Pioneer Nuts & Bolts Pvt. Ltd. vs M/S Goodwill Enterprises
2009 Latest Caselaw 3690 Del

       THE HIGH COURT OF DELHI AT NEW DELHI

                                                  Date of decision: 11.09.2009

                             FAO (OS) 334/2008

       PIONEER NUTS AND BOLTS PVT. LTD             ..... Appellant
                     Through: Mr. N.K. Kaul, Sr. Adv. with
                     Mr. Sanjeev Singh, Mr. Amit Kumar Singh,
                     Ms. Shikha, Mr.Karan Mehta, Mr. Amit Jha,
                     Advocates

                    versus

       M/s.GOODWILL ENTERPRISES                  ..... Respondent
                    Through: Mr. Shailen Bhatia,
                    Ms. Anita Kapur & Mr. Amit Jain, Advs.

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

1.     Whether Reporters of the local newspapers may be allowed
       to see the judgment?                                     No
2.     Whether to be referred to the Reporter or not?           Yes
3.     Whether the judgment should be reported in the Digest? Yes

                                  JUDGMENT

S. Muralidhar, J.

1.This appeal is directed against the impugned judgment and order dated 25 th

April, 2008 passed by the learned single Judge rejecting I.A. No. 780/2007

filed by the appellant seeking an ad interim injunction against the Defendant

infringing and passing off its registered trademark „TUFF‟ and „TUFF

LABEL‟.

2. The parties are referred to by their status in the suit, i.e. the Appellant is

referred to as the Plaintiff and the Respondent as the Defendant.

3. The Plaintiff states that it adopted the trademarks „TUFF‟ and „TUFF

LABEL‟ on 1st June 1996 in relation to nuts, bolts, screws and studs. Its

application for registration of the mark „TUFF‟ in Class-6 goods was made

on 11th February 1998, advertized in the Trademarks Journal No. MEGA-1

on 25th August, 2003 and Registration (under No. 791109) was granted in

respect of the mark „TUFF‟ on 14th May, 2004 effective 11th February 1998.

The Plaintiff‟s application for registration of the mark „TUFF LABEL‟ was

advertised in the Trade Marks Journal No. 1328 Suppl. (5) dated 30th March

2005 and granted registration (under No. 1073841) in Class 6 goods on 19 th

September 2005 effective 15th January 2002. The Plaintiff asserts that it is

the owner and the proprietor in the artistic features in TUFF LABEL. The

Plaintiff states that its copyright in TUFF LABEL is registered under the

Copyright Act 1957 under A-74315/2005. The Plaintiff claims that it has

been honestly and bonafide using the marks continuously in the course of

trade since their adoption.

4. According to the Plaintiff, the goods manufactured by it have been

accredited with ISO 9001:2000 certification by the TUV South Asia Private

Limited. The Plaintiff claims to have acquired and built up its reputation and

goodwill in relation to the products on which the marks are used. It

advertizes its products through an exclusive website www.tuffbolt.com. It

claims that its goods maintain the highest level of quality and precision. It

states that it has spent a substantial amount on publicity and that its marks

have acquired secondary significance denoting the said goods and business

of the Plaintiff. It is asserted that the marks „TUFF‟ and „TUFF LABEL‟

have become distinctive and well known trademarks within the meaning of

Sections 2(1)(zg) and 11 of the Trade Marks Act, 1999 („TM Act‟) in

relation to the said goods and business.

5. The Defendant is stated to have adopted an identical/deceptively similar

trade mark „TUFF LABEL‟ and „TUFF & TUFF‟ in relation to screws

(self taping). A copy of the impugned mark adopted by the Defendant is

placed on record. It is averred that the Defendant‟s marks are identical to

and deceptively similar in each and every respect: i.e, phonetically, visually,

structurally and in the basic idea and essential features. It is alleged that by

adopting the impugned mark, the Defendant had infringed and passed off the

Plaintiff‟s proprietary rights in the marks.

6. The Plaintiff has placed on record copies of the Defendant‟s applications

advertised in the Trade Marks Journal. The first is application No. 1301515

dated 10th August, 2004 by Hereet Singh trading as Goodwill Enterprises for

the mark „TUFF‟ in respect of "Screws (Self Tapping)" advertised in the

Trade Mark Journal No. 1331 dated 1st June, 2005. In the column „proposed

to be used‟, it is indicated: "(DELHI)". There is an additional representation

dated 31st January 2007 made by Harpreet Singh in this application for

registration of the mark in Class 12 goods claiming user since 1991. The

second is application No. 9427887 dated 27th July 2000 by Harpreet Singh,

Hardev Singh and Kushwant Singh trading as Good Will Industries claiming

user since 1st April 1995 in respect of the mark TUFF for Screw (Self

Tapping) published in the Trade Marks Journal No. 1345 dated 1st June

2006. It is stated in the advertisement that the application is to be associated

with Application No. 1030155. The third is an application No. 1302920

dated 16th August 2004 by Harpreet Singh trading as Goodwill Enterprises

published in the Trade Mark Journal No. 1351 dated 1st September 2006 for

an identical mark „TUFF‟ in respect of „Screws (Self Tapping)‟ in which the

user is claimed from 1st January 1991. The fourth is application No. 1307257

dated 6th September 2004 by Hereet Singh trading as Goodwill Enterprises

published in the Trade Marks Journal No. 1361 dated 1st February 2007 for

the mark TUFF for "Self Tapping Screws included in Class 6" and which

claims user since 31st December 1991 in Delhi. The fifth is application No.

1365632 dated 21st June 2005 by Harpreet Singh in respect of the mark

TUFF for "all types of screws" with user claimed since 17 th June 2005 and

published in the Trade Marks Journal No. 1338 Suppl. dated 15 th January

2006. The depiction of the label bearing the mark TUFF in each of the

applications referred to is identical.

7. It is stated that the Plaintiff became aware of the Defendant‟s impugned

adoption of the trade mark „TUFF LABEL‟ in respect of same class of

goods through the aforementioned advertisements in the Trade Marks

Journal. It lodged a Notice of Opposition against the Defendant‟s trade

mark application No. 1301515. The enquiry in the trade by the Plaintiff

revealed that the Defendant had not yet commenced using the impugned

trade mark in relation to the impugned goods and, therefore, the Plaintiff had

not been able to lay its hands on the impugned goods with the impugned

trade mark „TUFF LABEL‟. The Defendant sent a letter dated 7.12.2006 to

the Plaintiff requesting it to change the trade mark „TUFF‟ claiming that the

Defendant was engaged in the business of manufacturing of fasteners under

the trade mark „TUFF and TUFF‟ whereas in the trade mark application, the

Defendant had filed one label depicting the trade mark „TUFF LABEL‟. In

its letter dated 7.12.2006, the Defendant claimed to be a partnership concern.

8. It was averred by the Plaintiff that the adoption by the Defendant of the

impugned trade mark was dishonest and fraudulent and since it was in the

same line of business and for similar goods, the Defendant was taking

advantage and trading upon the reputation and goodwill of the Plaintiff with

a view to causing confusion and deception in the market and passing off its

goods and business as those of the Plaintiff. On the above averments,

permanent injunction was sought by the Plaintiff to restrain the Defendant

from manufacturing, selling, advertising or displaying directly or indirectly

the fasteners, screws, screws (self taping) nuts, bolts, studs and all allied and

cognate goods falling in class-6 as well as class-12 or any other class of

goods under the impugned trade mark „TUFF LABEL‟ and „TUFF and

TUFF‟. The other prayer was for injuncting the Defendant from violating

Plaintiff‟s copyright involved in the trade mark/label and order for

delivering up of the impugned goods and business bearing the impugned

trade mark and label including packaging, stickers, boxes and any other

incriminating material including display boards and sign boards. A further

prayer was for rendition of accounts and an order for decree of damages in

the sum of Rs.20,00,500/-.

9. By order dated 22.1.2007, the learned single Judge passed an ex parte

order restraining the Defendant from using, marketing, selling, offering for

sale, advertising or displaying the trademarks or labels of the Plaintiff in

respect of fasteners, screws, screws (self taping) nuts, bolts, studs and all

allied and cognate goods till further orders. In the written statement, it was

pointed out that Harpreet Singh is a partner of M/s Goodwill Enterprises and

his mother Mrs. Rajinder Kaur had originally floated another firm M/s

Goodwill Fasteners which had dealt in self taping screws. That firm had

adopted the trade mark „TUFF‟ for self taping screws in the year 1991. It is

claimed that the firm had advertized the trade mark „TUFF‟ in „The Hindu‟

on 26.12.1993. It was also advertized in Gujarat Samachar on 26.12.1993.

The Post Office granted the Grams „TUFF‟ on 27.8.1994 to M/s Goodwill

Fasteners. The firm was, however, closed on 31.3.1996. It is stated that

Harpreet Singh formed another partnership firm with his brother Shri

Kushwant Singh and father S. Hardev Singh under the name of M/s

Goodwill Industries in 1994. M/s Goodwill Industries started using the trade

mark „TUFF‟ in the year 1995. In the year 2002, Harpreet Singh formed

another firm with himself, his mother Smt. Rajinder Kaur, cousin Gurpreet

Singh and brother Kushwant Singh which was named M/s. Goodwill

Enterprises, i.e. the Defendant herein. Since 2003, M/s Goodwill

Enterprises has been using trade mark „TUFF‟. Thus, it is clear that the

family of S. Harpreet Singh had been doing business under the trade mark

„TUFF‟ in one or other firm since 1991 and that the firms Goodwill

Fasteners and Goodwill Industries are the predecessors in interest of the

Defendant Goodwill Enterprises. S. Harpreet Singh was a common partner

in all these firms.

10. In order to show continuity of the use of the trade mark „TUFF‟ by the

family of S. Harpreet Singh, the Defendant has placed on record the price

lists, letters from dealers, trade enquiries and renewal of telegraphic address

„TUFF‟ etc. Reference was also made to the advertisement taken out by

M/s Goodwill Industries of the trade mark „TUFF‟ in 1999 in Rajasthan

Patrika. The Defendant claims to be within its right to use the trade mark

„TUFF‟ and questions the locus of the Plaintiff to file the suit. It is alleged

that the Plaintiff was aware of the prior use of the trade mark „TUFF‟ by the

Defendant and, therefore, did not reply to the letter dated 9.12.2006 written

by the Defendant to the Plaintiff. It is pointed out that the Plaintiff really

never called upon the Defendant to stop the use of the trade mark „TUFF‟ at

any stage. Therefore, the Plaintiff was estopped from seeking an injunction

to prevent the Defendant from using the said mark. It is stated that although

in the Application No.1301515 in class-12, the Defendant had stated that it

was proposing to use the mark, this was in fact an error since the mark was

already being used since 1991. It is submitted that a wrong advertisement

cannot change the factual averments. It is further contended that the

registrations granted in favour of the Plaintiff are later to the adoption of the

trade mark by the Defendant. It is further submitted that the Plaintiff‟s

registration No.1073841 in class 6 is of a device of bolt, whereas the

Defendant was not using the device of bolt. It is not in dispute that in

addition to the documents filed along with the plaint, during the course of

hearing, learned counsel of the Plaintiff placed reliance on the additional

documents in the form of sales tax registration certificates of 1996, sales and

income tax returns from 1996 onwards and excise registration certificate.

11. The learned Single Judge noted that injunction should ordinarily follow

the infringement of a registered trade mark, subject to two exceptions

contained in the TM Act. The first exception being Section 28 which was to

the effect that if both the Plaintiff and the Defendant are owners of registered

trademarks, an action for infringement will not follow and only a passing off

action can be maintained. The other exception was Section 34 which

mandated that the proprietor of a registered mark cannot restrain the use of

an identical mark by any person in relation to goods or which that person or

predecessor in title had been continuously using from a date prior to the use

of the first mentioned trade mark in relation to those goods by the proprietor

or predecessor in title. The learned single Judge found that the two

trademarks used by the parties were identical. While the Plaintiff used it for

nuts, bolts, screws and studs, the Defendant used it for one kind of screw. It

was held that the pictorial representation of the mark is closely identical in

both cases.

12. The question was whether the Defendant had made out a case for prior

use. The learned Single Judge noted that trade mark registration was given to

the Plaintiff in 2005 with effect from 1998 and 2002. Copyright registration

was obtained in 2005. Although the earliest use of the disputed mark was

claimed by the Plaintiff to be 1996, the invoices and bills produced were of

the years 2004 onwards. The income tax and sales tax returns from 1996

onwards mentioned the Plaintiff‟s income and sales but not its products. On

the other hand, the Defendant had been able to show three advertisements,

two of 26.12.1993 and one of 1999, trade enquiries of 1993, 1994 and 1995

and different invoices pertaining to Calcutta and Madras. The Plaintiff‟s

case was that the Defendant was a squatter and merely advertising the mark

but never using it. Referring to the judgment in Revlon Inc. v. Sarita

Manufacturing Company AIR 1998 Delhi 38, it was held by the learned

single Judge that the dissemination of knowledge of a trade mark in respect

of a product through advertisement in media amounts to use of the trade

mark whether or not the advertisement is coupled with the actual existence

of the product in the market. The learned single Judge negatived the

argument of the Plaintiff about the advertisements produced by the

Defendant amounting to no credible evidence of user.

13. The other issue was of prior user. The learned single Judge relied on the

copies of the partnership deeds where Harpreet Singh was shown as partner

of the firm from 1991 in relation to the business and the product. Reliance

was placed on the judgment in Swaran Singh v. Usha Industries (India),

AIR 1986 Del 343 and Mocolube India Ltd. v. Maggon Auto Centre, 2008

(36) PTC 231 (Delhi) to hold that the Plaintiff has been able to establish

prima facie existence of registration in its favour, in relation to the subject

marks, with effect from 1998 and 2002. Yet there was no credible evidence

of proof of the use of the mark from that period; the materials were sketchy.

It was held that the Plaintiff had not produced any material to show that it

had used the mark prior to 1998. On the other hand, the Defendant has

"prima facie shown that the mark was advertized in 1993 and 1999 and trade

enquiries through original letters, indents, etc. existed in 1993, 1994, 1995

onwards". The issuance of telegraphic name „TUFF‟ by the Postal

Department in 1994, 1995 was also noticed and it was held that the

Defendant was "prima facie continuously using the marks since 1993 at

least, enabling it to the benefit of Section 34 of the Act." Accordingly the

injunction was refused.

14. We have heard the submissions of Mr. Neeraj Kishan Kaul, leaned

Senior counsel for the appellant and Mr. Shailen Bhatia, learned counsel for

the Defendant. It is pointed out by Mr.Kaul that the Plaintiff had placed on

record bills showing user of the mark since 1996. The Defendant had merely

inserted two advertisements soliciting dealer enquiries. The mere obtaining

of a telegraphic address for a couple of years did not amount to user of the

mark. In any event, this was not a continuous user of the mark since there

was no document produced by the Defendant after 1995 except a telegraphic

address registration in 1997, a single newspaper advertisement in 1999 and

in any event, the absence of any document of user from 1999 till date, the

unregistered partnership deed of three different firms which by themselves

never mention the impugned trade mark „TUFF‟ could not be relied upon.

Moreover, without any valid deed assigning the impugned trade mark by one

firm to the other, it could not be said that the Defendant was continuously

using the mark.

15. On the other hand, Mr. Bhatia relies on Section 34 of the TM Act to

contend that the Defendant was using the mark even prior to 1998. He relies

upon the newspaper advertisements issued by the Defendant in 1993, the

allotment to it of the telegraphic address „TUFF‟ in 1994, 1995, 1997, the

partnership deeds and the receipt by it of trade enquiries. Copies of the

indents of the Defendant‟s distributors mentioning the word „TUFF‟, the

price lists of the Defendant mentioning the word „TUFF‟ and the trade mark

applications filed in 1991 are all relied upon to show prior user. It is

submitted that user later to 1998 is irrelevant because the law requires that

the Defendant to show user prior to the date of grant of registration of the

trade mark in favour of the Plaintiff.

16. Relying upon Section 2(2) (c) of the TM Act, as interpreted in Hardie

Trading Ltd. & Anr. v. Addisons Paint and Chemicals Limited, (2003) 11

SCC 92, it is submitted by Mr.Bhatia that the advertisements issued by the

Defendant in the newspapers prior to 1998 constitutes prior user. Reliance is

placed on Wander Ltd. & Anr. v. Antox India (P) Ltd., 1991 PTC 1 (SC) to

contend that need for protection of registered trade mark must be weighed

against the corresponding need of the Defendant to be protected against the

injury resulting from his being prevented from exercising his legal rights for

which he cannot be adequately compensated. It is asserted that the

Defendant has honesty of adoption.

17. Before the contentions of the parties are discussed, this court would

briefly recapitulate the law. In Smith Bartlet and Co. v. The British Pure

Oil Grease and Carbide Co. Ltd., (1934) 51 RPC 157, a distinction was

drawn between the standard of proof of continuous prior user of an

unregistered trade mark as required in an infringement action and that

required in a rectification proceeding. The standard requited to defeat an

infringement action was more stringent and rigorous. It was observed that

Section 41 of the Trade Marks Act of the United Kingdom (which required

like Section 34 TM Act continuous prior user) had put

"the owner of a registered Trade Mark in a very exceptional position, whether he has used the mark or not, and he is entitled to the exclusive user of it unless under the proviso to Section 41 somebody else is able to show, not an occasional user from a date anterior to the user by the owner of the registered trade mark, but a continuous user by him."

18. In Amaravathi Enterprises v. Karaikudi Chettinadu, 2008 (36) PTC

688 (Madras) (DB), it was observed that apart from prior continuous use of

the trade mark and trade name, the Defendant seeking to set up a defence of

prior use under Section 34 of the TM Act had to also prove the volume of

sales. In Veerumal Praveen Kumar v. Needle Industries (India) Pvt. Ltd.,

2001 (21) PTC PTC 889 (Delhi), a Division Bench of this Court emphasized

that a trade mark does not arise from the mere use of a word or words or a

formula or a mark. It had to be shown that in relation to particular goods,

there is a course of trading and that a goodwill connecting the trader with the

goods by the reason of the trade mark under which the goods are marketed

has resulted. It was observed: "it follows that where, in relation to particular

goods, there is no such course of trading as to give rise to goodwill, there is

no interest to be protected by a trademark and no such mark can subsist in

vacuo."

19. In Revue Trade Mark (1979) RPC 27, the question was whether there

had been use of the trade mark within the meaning of Section 26 of the

Trade Mark Act of the United Kingdom. It was observed that mere offers

for sale and orders resulting from such offers do not constitute the use of a

trade mark. It was necessary that the proprietor of the trade mark, by the

time an offer for sale is published, should "take positive steps to acquire

goods marked with the trade mark" for then he would have done enough for

his combined actions to constitute use on, or in relation to goods. These

observations were approved by the learned single Judge of the Calcutta High

Court in Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba

Appliances Co. 1994 (14) PTC 53 (Cal), where a reference was made to the

observations of Falconer, J. in Hermes Societe Anonyme v. B.H. Ries Ltd.,

1982 RPC 425. It was observed in the latter case that the issuance of a series

of advertisements as part of an introductory campaign may be use of the

mark in the course of trade but "not upon the goods or in physical relation

thereto". It was observed that this exposition of the law would equally be

applicable in India. This part of the judgment of the learned Single Judge

was not been disturbed by the Division Bench of the Calcutta High Court

and later by the Supreme Court in Kabushiki Kaisha Toshiba v. Toshiba

Appliances, (2008) 37 PTC (SC). Likewise in Harold Radford, (1951) 68

RPC 221, it was held that the mere issuance of an advertisement would not

constitute a user of the mark. It was observed that otherwise the proprietor

of a trade mark might, without having any goods to offer, advertise its marks

at periodical intervals and thereby prevent any attack being made upon the

mark. It was emphasized that "use of a mark in advertising media must be

concurrent with the placing of the goods in the market if it is to be regarded

as a trade mark".

20. This interpretation of law equally applies as far as TM Act is concerned.

The definition of „trade mark‟ even under Section 2(1)(zb) of the 1999 Act

means a mark "which is capable of distinguishing the goods or services of

one person from those of others". Therefore, the use of a mark that is not

capable of distinguishing the goods of such proprietor of the trade mark

would not qualify for the protection under the TM Act.

21. The reference in the impugned judgment of the learned Single Judge to

Revlon Inc. case (supra) was not apposite. It was observed in the said case

that dissemination from the knowledge of a trade mark in respect of a

product through advertisement in media amounts to use of the trade mark

whether or not the advertisement is coupled with the actual existence of the

product in the market. However, the facts of that case show that the Plaintiff

was the registered owner of the trade mark and its goods did exist abroad.

The goods being perfumes under the mark Revlon, Charlie, Intimate etc.

had a proven trans-border reputation. The non-existence of goods in India

was owing to special circumstances such as closed economy, import

restrictions etc. It was observed in para 25 as under:

"Though the matter about rectification of the register of trade marks due to the Plaintiff‟s non-user for a continuous period of five years is pending before the Calcutta High Court and I am not giving any finding on the same, however, on the basis of material placed on record, I am prima-facie of the opinion that the products of the Plaintiffs were available in India even at that time at the duty free shops and they were also being imported and sold to diplomats."

22. The learned Single Judge appears to have followed the judgment of the

Division Bench in N.R. Dongre v. Whirlpool Corporation AIR 1995 Delhi

300. Although it was observed therein that dissemination of knowledge of a

trade mark in respect of a product through advertisement in media amounts

to use of the trade mark whether or not the advertisement is coupled with the

actual existence of the product in the market, that case was essentially about

trans-border reputation. One of the issues that arose for determination there

was "whether the reputation of trademark whirlpool in respect of washing

machines of the respondent has travelled trans border to India." On the

material before the Court, the learned single Judge came to the conclusion

that Whirlpool Corporation had "positively made out a case of actual sales

by it of Whirlpool products including washing machines in a proved

geographical region around the world." The sales in India were limited to

the US Embassy and US Aid Office, New Delhi. It was in those

circumstances that reliance was placed on the advertisements in the country

for dissemination of knowledge about the trade mark. Therefore, the said

case was not about mere advertisements but advertisements coupled with the

availability of goods even outside India. The whole case proceeded upon the

extra territorial reputation of a mark since the product was in any way

available outside India. The said decision shows that the knowledge and the

awareness of foreign goods and its trade mark can be even at a place where

the goods are not being marketed and used. The observations in Whirlpool

cannot therefore possibly apply to the facts of the instant case.

23. Turning to the case on hand, the Defendant has been unable to show that

its goods bearing the mark TUFF were at any point of time since 1991 and

prior to 1996 available in the market. There is absolutely no evidence placed

on record by the Defendant to show that it has actually sold its goods using

the mark „TUFF‟ or „TUFF & TUFF‟ even thereafter. For proving prior

user, the Defendant repeatedly referred to the two newspaper advertisements

inserted by it in 1993, the six trade enquiries between 1994 and 1995

emanating from these advertisements. Between 1993 and 1995, there were

seven indents of John and John Traders and one indent of Bolt House. There

is also a letter from John and John Traders asking the Defendant to send

goods from outside. Then we have the grant by the Postal Department of the

telegraphic address „TUFF‟ to the Defendant.

24. In light of the law as explained in the aforementioned decisions as

applied to the facts of the present case, the advertisements issued in the

newspapers can hardly constitute the proof of service on the user of the mark

from those dates. Likewise, the grant of a telegraphic address, or the

soliciting of business, or the receipt of trade enquiries cannot by themselves

satisfy the legal requirement of the defendant having to show that it used the

marks, earlier than the Plaintiff did, in relation to goods.

25. As regards the filing of trade mark applications, the unilateral self-

serving declaration by the Defendant in some of them of user since 1991

cannot constitute evidence of the commencement of use from that date. The

opposition to the Defendant‟s applications has still not been disposed of and

no registration as such has been granted to the Defendant. Therefore, this

does not carry the case of the Defendant any further. In any event the claims

of user made in the applications by the Defendant have been inconsistent. In

the application No. 942787 filed on 27.7.2000, user was claimed since

1.4.1995. In application No. 1301515 filed on 10.8.2004, it was stated

"proposed to be used". In application No. 1302920 filed on 16.8.2004, the

user was claimed since 1.1.1991 and in application No. 1365632 filed on

21.6.2005, the user was claimed since 17.6.2005. These inconsistent

positions taken by the Defendant creates more difficulties for it about the

claim of prior user.

26. Then we have the photocopies of the partnership deeds executed on

20.12.1991. The deeds stipulate that the business of partnership will be

carried out under the name of Goodwill Fasteners. Nothing is shown as to

how the firm adopted the trade mark „TUFF‟ which according to the

Defendant began to be used by it from 1.1.1991 itself, the date on which the

said firm was not in existence. The partnership deeds themselves are

unregistered. The deeds do not mention the impugned trade mark „TUFF‟.

There is no deed of assignment by which the mark has been assigned to the

Defendant M/s Goodwill Enterprises. Therefore, these documents do not

really advance the case of the Defendant about the use of the trade mark

„TUFF‟ even prior to the date on which the Plaintiff claims its user, i.e.

1998.

27. It needs to be noted that in the present appeal, counsel for the Defendant

sought to place on record for the first time certain additional documents. It

was claimed that the Defendant had lost crucial documents in 1998 as one of

the partners who was carrying them in a scooter fell down while riding it. A

copy of the purported police complaint dated 3.3.1998 that had been lodged

in that regard was sought to be produced. The Defendant also sought to

produce copies of income tax returns, sales tax assessments and certain other

documents showing sales made by it. When asked whether the originals of

these additional documents sought to be filed could be produced, the counsel

for the Defendant replied in the negative. Be that as it may, this court

refused to permit the additional documents to be placed on record by the

Defendant for the first time at the appellate stage with no convincing

explanation why they could not be produced earlier. In any event the police

complaint would only show that certain documents were lost in 1998. There

was no explanation why documents pertaining to sales by the Defendants of

goods with the mark TUFF for the years thereafter were not produced.

28. As regards the documents produced by the Plaintiff in the instant case, at

pages 223 to 290, copies of the bills and invoices of the Plaintiff from 1996

to 2006 have been placed. Invoices of the Plaintiff showing sale of „TUFF

Bolts‟ dated 3.10.1996, 20.11.1996, 18.12.1996, 3.3.1997, 18.4.1997 and

11.6.1997 have been placed on record. It clearly shows that the Plaintiff has

been trading in goods with the mark TUFF during this time. The Defendant

however alleges that the word TUFF on some of these invoices is a later

interpolation and therefore these documents are forged. Suffice it to note that

at this stage, that the Plaintiff has made out a prima facie case of use of the

marks on its goods since 1996 whereas the Defendant has not produced any

documentation to show that it has traded in goods bearing the impugned

mark TUFF since 1991 as claimed or in any event on a date prior to the

Plaintiff‟s use of the mark. The question of proof of the invoices produced

by the Plaintiff will have to await the full fledged trial.

29. The decisions cited by the learned counsel for the Defendant are now

discussed. In Kabushiki Kaisha Toshiba (Toshiba Corporation) v. Toshiba

Appliances Co. the advertisements in question were coupled with the fact of

maintenance of service centers in India for the product imported into India.

Therefore, it was not as if the mark was not used in relation to goods which

were available in India. Hardie Trading Ltd. v. Addisons Paint and

Chemicals Limited (supra) was a case of rectification and the question of

prior continuous user under Section 34 of the Act was not in issue. It was

alleged that there had been no use of the mark between 1972 and 1977. It

was, however, shown that the registered proprietor had taken steps during

this period to enter into an agreement with another marketer to keep the

mark alive. The mark of the registered proprietor was also continuously in

use in England and Australia. In those circumstances, it was held that there

was no intention to abandon the registered mark. The question there was not

whether the issuance of an advertisement could itself constitute the use of a

mark. Secondly it is really in the context of rectification proceedings that

the Supreme Court held that there had been no abandoning of the mark

despite goods not being available in India. It did not dispense with the

requirement of proving continuous prior user of the mark. Thirdly, the

requirement of Section 2 (2) (c) of the 1958 Act was also that the goods

must come into existence at some point in time. In the considered view of

this Court, therefore, the judgment in Hardie Trading Ltd. does not help the

case of the Defendant.

30. The decision in Wander Ltd. & Anr. v. Antox India (P) Ltd. also does

not help the Defendant. That was a case of passing off and not infringement.

Consequently, there was no occasion for the Supreme Court to interpret

Section 34 of the TM Act. In any event, in the said case, the Plaintiff had

been manufacturing the goods under an agreement with the Defendant. The

Defendant had been using the trade mark and had got it registered before

entering into an agreement with the Plaintiff. The agreement was rescinded

and thereafter the Plaintiff filed a suit against the Defendant on the basis of

continuous prior user. It was held that the Plaintiff was not entitled to

injunction as the balance of convenience was not in the Plaintiff‟s favour. To

that extent, the said judgment in fact would be in favour of the Plaintiff here,

since the Defendant here has not been able to prove continuous prior user.

31. Milment Oftho Industries v. Allergan Inc. 2004 (28) PTC 585 (SC),

was again a case of trans-border reputation. In para 9 of the said judgment,

it was observed that mere filing of an application for registration of a brand

will not enable one to throttle Indian companies from adopting the use of

their brands. Uniply Industries v. Unicorn Plywood, AIR 2001 SC 2083,

was a case of passing off where Section 34 was not being interpreted. Apart

from advertisements, the trial court had found that the Defendant was using

the trade mark for roller printing/screen printing on the board itself and,

therefore, granted the injunction in favour of the Defendant. The Supreme

Court noted that it was not clear whether the advertisement was followed up

by goods with the mark being marketed and noted that the courts should

have been more cautious in granting an injunction.

32. In view of the documents produced on record as noticed hereinbefore, it

is held that the Defendant has been unable to show at the interlocutory stage

that its use of the impugned marks, which stand registered in the name of the

Plaintiff, is prior to the use of those marks by the Plaintiff. On the other

hand, the Plaintiff has been able to make out a prima facie case for the grant

of an ad interim injunction.

33. On the question of balance of convenience, the Defendant has not shown

that it is trading in goods using the mark „TUFF‟. The grant of an interim

injunction in favour of the Plaintiff is therefore not likely to affect the sales

of the Defendant. On the other hand the refusal of an interim injunction

would adversely affect the Plaintiff. The balance of convenience in granting

interim injunction as prayed for is in favour of the Plaintiff.

34. For all the above reasons, the impugned judgment of the learned single

Judge is set aside. An interim injunction is granted in favour of the Plaintiff

restraining the Defendant, its agents, assigns or representatives from offering

for sale, selling, manufacturing, marketing, advertising or displaying directly

or indirectly the goods using the mark „TUFF‟ or „TUFF LABEL‟ during

the pendency of the suit. I.A. No. 780 of 2007 in CS (OS) No. 121 of 2007

filed under Order 39 Rules 1 and 2 CPC by the Plaintiff is disposed of by

making the aforementioned interim injunction absolute during the pendency

of the suit. Consequently, I.A. No. 2798 of 2007 filed by the Defendant

under Order 39 Rule 4 CPC is hereby dismissed.

35. It is clarified that this order is at the interlocutory stage based on the

pleadings and documents on record. The final decision based on the

evidence that emerges at the trial will be on an independent assessment

uninfluenced by this order.

36. The appeal is accordingly allowed in the above terms with costs of

Rs.30,000/- which will be paid by the Defendant/Respondent to the

Plaintiff/Appellant within a period of three weeks.

S. MURALIDHAR, J.

CHIEF JUSTICE SEPTEMBER 11, 2009 pk