goods manufactured by one are those of

another. The public have a right not to be deceived. See Syncom

Formulations vs SAS Pharmaceuticals 2004 (28) PTC 632

(Del.), paragraph 12 at page 636. Also see observations of the

Supreme Court on effect of delay in the case of Midas Hygiene

Industries (P) Ltd. and Anr vs Sudhir Bhatia & Ors (2004) 3

SCC 90, as encapsulated in the following words:-

"5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest."

12. In any event, as submitted by the learned counsel for the

plaintiff, it is demonstrable from invoices filed by the defendant

pertaining to November, 2008 that the defendant had stopped the

use of infringing trade mark "APOLLO", and that it was only on a

survey being carried out on 09.01.2008, and a subsequent discovery

of an infringing invoice of 12.05.2009, that a cause arose which

impelled the plaintiff to file the present action. There is no reason to

disbelieve these averments at this stage. Therefore, even otherwise,

I am of the view that there is no delay in approaching the court. I

must, however, point that Mr. Chetan Sharma made another valiant

attempt, of course on instructions, that while the mark "APOLLO"

was missing in the copies of the invoices filed (along with their

application under Order 7 Rule 11 of the CPC) due to the poor output

of the photocopier; the same was not the position with regard to the

original invoices. In my view even if this state of affairs were

accepted as correct it would not impact my conclusion for two short

reasons. First, the veracity of this stand cannot be ascertained at this

stage. The defendant ought to take responsibility for its action.

Second, consistent with the view expressed by me hereinabove that

delay by itself cannot be a factor which would impede the grant of

injunction, if the plaintiff is otherwise entitled to it; mere failure to

sue would not enure to the benefit of defendant. The observations in

Kerely's Law of Trade Marks and Trade Names, Fourteenth

Edition at page 412 being apt, are culled out below:

"Mere failure to sue, however, without some positive act of encouragement, is not in general enough to give a defence. A defendant who infringes knowing of the claimants mark can hardly complain if he is later sued upon it, nor is a defendant who starts to infringe without searching the Registrar of Trade Marks in any better position than if he had searched and so learned of the claimant‟s mark. Acts of the proprietor done in ignorance of the infringement, or even done without his own registration in mind, will not amount to acquiescence. A defence of estopple by acquiescence is to be distinguished from a defence that by delay the mark has become publici juris."

13. The submission of the learned counsel for the defendant that

the conduct of the plaintiff in not approaching the court immediately

after December, 2004 would show its acquiescence in defendant

using the mark "APOLLO" is also not borne out by the facts which

have been alluded to by the plaintiff. Acquiescence to my mind,

would mean conscious acceptance of an inimical state of affairs. The

meaning of the word "acquiescence" would perhaps also depend on

the context in which it is used. In the present context, amongst

various meanings ascribed to the word, the closest would be the

following given in Corpus Juris Secundum Volume I & Black's

Law Dictionary, Sixth (6th) Edition.

Corpus Juris Secundum Volume I at Pages 915-916

"Acquiescence-the word, it has been said, implies acceptance or approval, active assent, active consent, assent, assent or consent, consent, also knowledge, and power to contract."

Black's Law Dictionary , Sixth (6th) Edition at Page

"Acquiescence - conduct recognizing the existence of a transaction, and intended, in some extent atleast, to carry the transaction, or permit it to be carried, into effect."

13.1 It would also perhaps be useful to cull out the distinction

between acquiescence and laches as stated in the Black's Law

Dictionary (6th Edition at page 24):

"Acquiescence and laches are cognate but not equivalent terms. The former is a submission to, or resting satisfied with, an existing state of things, while latches implies a neglect to do that which the party ought to do for his own benefit or protection. Hence laches may be evidence of acquiescence. Laches imports a merely a passive assent, while acquiescence implies active assent. In re Wilbur‟s Estate, 334 Pa. 45, 5 A.2d 325, 331. "Acquiescence" relates to inaction during performance of an act while "laches" relates to delay after act is done."

13.2 The plaintiff, in the instant case, has amply demonstrated its

disapproval of the conduct of the defendant by taking resort to

requisite steps, such as, issuance of a caution notice to the public at

large, and also by filing opposition to the defendant‟s application for

registration of the mark "APOLLO". Therefore, the submission of the

learned counsel for defendant that the plaintiff has acquiesced to the

use of mark "APOLLO" by the defendant is in my view without merit.

There is no "active assent". A submission made in the passing by the

learned counsel for the defendant that a cease and desist notice was

not issued to the defendant by the plaintiff, is in my view not the only

mode to establish that there is no acquiescence on the part of the

plaintiff to the adverse conduct of the defendant. The question is not

of degree but that of consent, express or implied.

IS THE INFRINGING MARK IDENTICAL OR DECEPTIVELY SIMILAR-

14. Section 28 of the Trade Mark Act, 1999 (in short "T.M. Act")

subject to other provisions of the T.M. Act, gives an exclusive right

to a registered proprietor in relation to the goods or services, in

respect of which, its trade mark is registered, and also entitles him to

relief, if there is an infringement of the trade mark. The exceptions

are set out in sub-Section (2) and (3) of Section 28 of the T.M. Act.

As to what constitutes infringement is set out in Section 29, while

Section 30 of the T.M. Act limits the effect of a trade mark. The

defences available to a defendant as against the registered proprietor

of a trade mark, are set out in Section 34 of the T.M. Act. Therefore,

normally if the following queries are answered in affirmative a

injunction should follow:

(i) Whether the infringing mark is identical or deceptively

similar to the registered mark?

(ii) Whether the field of activity of the infringer and the

registered owner is the same?

(iii) Whether the infringer is using the infringing mark, in a

manner, which suggests the use of the registered mark?

14.1 The aforesaid field of enquiry is perhaps the same as the triple-

identity list referred to in the case of Ahmed Oomerbhoy & Anr vs.

Gautam Tank & Ors 146 (2008) DLT 774. In Ahmed

Oomerbhoy (supra) this court was called upon to adjudicate as to

whether the defendant‟s mark "Super Postman" was deceptively,

similar to the plaintiff‟s mark "Postman". This court held that the

only difference between the two marks apparently was in the prefix.

This court applying the triple-identity test which is nothing but that:

the mark used by the defendant is similar; the goods are the same;

and area of trade is also „common‟. If these three tests are

applicable to the infringer then it would be duty of the court to

protect the registered mark. The position in the present case is quite

similar. The only difference between defendant‟s and that of the

plaintiff‟s mark is that of the prefix "APL". The plaintiff‟s mark

carries the prefix "APL", while the infringing mark is sans the prefix.

Apart from the fact that the triple identity test is applicable in the

present case, the consumers who deal with the goods in issue, that is,

pipes and tubes, come from various social stratas of life. They are

not necessarily bestowed with the power of acute discernment. The

memory of a normal but prudent consumer is a „fading memory‟

which carries with it broad impressions.

14.2 Therefore, in order to discern whether the mark is confusingly

or deceptively similar with respect to which rights are claimed by the

registered owner; the apposite test is that, in which, the broad

essential features are to be construed-when one compares the

infringing mark with the registered mark. In doing so, the stress

ought to be on the "overall similarity" and not on the differences in

the marks. The "overall similarity" test ought to be one, which

should lead to a conclusion that it would mislead a person usually

dealing with the goods in issue, to accept the goods of the infringer,

as those manufactured by the proprietor of the registered mark. The

"ordinary purchaser is not expected to be gifted with the

powers of observations of Sherlock Homes". See Parle

Products (P) Ltd Vs. J.P. and Co., Mysore 1972(1) SCC 618.

15. In my view, if the aforesaid parameters are applied the

injunction against the defendant ought to follow almost axiomatically.

The reason being that apart from the deceptive similarity in the two

marks the field of activity is the same i.e., steel pipes and tubes. It is

also not disputed by the defendant that the use of the mark

"APOLLO" by it, has not commenced prior to 01.04.2001. As a

matter of fact the plaintiff‟s counsel has been able to demonstrate, at

least prima facie, that this assertion of the defendant, might not be

correct since the information supplied by the defendant to the BIS

seems to suggest that the defendant has been using the mark

„APOLLO‟, since 02.07.2004. The plaintiff has been able to least

prima facie establish that mark "APL APOLLO" has been used by it

since February, 1999. Reference in this regard is to be made to an

advertisement in the trade journal prior to the issuance of the

registration certificate by the Registrar on 10.08.2005. In any event,

this is a matter, (i.e., with regard to „prior use‟) which would require

trial, and is a defence available to the defendants in terms of Section

34 of the T.M. Act. Prima facie, in my view, as of today, the

defendant‟s use of the mark "APOLLO" is dishonest.

16. In support of his submissions learned counsel cited the

following judgments: firstly, S.M.Dyechem Ltd. Vs. Cadbury

(India) Ltd (2000) 5 SCC 573. I need not discuss this judgment in

detail as it stands overruled by a larger Bench of the Supreme Court

in the case of Cadila Health Care Ltd. Vs. Cadila Pharaceuticals

Ltd. (2001) 5 SCC 73. The Supreme Court rejected the test applied

in S.M.Dyechem (supra), where stress was laid on applying the test

of „dissimilarity‟ with regard to in essential features in order to arrive

at a conclusion as to whether the marks in issue were deceptively or

confusingly similar.

16.1 Learned counsel for the defendant then cited Khodey

Distilleries Ltd. Vs.Scotch Whisky Association and Anr. (2008)

10 SCC 723 (paragraph 43 and 49) for the proposition that delay

and acquiescence are a valid defence. Only to be noticed that the

Supreme Court was dealing with an appeal against a final judgment.

Obviously evidence had been led. In the instant case we are still at

the interlocutory stage. Therefore, the plaintiff cannot be denied

relief on the ground of „mere‟ delay. I have discussed this aspect in

detail hereinabove. In Khodey‟s judgment, in paragraph 49, it is

noted that delay would be a valid defence where it caused „change in

subject matter‟ or „situation‟ in a manner that „justice could not be

done‟. In the instant case the turnover achieved by the plaintiff at

least prima facie seems far in excess of that of the defendant.

Whether delay itself, caused a change in situation, is a matter which

will be determined only upon a trial being conducted.

16.2 The third case, which the plaintiff cited, is the judgment of a

Single Judge of this Court in Standard Electricals Limited Vs.

Rocket Electricals & Anr. 2004(28) PTC 26 (Del). In Standard

Electricals (supra) the facts briefly were as follows: The plaintiff

had been using the mark "STANDARD" in relation to electrical

equipments, since 1958, while the defendant had been selling its own

products under the mark "MS STANDARD", since 1979 and under

the trade mark "MS STANDARD" since 1992. It is pertinent to note

that the Court in paragraph 27 of the judgment reiterated the test

that delay by itself cannot defeat the remedy available to the plaintiff

in coming to court with regard to protection of its proprietary rights

in a trade mark, in a passing off action. The court‟s decision in

denying the relief to the plaintiff was grounded in balance of

convenience, arising in favour of the defendant, in the following

peculiar circumstances: The plaintiff had come to court after twenty

(20) years. In the interregnum the defendant had got its trade mark

registered in 1979/1992. Therefore, even though the plaintiff had

prior registration, that is, in 1958 or thereabouts, it permitted the

defendant to use the infringing mark. Both the defendant and the

plaintiff continued to sell their goods in the market under their

respective trade marks. It is in these circumstances obtaining in the

case, that the court held that even if it is assumed that there is prima

facie case in favour of the plaintiff for grant of ad-interim injunction,

the balance of convenience in the facts of the case was not in its

favour. And hence injunction was denied. While denying injunction

the defendant was directed to maintain audited accounts of electrical

equipments manufactured, and sold by it under the trade mark "MS

STANDARD". Facts of the instant case are distinguishable. The

plaintiff has consistently opposed the registration of the mark

"APOLLO" by the defendant. As noticed above, the matter in this

regard is pending before the Registrar.

16.4 The last case, cited by the defendant was Uniply Industries

(supra). The facts of this case are clearly distinguishable from the

instant case. In Uniply Industries (supra) both the appellant and

the respondent were not in possession of a registered trade mark.

Suits were filed both by the appellant as well as the respondent. In

the suit filed by the appellant an injunction was granted against the

respondent. The matter travelled to the Supreme Court against the

order of the High Court which prima facie, held in favour of the

respondent on the question of prior user of the mark of "UNIPLY"

AND "UNIBOARD". The Supreme Court vacated the order of

injunction and observed that it required trials. The Supreme Court

specifically held that in the circumstances, there will be no order of

injunction in favour of either party. Directions were given for

expeditious trial of the suit as also the proceedings pending before

the Registrar. On the contrary, in the instant case the plaintiff has a

registered mark in its favour. It is the defendant, who would have to

establish prior use in terms of Section 34 of the T.M. Act.

17. In view of the discussion above, I am of the opinion that the

plaintiff has been able to establish a strong prima facie case that the

defendant‟s mark "APOLLO" is deceptively and confusingly similar to

the plaintiff‟s registered trade mark "APL APOLLO". The balance of

convenience is also in favour of the plaintiff looking at the

comparative sale figures: Any further delay in grant of injunction will

cause continued harm to the plaintiff. Therefore, in the interregnum,

during the pendency of the, suit the defendant, its partners/

promoters, directors, servants, agents are restrained from using the

mark "APOLLO" or any other similar or deceptively similar mark to

that of the plaintiff‟s registered trade mark "APL APOLLO" in relation

to their business of manufacturing, trading and export of steel pipes

and tubes. The application stands disposed of.

IA No. 12645/2009

15. In view of the orders passed in IA No. 11296/09, the same is

rendered infructuous. It is, accordingly, disposed of.

CS(OS) 1633/2009

List before the Joint Registrar for completion of pleadings on

30th November, 2009.

OCTOBER 26, 2009                         RAJIV SHAKDHER, J
da