Delhi High Court
Eveready Industries India Ltd. vs Mr. Sanajay Chadha & Anr on 22 December, 2010
Author: V. K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 29.11.2010
Judgment Pronounced on: 22.12.2010
+ IAs 14288/2009 (O.39 R.4 CPC), 9913/2009
(O.39 R.1&2 CPC) in CS(OS) No. 1422/2009
EVEREADY INDUSTRIES INDIA LTD. .....Plaintiff
- versus -
MR. SANAJAY CHADHA & ANR .....Defendant
Advocates who appeared in this case:
For the Plaintiff: Mr. Sandeep Sethi, Sr. Adv. with
Mr. Ajay Bhargava, Mr. Amit
Verma and
Mr. Surinder Singh, Advs.
For the Defendant: Mr. S.K. Bansal and Mr. Pankaj
Kumar, Advs.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
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?
V.K. JAIN, J
1. This is a suit for permanent injunction, grant of
damages and delivery up of infringing material. The plaintiff
CS(OS)NO.1422/2009 Page 1 of 43
was incorporated under the name Ever Ready Company
(India) Ltd. on June 20, 1934 under the Companies Act,
1913. The name of the plaintiff-company was changed from
time to time and was last changed to Eveready Industries
India Limited on April 24, 1995. The plaintiff-company is
engaged mainly in the business of manufacturing and
trading of dry cell batteries, re-chargeable batteries, flash
lights, compact fluorescent lamps, general service lamps,
insect repellants and packet tea. The plaintiff-company has
46% share in dry cell batteries and 80% in flash lights in
the organized sector. The carbon zinc batteries
manufactured by the plaintiff are sold under the mark
EVEREADY since 1905 when its predecessor-in-title
National Carbon Company (India) Limited came into
existence. The plaintiff is the registered owner of the
trademark EVEREADY and EVEREADY (device) and it is
using the aforesaid trademark in respect of cell batteries, re-
chargeable batteries, flash lights, compact fluorescent
lamps, general service lamps, insect repellants and packet
tea. The trademark EVEREADY also forms a prominent and
dominant feature of its corporate name Eveready Industries
(India) Limited. This is also the case of the plaintiff that its
CS(OS)NO.1422/2009 Page 2 of 43
trademarks EVEREADY and EVEREADY (device) have
acquired a unique reputation in the mind of purchasing
public and trade on account of quality of the products
which are sold under the marks. The trademark
EVEREADY is registered in favour of the plaintiff-company
in respect of various classes mentioned in para 10 of the
plaint. The plaintiff claims advertisement expenditure of Rs
3795.29 lacs, 4317.03 lacs and 3858.88 lacs in the years
2005-06, 2006-07, 2007-08 respectively.
2. It is alleged in para 13 of the plaint that in or
about 1st September, 2008, it first came to the knowledge of
the plaintiff that the defendant was using the mark
EVEREADY and EVEREADY (device) in relation to hand
tools, etc. when defendant No.2 opposed the registration of
plaintiff‟s trademark in class 8 vide opposition No. CAL-
723369, claiming to be registered proprietor of registered
trademarks No.439233 and 539621 both in class 8.
Defendant No.1 is the owner of defendant No.2 and claims
assignment of the mark EVEREADY and EVEREADY
(device) from her. The plaintiff has filed rectification
applications before Intellectual Property Appellate Board
(IPAB), Chennai with respect to the trademarks registered in
CS(OS)NO.1422/2009 Page 3 of 43
the name of defendant No.2.
3. The case of the plaintiff is that adoption of the
impugned trademark by defendants is in violation of its
proprietary rights with respect to the trademark EVEREADY
and EVEREADY (device) and the defendants are guilty of
passing off their products as those of the plaintiff. It is
alleged that misrepresentation to the consumers is bound to
cause confusion or deception in their mind and dilute the
distinctive character of plaintiff‟s trademark. It is further
alleged that the defendants have copied all essential and
dominant features of EVEREADY (device) and are using the
same get up, lay out, combination and arrangement of
features, which could not have been co-incidental and is a
deliberate act on their part, to take advantage of the
impeccable quality of the goods of the plaintiff.
4. Vide IA No.9913/2009 the plaintiff has sought
interim injunction against use of the mark EVEREADY as
well as EVEREADY (device) or any other mark/trade style
identical or deceptively similar to the trademark and device
of the plaintiff. They have also sought injunction against
reproduction of any of the essential features, i.e., get up,
writing styles, arrangement of features and size of the art
CS(OS)NO.1422/2009 Page 4 of 43
work of the plaintiff in EVEREADY (device) in any manner
on the packaging, brochures, letterheads, bills, etc. of the
defendants.
5. The suit has been contested and the application
opposed by the defendants. They have taken a preliminary
objection that the plaintiff has suppressed material facts
and played a fraud on the Court. It is alleged that when the
plaintiff applied for registration of the trademark
EVEREADY in class 8, the Registrar of trademarks issued
cross-notice dated 04th April, 2003 to the defendants
informing them of the application filed by the plaintiff for
registration in class 8. The factum of issue of cross-notice
has been suppressed in the plaint in order to obtain ex
parte injunction against the defendants. It is also alleged
that the plaintiff itself excluded screw drivers, cutting pliers,
while seeking registration vide application No.641191,
thereby recognizing the rights of the defendants with respect
to the trademark EVEREADY in respect of screw drivers,
cutting pliers, etc. The plea taken by the defendant,
therefore, is that the plaintiff is guilty also of delay, latches
and acquiescence, as no step was taken by it since the year
2003, despite coming to know of rights of defendants with
CS(OS)NO.1422/2009 Page 5 of 43
respect to the aforesaid trademark in relation to hand tools.
6. On merits, it is alleged by the defendants that the
mark/label EVEREADY was adopted by defendant No.2 in
the year 1985, while carrying business under the name of
M/s Everest Tool Industries. By virtue of assignment dated
06th January, 2009, defendant No.2 assigned her rights in
the aforesaid trademark in favour of defendant No.1 along
with its goodwill and reputation and defendant No.1,
thereby became owner and proprietor of the aforesaid
trademark. It is also claimed that the defendants have
widely advertised the trademark/label used by them and
have spent considerable money for this purpose. It is also
alleged that the products of the defendants are sold at
shops where the product of the plaintiff are not sold and,
therefore, there is no scope of the goods of the defendant
being passing off as the goods of the plaintiff.
7. The salient feature of this case, as they emerge
from the pleadings of the parties and the documents filed by
them, are that (i) defendant No.2 Mrs Kamlesh Chadha was
registered proprietor of the trademark EVEREADY and
EVEREADY (device) in respect of screw drivers and cutting
pliers since the year 1985-86; (ii) the plaintiff-company is
CS(OS)NO.1422/2009 Page 6 of 43
neither the registered proprietor of the trademark
EVEREADY and/or EVEREADY (device) in respect of screw
drivers and cutting pliers nor is it engaged in manufacture
and/or sale of such products; (iii) the defendants are using
the trademark EVEREADY since 1985-86 though there has
been no sale by them in the years 1986-87 to 1990-1991,
1994-95, 1996-97, 1997-98 and 2000-01 to 2004-05.
8. The first question which comes up for
consideration is as to whether the plaintiff has concealed
any material fact and thereby has not come to the Court
with clean hands. In para 13 of the plaint, the plaintiff
specifically alleged that it was in or about 1 st September,
2008, it first came to know that the defendant was using the
mark EVEREADY and EVEREADY (Device) in relation to
handsets, when defendant No.2 opposed its application No.
CAL-723369 for registration of the mark EVEREADY in
class 8.
9. A perusal of the certificate of Registration
No.439233 issued by Trade Mark Registry shows that the
mark EVEREADY was registered in the name of defendant
No.2 Ms Kamlesh Chadha in respect of screw drivers and
cutting pliers w.e.f. 19th June, 1985. It further shows that
CS(OS)NO.1422/2009 Page 7 of 43
Ms Kamlesh Chadha was stated to be trading under the
name and style of Everest Tools Industries, D-58, Bhajan
Pura, Delhi. It further shows that the application of Ms
Kamlesh Chadha was duly advertised before it was
accepted. Certificate of Registration No. 539621, issued by
Trade Mark Registry, shows that the device EVEREADY was
also registered in the name of Ms Kamlesh Chadha w.e.f
08th November, 1990 in respect of hand tools and her
application for this purpose was duly advertised before the
registration was granted. A perusal of the record of Trade
Mark Registry, copy of which has been placed on record by
the defendant, would show that when the plaintiff, through
its attorneys, Mr D.P. Ahuja and Co. applied to the Registrar
of Trademarks for registration of the trademark EVEREADY
in the name of Union Carbide India Ltd., vide application
No.641191, the application was examined by the trademark
registry and vide examination report No.31312 dated 11 th
November, 1999, it was pointed out that the mark
EVEREADY was already registered in the name of Ms.
Kamlesh Chadha, D-58, Bhajanpura, Delhi with respect to
screw drivers and cutting pliers in Class 8 vide registration
No.439833 and in respect of hand tools vide registration
CS(OS)NO.1422/2009 Page 8 of 43
No.539621. A copy of the examination report dated 11th
November, 1999 was forwarded to Mr. D.P. Ahuja and Co.,
Patent and Trademark Attorneys which the plaintiff had
appointed for submitting trademark application 641191 for
registration of the mark EVEREADY in Class 8, as is evident
from the letter sent by Mr. D.P. Ahuja and Co. to the
Registrar of Trademarks on 25 th March, 2000. It was stated
in the letter that the applicant (the plaintiff, which at that
time was known as Union Carbide India Ltd.) agreed to
amend the goods in respect of which registration was
sought by it by excluding screw driver and cutting pliers.
10. This is not the case of the plaintiff that Mr. D.P.
Ahuja & Co. had not been authorized by it to submit
application No.641191. The defendants have placed on
record, a copy of the general power of authority given by the
plaintiff to Mr. D.P. Ahuja & Co. in this regard. The
defendants have also placed on record a copy of the
application whereby Union Carbide India Ltd had sought
registration of the trademark EVEREADY and EVEREADY
(device) under Class 8, on 26th September, 1994. Therefore,
it can hardly be disputed that by 25th March, 2000, the
plaintiff company, through Mr. D.P. Ahuja & Co., Patent
CS(OS)NO.1422/2009 Page 9 of 43
and Trademark Attorneys was aware of registration of the
trademark EVEREADY in the name of Ms. Kamlesh Chadha
in respect of screw driver and cutting pliers. The plaintiff,
therefore, ought to have disclosed to this Court, while filing
this suit, that by 25th March, 2000 they had come to know
that the trademark EVEREADY had been registered in the
name of Ms. Kamlesh Chadha with respect to screw driver
and cutting pliers. Instead of disclosing this information,
the plaintiff chose to make a false statement in the plaint by
claiming that it had come to know for the first time on or
about 1st September, 2008 that the defendant was using the
mark EVEREADY and EVEREADY (device) in relation to
hand tools etc. when defendant No.2 opposed registration of
their trademark in Class 8 vide opposition No. CAL-723369
claiming to be registered proprietor of the registered
trademark No.439233 and 539621. It was contended by
learned counsel for the plaintiff that mere knowledge of
registration of the aforesaid trademark in the name of Ms.
Kamlesh Chadha in Class 8 does not imply that the plaintiff
was also aware of the use of the aforesaid mark by her and,
therefore, it was not necessary for the plaintiff to disclose
this fact in the plaint. I, however, find no merit in this
CS(OS)NO.1422/2009 Page 10 of 43
contention. Once a person obtains registration of a
trademark with respect to some goods, the presumption is
that he would use that trademark, if not from the date on
which the registration is sought, at least soon after
obtaining the registration in his favour. Once the plaintiff
had come to know of registration of the trademark
EVEREADY in the name of Ms. Kamlesh Chadha and her
address also was available to him having been given on the
examination report prepared by the Trademark Registry, it
ought to have made enquiry and made survey, in case it
wanted to confirm the user of the trademark by Ms.
Kamlesh Chadha, to ascertain whether the mark was
actually being used by her or not. This is not the case of
the plaintiff that it had made enquiry on coming to know of
registration of the mark EVEREADY in the name of Ms.
Kamlesh Chadha and had come to know that mark was not
used by her for manufacturing and/or selling the products
for which the registration was obtained by her. Had the
plaintiff undertaken such enquiry/survey, it would have
come to know that this mark was actually being used by
Ms. Kamlesh Chadha since the sale of the defendants is
statd to be Rs.6,94,610/- in the year 1999-2000.
CS(OS)NO.1422/2009 Page 11 of 43
In Shri Gopal Engg. & Chemical Works v. M/s
POMX Laboratory, AIR 1992 Delhi 302, there was
unexplained delay of 14 months in seeking injunction. The
explanation given by the plaintiff for the delay was that it
could not lay hands on the impugned goods of the
defendant bearing the impugned trademark despite best
efforts. It was also claimed that the defendant had stopped
using the impugned trademark. The explanation was,
however, rejected by this Court noticing that no details of
the efforts made by the plaintiff had been given. This Court
was, therefore, of the view that delay in bringing
proceedings by itself was sufficient to deny interim relief to
the plaintiff.
11. It, therefore, appears to me that the plaintiff
company was aware latest by March, 2000 that Ms.
Kamlesh Chadha was using the trademark EVEREADY with
respect to screw drivers and cutting pliers. The plaintiff
has, therefore, made a false statement when it claimed in
para 13 of the plaint that it was on or about 1 st September,
2008 that it first came to know of the defendants using the
mark EVEREADY, EVEREADY (device) in relation to hand
tools. The relief of injunction being a discretionary
CS(OS)NO.1422/2009 Page 12 of 43
equitable relief, the person invoking this equitable
jurisdiction of the Court must come to the Court with clean
hands and disclose all material facts and information which
he has in his possession with respect to subject matter of
the suit being filed by him. If a party does not come to the
Court with clean hands and withholds material information
having bearing on the merit of the case, the Court would be
justified in refusing to lend a helping hand to such a person
and would also be justified in withdrawing the interim relief,
if already, granted by it to such a person.
12. In S.P. Chengalvaraya Naidu (dead) by LRs. V.
Jagannath (dead) by LRs & Ors., AIR 1994 SC 853, the
Supreme Court observed that a person coming to the Court
must come with clean hands and the one whose case is
based on falsehood has no right to approach the Court.
In Udai Chand v. Shankar Lal and Ors., AIR
1978 SC 765, the Supreme Court was of the view that the
Court would be justified in revoking the leave to appeal if
the same was obtained by making mis-statement of a
material fact which was of decisive importance in the case.
It was further held that a party who approaches the Court
invoking the exercise of its overriding discretions must come
CS(OS)NO.1422/2009 Page 13 of 43
with clean hands and if it appears on his part any attempt
to over reach or mislead the Court by false or untrue
statements or by withholding true information which would
have a bearing on the question of exercise of discretion, the
Court would be justified in refusing to exercise the
discretion or, if the discretion has been exercised, in
revoking the leave to appeal granted even at the time of
hearing of the appeal.
In M/s Gujarat Bottling Co. Ltd. and others v.
Coca Cola Company and others, 1995 SC 2372, the
Supreme Court, inter-alia, observed as under:-
"50.....Under Order 39 of the Code of Civil
procedure, jurisdiction of the Court to
interfere with an order of interlocutory or
temporary injunction is purely equitable
and, therefore, the Court, on being
approached, will, apart from other
considerations, also look to the conduct
of the party invoking the jurisdiction of
the Court, and may refuse to interfere
unless his conduct was free from blame.
Since the relief is wholly equitable in
nature, the party invoking the
jurisdiction of the Court has to show that
he himself was not at fault and that he
himself was not responsible for bringing
about the state of things complained of
and that he was not unfair or inequitable
in his dealings with the party against
whom he was seeking relief. His conduct
should be fair and honest. These
considerations will arise not only in
CS(OS)NO.1422/2009 Page 14 of 43
respect of the person who seeks an order
of injunction under Order 39 Rule 1 or
Rule 2 of the Code of Civil Procedure, but
also in respect of the party approaching
the Court for vacating the ad interim or
temporary injunction order already
granted in the pending suit or
proceedings."
13. A perusal of the letter dated 25th March, 2000
written by Mr. D.P. Ahuja & Co. to the Registrar of
Trademarks would show that on receipt of official
examination report No. 31312 dated 11th November, 1999
with respect to registration of the trademark EVEREADY in
the name of Ms. Kamlesh Chadha vide registration Nos.
439233 and 53962, the plaintiff company agreed to amend
its application so as to delete screw driver and cutting pliers
included in Class 8. Since the plaintiff was seeking
registration of the trademark EVEREADY in Class 8, it
ought to have, immediately on coming to know of
registration in the name of Ms. Kamlesh Chadha, issued a
notice to her asking her to stop using the aforesaid
trademark applied for cancellation of the registration
granted to her and should also have come to the Court
seeking injunction against use of the trademark EVEREADY
and EVEREADY (device) by her.
CS(OS)NO.1422/2009 Page 15 of 43
14. It was contended by senior counsel for the plaintiff
that while seeking registration under Class 8, the plaintiff
could not have obtained cancellation of the registration
already granted in the name of Ms. Kamlesh Chadha and,
therefore, nothing really turns on the decision of the
plaintiff company to exclude the products in respect of
which the trademark was registered in the name of Ms.
Kamlesh Chadha, from the application made by it for
registration under Class 8. The argument, to my view, does
not advance the case of the plaintiff in any manner. What is
important is that despite coming to know of registration of
the trademark EVEREADY in favour of Ms. Kamlesh
Chadha, the plaintiff neither sought cancellation of that
registration nor did it approach Civil Court seeking
injunction against use of that trademark by her. It also
failed to issue a cease and desist notice to him, which
indicates acquiescence or at least make out a case of
estoppels, against the plaintiff. It appears to me that the
plaintiff-company thought that since it was not delaying in
these hand tools, it need not bother about use of the trade
mark EVEREADY by defendant No.2, who was its registered
proprietor in respect of specified hand tools.
CS(OS)NO.1422/2009 Page 16 of 43
15. The information about registration of the
trademark EVEREADY in the name of Ms. Kamlesh Chadha
came to the knowledge of plaintiff company by March, 2000.
This suit, however, has been filed on 3rd August, 2009
though the affidavit in support of the plaint has been sworn
on 23rd May, 2009. The defendants claim sale of
Rs.8,48,700/-, Rs.13,14,819/- and Rs.31,58,181/- in the
years 2006-07, 2007-08 and 2008-09 respectively as
against sale of Rs.3,56,988/- in the year 2005-06, under
the trademark EVEREADY and EVEREADY (device). By not
seeking cancellation of registration in favour of Ms. Kamlesh
Chadha and not coming to Civil Court seeking injunction
against use of the trademarks EVEREADY and EVEREADY
(device) by her, the plaintiff allowed here to build and
promote her brand and increase her sale manifold between
2005-06 to 2008-09. Had the plaintiff objected to use of the
trademarks EVEREADY and EVEREADY (device) by Ms.
Kamlesh Chadha, in the year 1999-2000 when it first came
to know of the registration in her favour, she might possibly
have adopted another trademark and might not have made
any expenditure on building and promoting trademark
EVEREADY with respect to the goods in which the
CS(OS)NO.1422/2009 Page 17 of 43
defendants are dealing. The defendants could in the period
of about 9 years have not only adopted a new trademark but
could also have achieved considerable sale using that mark.
If the use of the trademark EVEREADY by the defendants is
stopped now, that would result in the defendants having to
adopt a new trademark for selling their products and they
would need considerable time and have to incur
consideration expenditure in promoting the new trademark
which they may have to adopt. Total inaction on the part of
the plaintiff for more than 9 years amounts to not only
latches but also condoning the use of the trademark
EVEREADY by the defendants and acquiescing in the use of
said trademark by them in respect of screw drivers and
cutting pliers.
16. Another consideration which weighs with the Court
in declining interim relief to the plaintiffs in respect of pliers
and screw drivers in the facts and circumstances of this
case, is that the defendants are manufacturing and selling
these products using the trademark EVEREADY since 1985-
86, whereas the plaintiff neither manufactures nor deals in
these products, they are sold through different trade
channels and the persons buying the products of the
CS(OS)NO.1422/2009 Page 18 of 43
defendants are altogether different from the persons buying
the products of the plaintiff. There is no reasonable
possibility of a customer looking for hard tools buying the
products of the defendants on the assumption that they are
manufactured by the plaintiff. As a necessary corollary to
this, there is no reasonable possibility of the image of the
plaintiff company getting adversely affected, in case the
hand tools manufactured and sold by the defendants are
not found to be of a superior quality. The mark EVEREADY
is identified with the plaintiff company for the products
manufactured and/or sold by it. But, it cannot be said that
the mark is so closely identified with the plaintiff company
so as to become synonymous with it and any product sold
under this brand will be assumed to be a product of the
plaintiff-company even if it has never dealt in such
products.
17. In Canon Kabushiki Kaisha v. B. Mahajan &
Ors., 2007 (35) PTC 265 (Del.), this Court was of the view
that in a passing of action, similarity in the kind of goods
and line of trade is an important consideration and what
has to be assessed is whether there is likelihood of
confusion. It was further observed that if there is
CS(OS)NO.1422/2009 Page 19 of 43
dissimilarity in the kind of goods/services, the possibility of
confusion or deception would normally be less.
In Mahendra and Mahendra Paper Mills Ltd. v.
Mahendra and Mahendra Ltd., 2002 (24) PTC 121 (SC),
the Supreme Court, inter-alia, observed as under:-
"The court also, in restraining a
defendant from exercising what he
considers his legal right but what the
plaintiff would like to be prevented, puts
into the scales, as a relevant
consideration whether the defendant has
yet to commence his enterprise or
whether he has already been doing so in
which latter case considerations
somewhat different from those that apply
to a case where the defendant is yet to
commence his enterprise, are attracted."
In The Fairdeal Corporation (Pvt.) Ltd. v. Vijay
Pharmaceuticals, (1985-PTC-80), the stand taken by the
plaintiff before this Court was that he had come to know
about the offending activities of the defendants on purchase
of the product with offending mark in Delhi on 25 th
September, 1984. The defendant, however, placed on
record a copy of the notice dated 14th July, 1982 sent by the
advocate of the plaintiff to the defendant referring therein to
an earlier notice of February 12, 1981 sent by him on behalf
of the plaintiff. The defendant had replied to the notice on
CS(OS)NO.1422/2009 Page 20 of 43
4th September, 1982. It was noticed by this Court that from
the reply sent by the defendant, the plaintiff was aware
since 1981 that the defendant was selling its produced
under the impugned name. This Court was of the view that
despite being aware of the use of the offending mark, the
plaintiff had kept quite all these years and by his conduct
he had led the defendant to believe that defendant could
market its product. The Court, therefore, was of the view
that the balance of convenience was in favour of the
defendant, who had continuously been selling its product.
It was further observed that the conduct of the plaintiff also
came into question for making false averments in the plaint
as well as in the application. The application of the plaintiff
for grant of injunction was dismissed and the interim order
granted to him was vacated by this Court.
In Vikas Makhija v. The Bengal Phenyle &
Allied Products (P) Ltd., 2001 PTC 612 (Del), it was
noticed that the defendant‟s use of the trademark in
question was within the knowledge of predecessor in
interest of the plaintiff, which was the original owner of the
trademark and had assigned it to the plaintiff. It was also
noticed that both, the defendant as well as the predecessor
CS(OS)NO.1422/2009 Page 21 of 43
in interest of the plaintiff had been making government
supplies and names of both the firms were included in the
yearly rate contract arrangement for supply of the product.
This Court was of the view that prima-facie it was a case of
acquiescence by the plaintiff and or his predecessor in
interest to the use of the same trademark by the defendant
and, therefore, in view of the provisions contained in Section
30(1)(b) of the Trademarks Act, prima facie use of the
trademark by the defendant would not constitute
infringement.
In Warner Bros. Entertainment Inc. & Anr. v.
Harinder Kohli & Ors., 2008 (38) PTC 185 (Del.), this
Court observed that if the plaintiffs stood by knowingly and
let the defendants build up their business or venture, then
they would be estopped by their acquiescence from claiming
equitable relief. It was further observed that acquiescence
on the part of the plaintiffs would amount to waiver, if not
abandonment of their right. The Court was of the view that
if, according to the plaintiffs, the defendants had
dishonestly adopted a title or mark akin to that of plaintiffs,
it was imperative upon them to have nipped the evil in the
bud by forwarding to the defendants a legal notice of CEASE
CS(OS)NO.1422/2009 Page 22 of 43
AND DESIST. This Court further observed that deliberate
suppression of material facts, so far as the grant of
equitable relief of injunction is concerned, is fatal.
In Wander Ltd. and Another v. Antox India (P)
Ltd., (1991-PTC-1), the Supreme Court, inter-alia, observed
as under:-
"9..... The object of the interlocutory
injunction, it is stated is to protect the
plaintiff against injury by violation of his
rights for which he could not adequately
be compensated in damages recoverable
in the action if the uncertainty were
resolved in his favour at the trial. The
need for such protection must be weighed
against the corresponding need of the
defendant to be protected against injury
resulting from his having been prevented
from exercising his legal rights for which
he could not be adequately compensated.
The court must weigh one need against
another and determine where the
"balance of convenience lies". The
interlocutory remedy is intended to
preserve in status quo, the rights of
parties which may appear on a prima
facie. The court also, in restraining a
defendant from exercising what he
considers his legal right but what the
plaintiff would like to be prevented, puts
into the scales, as a relevant
consideration whether the defendant has
yet to commence his enterprise or
whether he has already been doing so in
which latter case considerations
somewhat different from those that apply
to case where the defendant is yet to
commence his enterprise, are attracted."
CS(OS)NO.1422/2009 Page 23 of 43
18. The learned counsel for the plaintiff, in his written
submissions, has referred to the following decisions:
Hindustan Pencils (P) Limited vs. India Stationery
Products Co.& Another, AIR 1990 Delhi 19, Ansul
Industries vs. Shiva Tobacco Company, 2007(34) PTC,
392 (Del), Beiersdoft A.G. vs. Ajay Sukhwani & Anr
2009(38) PTC 109 (Del.), DCM Shriram Consolidated
Limited vs. Shri Laxmi Trade & Anr. 2009 (41) PTC 772
(Del), Rhizome Distilleries P. Ltd. vs. Pernod Ricard S.A.
166(2010) DLT 12, Midas Hygiene Industries P. Ltd. vs.
Sudhir Bhatia & Ors 2004 (28) PTC 121 (SC), Power
Control Applicances vs. Sumeet Machines Pvt. Ltd.
(1994) 2 SCC 448, Honda Motors Co. Ltd. vs. Mr
Charanjit Singh & Ors 101(2002) DLT 359, Mahendra &
Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd.
(2002) 2 SCC 147, Ciba-Geigy Ltd. vs. Surinder Singh AIR
1999 Delhi 49, Century Traders vs. Roshal Lal Duggar &
Co. 15 DLT (1979) 269 .
19. In the case of Hindustan Pencils (supra), the
plaintiff were the registered proprietors of the trademark
„Nataraj‟ with device of „Nataraj‟ in respect of a number of
CS(OS)NO.1422/2009 Page 24 of 43
stationery products, including pins and clips. The defendant
in that case had obtained copyright in a label similar to the
label of the plaintiff in respect of the pins. The case of the
plaintiffs was that they had come to know about copyright
registration granted to the defendants only in the middle of
the year 1995, whereas the case of the defendants was that
the plaintiffs were aware of the use of the trademark
„Nataraj‟ by them sine the year 1982 when the
advertisement of the plaintiffs and defendants appeared in
the magazine. It was contended by the defendants that there
was six years delay on the part of the plaintiffs in filing the
suit and, therefore, they were not entitled to injunction. This
Court in para 31 of the judgment, inter alia, observed as
under:
"If a party, for no apparent or a valid
reason, adopts, with or without
modifications, a mark belonging to
another, whether registered or not, it will
be difficult for that party to avoid an
order of injunction because the Court
may rightly assume that such adoption of
the mark by the party was not an honest
one. The Court would be justified in
concluding that the defendant, in such
an action, wanted to cash in on the
plaintiff's name and reputation and that
was the sole, primary or the real motive
of the defendant adopting such a mark.
CS(OS)NO.1422/2009 Page 25 of 43
Even if. in such a case, there may be an
inordinate delay on the part of the
plaintiff in bringing a suit for injunction,
the application of the plaintiff for an
interim injunction cannot be dismissed
on the ground that the defendant has
been using the mark for a number of
years."
However, in para 33 of the judgment, this Court
expressed the following view:
"As already noted, acquiescence may
mean an encouragement by the plaintiff
to the defendant to use the infringing
mark. It is as if the plaintiff wants the
defendant to be under the belief that the
plaintiff does not regard- the action of the
defendant as being vocative of the
plaintiff's rights. Furthermore, there
should be a tacit or an express assent by
the plaintiff to the defendant's using the
mark and in a way encouraging the
defendants to continue with the business.
In such a case the infringer acts upon an
honest mistaken belief that he is not
infringing the trade mark of the plaintiff
and if, after a period of time when the
infringer has established the business
reputation, the plaintiff turns around and
brings an action for injunction the
defendant would be entitled to raise the
defense of acquiescence. Acquiescence
may be a good defense even to the grant
of a permanent injunction because the
defendant may legitimately contend that
the encouragement of the plaintiff to the
defendant's use of the mark in effect
amounted to the abandonment by the
plaintiff of his right in favor of the
defendant and, over a period of time, the
general public has accepted the goods of
CS(OS)NO.1422/2009 Page 26 of 43
the defendant resulting in increase of its
sale. It may, however, be stated that it
will be for the defendant in such cases to
prove acquiescence by the plaintiff.
Acquiescence cannot be inferred merely
by reason of the fact that the plaintiff has
not taken any action against the
infringement of its rights."
This Court was of the view that an effort was being
made by the defendants to mislead the general public to buy
the pins and dips manufactured by them assuming that the
same were manufactured by the plaintiffs. It was also
noticed that the plaintiffs had in the year 1985 filed an
application for cancellation of the registration of the
copyright of the defendant. The facts of this case are
altogether different. The products being sold by the plaintiff
using the trademark EVEREADY and EVEREADY (device)
are altogether different from the products being
manufacture and sold by the defendants using that very
name. The defendants are manufacturing and selling only a
few hand tools viz. screwdrivers and pliers. The trade
channels for the goods of the defendants are altogether
different from the trade channels for the goods of the
plaintiff, which is selling torch, dry cell batteries, etc. The
torch and dry cell batteries, etc. are sold by general
CS(OS)NO.1422/2009 Page 27 of 43
merchants, whereas hand tools are sold at hardware shops.
There is hardly any reasonable possibility of anyone
purchasing hand tools under the trademark EVEREADY in
the belief that they were manufactured by the plaintiff-
company and were a product from its stable. Moreover, the
defendants before this Court are the registered proprietors
of the trademark EVEREADY in respect of the specified
hand tools, whereas the defendant in the case of Hindustan
Pencils (supra) was holding only copyright in respect of a
label.
20. In the case of Ansul Industries (supra), the
appellant M/s Ansul Industries as well as the respondent
M/s Shiva Tobacco were manufacturing and selling the
same product, i.e., chewing tobacco, the appellant under
the name „Udta Panchhi‟ and the respondent under the
name „Panchhi Chhap‟. The respondent was also the
registered user of the brand name „Punchhi Chhap‟ under
the Trade and Merchandise Marks Act, whereas there was
no registration of the trademark „Udta Panchhi‟ in favour of
the appellant. In para 44 of the judgment, this Court
referred to certain principles of law in the matter of granting
interim injunction in such matters and principle (vi) referred
therein read as under:-
"Where initial adoption by the defendant
itself is vitiated by fraud and/or is
dishonest, delay is not a valid ground to
allow misuse. If user is at the inception is
tainted by fraud and dishonesty,
continuous use does not bestow legality."
21. In the case of Beiersdoft A.G.(supra), this Court,
inter alia, observed as under:
"In the present case it has been held that
the initial adoption by the defendants
was dishonest. When there is dishonesty
or fraud in the initial adoption of a trade
name, plea of laches and delay normally
is rejected. If the initial adoption itself is
malafide and tainted, it does not become
valid and legal with passage of time. The
defendants were also always conscious of
their wrong and had continued to use the
mark NIVEA on their own peril and risk.
In these circumstances, plea of delay,
laches and acquiescence cannot be
accepted to reject claim for injunction."
22. However, in the case before this Court, not only
there is continuous user of the trademark EVEREADY by
the defendants, except during 1986-87 to 1990-1991, 1994-
95, 1996-97, 1997-98 and 2000-01 to 2004-05. They are
also its registered proprietors, which was not the position in
the case of Ansul Industries (supra). More importantly, the
plaintiffs before this Court have made a false representation
to the Court with respect to the date when they came to
know about user of the trademark EVEREADY by the
defendants and, therefore, are disentitled to injunction on
this ground alone.
23. In the case of Hamdard (supra), the plaintiffs were
the proprietors of the well-known trademark „Hamdard‟ and
were holding 37 registration in relation to diverse goods and
products, including food products such as soft drinks,
concentrate and recipes like Rooh Afza, etc. The defendant
was found using the word mark „Hamdard‟ in relation to
processing and marketing rights. The case of the
defendants was that they were using the mark „Hamdard‟
since 1989 and the plaintiffs, who were aware of this, had
issued a cease and desist notice to them, but had chosen
not to take any action. It was noticed by this Court that the
product of the defendant was also sold in grossery stores or
small departmental and utility stores, where the product of
the plaintiff was sold. The defendant in the case of
„Hamdard‟ was not holding a registered trademark, whereas
the defendants before this Court are registered proprietors
of the trademark EVEREADY with respect to the specified
hand tools. Moreover, the products of the defendants are
not sold at the same shops/stores where the products of the
plaintiff are sold. These are two important distinguishing
features between „Hamdard‟ and this case. Moreover as
noted earlier, the plaintiff having not come to this Court
with clean hands and having misrepresented with respect to
the date on which it came to know about the use of the
trademark EVEREADY by the defendant is not entitled to
the discretionary relief of injunction from this Court.
24. In the case of DCM Shriram Consolidated
Limited (supra), the case of the defendants was that the
plaintiff had not pleaded that the cease and desist notice
has been issued by it more than two years before filing of
the suit. It was also pointed out that the cause of action
given in the plaint was silent about the date on which the
cause of action arose. This Court was of the view that since
both the defendants had claimed registration in their favour
and one of them was also claiming copyright, the
defendants in terms of the decision of the Supreme Court in
Kaviraj Pandit Durga Dutt Sharam v. Navaratna
Pharmaceutical Laboratories AIR 1965 SC 980, could
expect to escape liability only if they could show that the
added matter was sufficient to distinguish their product
from that of the Plaintiff. It was also noticed that the only
added feature in the marks adopted by the defendants was
the prefix "Aggarwal" or "Laxmi which could hardly be said
to distinguish the products of the defendants from that of
the plaintiff. It was also noted that the defendants had
adopted not only the essential and identical features of the
plaintiff‟s trademark SHRIRAM, but had also imitated the
logo, the device and the colour combination which were very
similar to the logo and device used by the Plaintiff. It was
also noticed that the line of trade of the plaintiff and the
defendants was the same, i.e., the products used in the
building construction industry and the market for their
respective products was, therefore, the same. It was
observed that the plastic bags containing the defendant‟s
products when stacked side by side with the plaintiffs bags
in any shop selling such products would make them
indistinguishable and even if they are not stacked side by
side a purchaser of PoP on viewing the bags of the
defendants products in any shop selling these items, is
likely to be deceived into thinking that the defendants
products were that of the plaintiffs. However, in the case
before this Court, the products are altogether different and
so are the sellers and buyers of these products. As regards
the plea of suppression of material facts by the plaintiff by
not disclosing issuance of cease and desist notice, it was
noticed by this Court that neither of the defendants had
thought it fit to reply to the said notice and, therefore,
defendants could not take advantage of the fact that the
plaintiff was aware of the infringement since 2007 when the
notice was issued. However, in the case before this Court,
the plaintiffs have not only failed to disclose that they had
modified their application for registration under Class 8,
they have made a false statement as regards the date on
which they came to know of user of the trademark
EVEREADY by the defendant. In para 29 of the plaint, it is
alleged that the cause of action for the present suit arose on
1st September, 2008 when the plaintiff first time came to
know about the trade activity of the plaintiff. This, to my
mind, is incorrect since the plaintiff had come to know of
registration of the trademark EVEREADY in favour of
defendant No.2 way back in March, 2000 on receipt of the
Examination Report from the Trademark Registry and had
the plaintiff made efforts in this regard, it would have come
to know that the defendant had been actually using that
trademark for selling certain hand tools. It is not open to the
plaintiff not to make any effort to find out actual user of the
trademark by defendant No.2 even on coming to know of
registration in her favour and then say that it was not aware
of the use of the trademark.
25. In the case of Rhizome Distilleries P. Ltd.(supra),
this Court had declined injunction to the plaintiffs finding
no similarity between the trade dress of the parties and
noticing significant variance in the price of the brands of the
plaintiff and the brands of the defendant. However, during
the course of the judgment, it was observed by this Court
that Section 124(5) of Trade Marks Act, 1999 preserved the
power of the Court to make any order, including granting an
injunction during the period the suit is stayed by it. This
judgment, to my mind, is of no help to the plaintiff since
there is no quarrel with the express provision of law in this
regard. But, the facts and circumstances of this case, as
discussed earlier, disentitle the plaintiff to grant of interim
injunction.
26. In the case of Midas Hygiene Industries P. Ltd.
(supra), the plaintiff was holding copyright in the packaging
containing the words LAXMAN REKHA. The defendant in
that case was found using the name MAGIC LAXMAN
REKHA and it was claimed by the defendant that the name
MAGIC LAXMAN REKHA was being used by it since 1992.
During the course of the judgment, it was felt by the
Supreme Court that in cases of infringement either of
trademark or of copyright, normally an injunction must
follow and mere delay in bringing action is not sufficient to
defeat grant of injunction in such cases. It was further
observed that the grant of injunction also becomes
necessary if, prima facie, it appears that the adoption of the
mark was dishonest. This judgment does not help the
plaintiff since delay is not the only ground on which the
defendant is opposing grant of injunction to the plaintiff.
Not only there is suppression of material facts, but also
there is a mis-statement as regards the date when the
plaintiff first came to know about the user of the trademark
EVEREADY by the defendant. Moreover, the products for
which the defendants are using the mark under the name
EVEREADY are altogether different from the products being
manufactured and sold by the plaintiff under that mark and
both the parties are holding registration with respect to the
same mark though in different classes.
27. In the case of Power Control Appliances (supra),
Supreme Court, inter alia, observed as under:
"Acquiescence is sitting by, when another
is invading the rights and spending
money on it. It is a course of conduct
inconsistent with the claim for exclusive
rights in a trade mark, trade name etc. It
implies positive acts; not merely silence
or inaction such as is involved in laches.
In Harcourt v. White10 Sr. John Romilly
said: "It is important to distinguish mere
negligence and acquiescence." Therefore,
acquiescence is one facet of delay. If the
plaintiff stood by knowingly and let the
defendants build up an important trade
until it had become necessary to crush it,
then the plaintiffs would be stopped by
their acquiescence. If the acquiescence in
the infringement amounts to consent, it
will be a complete defence as was laid
down in Mouson (J. G.) & Co. v. Boehm".
The acquiescence must be such as to
lead to the inference of a licence sufficient
to create a new right in the defendant as
was laid down in Rodgers v. Nowill12.
"Delay simpliciter may be no defence to a
suit for infringement of a trade mark, but
the decisions to which I have referred to
clearly indicate that where a trader allows
a rival trader to expend money over a
considerable period in the building up of
a business with the aid of a mark similar
to his own he will not be allowed to stop
his rival's business. If he were permitted
to do so great loss would be caused not
only to the rival trader but to those who
depend on his business for their
livelihood. A village may develop into a
large town as the result of the building
up of a business and most of the
inhabitants may be dependent on the
business. No hard and fast rule can be
laid down for deciding when a person
has, as the result of inaction, lost the
right of stopping another using his mark.
As pointed out in Rowland v. Michell15
each case must depend on its own
circumstances, but obviously a person
cannot be allowed to stand by indefinitely
without suffering the consequence."
In the case before this Court, not only did the
plaintiff modify its application, seeking registration under
class 8, it failed to apply for cancellation of the registration
granted to Mrs Kamlesh Chadha with respect to certain
hand tools and to come to the Civil Court for grant of
injunction against use of trademark EVEREADY by the
defendants. Moreover, the Supreme Court itself has
referred to the possibility of the right to stop another from
using the trademark being lost, in a case of inordinate delay
in initiating action against infringer. The plaintiff did not
take the trouble of even issuing a cease and desist notice to
Mrs Kamlesh Chadha so as to persuade her to stop using
the aforesaid mark in relation to goods being manufactured
and sold by her. This judgment, therefore, does not help the
plaintiff.
28. The judgments of this Court in the case of Honda
Motors Co. Ltd., Mahendra & Mahendra Paper Mills Ltd.,
Ciba-Geigy Ltd., Century Traders vs. Roshal Lal Duggar
& Co. 15 DLT (1979) 269, which otherwise do not apply to
the facts of this case, can given no help to the plaintiff
considering its conduct in modifying its application for
registration in Class 8, coupled with its failure to issue any
cease and desist notice to the defendant, seek cancellation
of the registration granted in their favor and coming to the
court for grant of injunction against use of the trademark
EVEREADY by them, coupled with a false statement with
respect to the date on which it came to know about user of
the trademark EVEREADY by the defendants.
29. It would be pertinent to note here that not only has
the trademark EVEREADY been registered in favour of the
defendants, its user by them is also prima facie established
from the documents produced by them, showing user since
1985-86. It is true that there is no evidence of any sale
having been made during the years 2000-01 to 2004-05.
That, however, would be of no consequence when the
defendants have been able to show that they have made
sales during 1985-1986, 1991-92 to 1995-96, 1998-99,
1999-2000 and from 2005-06 to 2008-09 and their sale
increased substantially during the year 2006-08, 2007-08
and 2008-09. Therefore, the judgment of this Court in the
case of Century Traders (supra) holding therein that mere
registration did not prove user by the persons in whose
name the mark was registered unless evidence has been led
or was available of user of the registered trademarks does
not apply to the facts of this case.
30. It was also contended by the learned counsel for
the plaintiff that defendant Sanjay Chadha is not the
proprietor of the trademark EVEREADY since Assignment
Deed, signed in the year 2009, claiming retrospectivity since
the year 2005 is not valid in the eyes of law, no business
was carried out by the defendants during 2000-01, 2004-05
and sales tax registration has already been surrendered by
defendant No.2 Kamlesh Chadha who is the registered
proprietor of the mark EVEREADY in respect of certain
hand tools. I, however, find no merit in the contention. Vide
Assignment Deed dated 06th January, 2009, the mark
EVEREADY as well as EVEREADY (device) Registration No.
439233 and 539621 were assigned by defendant No.2 Smt.
Kamlesh Chadha to her son Sanjay Chadha. The plaintiff
submitted Form TM-23 and deposited the requisite fee of Rs
6000/- with Registrar of Trade Marks on 06 th January,
2009. Even if the assignment operates from 06 th January,
2009 when the Assignment Deed was executed, it can
hardly be disputed that the rights in the trademark
EVEREADY in respect of screw drivers and pliers now vest
in him. He has already applied for registration of the
assignment in his favor and has, therefore, done whatever
he could have to get the assignment registered in his name.
If there is delay on the part of the Trademark Registry in
registering the assignment, that does not affect his right to
use the trademark, assigned to him. Under Section 45(1) of
the Trade Marks Act, the defendant No.1 was required to
apply in prescribed manner to the Registrar to register his
title with respect to the trademark EVEREADY assigned to
him by defendant No.2. Section 45(2) provides that except
for the purpose of an application before the Registrar under
sub-section (1) or an appeal from an order thereon or an
application under Section 57 or an appeal from an order
thereon, a document in respect of which no entry has been
made in the register in accordance with sub-section (1) shall
not be admitted in evidence in proof of the title to the
trademark by assignment or transmission unless the
Registrar or Appellate Board or the Court, as the case may
be, otherwise directs. Since defendant No.1 has fully
complied with the requirement of sub-section (1) of Section
45 and the delay in registration of assignment in favour of
defendant No.1 is on the part of the Registrar, there is no
reason for not admitting the Assignment Deed in evidence.
31. In Astrazeneca UK Ltd. v. Orchid Chemicals
and Pharma, 2006 (32) PTC 733 (Del.), the Court found
that the application of plaintiff No.1 for registration of
trademark was still pending with the Registrar of
Trademarks. The registration was sought on the basis of
assignment in favour of plaintiff No.1. This Court was of the
view that during the interregnum, the rights emanating
from the assignment cannot be denied to the plaintiffs on
account of non-registration by the Trademark registry since
rights in the trademark came to the plaintiff on the basis of
assignment deed and not from registration/recording of
name in his favour.
In CICO Technologies Ltd. and Anr. v. Tapcrete
Marketing (P) Ltd., 2008(38) PTC 621 (Del.) and Sun
Pharmaceuticals Industries Ltd. v. Cipla Ltd., 2009 (39)
PTC 347 (Del), this Court observed that it would play havoc
with the assignment and trading of trademarks, expressly
permitted by the Act, if the assignor, who has divested
himself of title by executing an assignment deed can
nevertheless continue exercising rights over the registered
trademark and the person in whom title has been vested by
assignment is held not entitled to use the same owing to
non-registration.
In Collector of C. Ex. V. Vikshara Trading and
Investment Pvt. Ltd., 2003 (27) PTC 603 (SC), the
Supreme Court noticed that there was an assignment in
favour of the first respondent though it had not been
registered. The Supreme Court was of the view that mere
non-registration of the assignment could not alter the
position.
In view of the facts and circumstances discussed
above, I am of the considered view that the plaintiff is not
entitled to grant of ad interim injunction against use of the
word mark EVEREADY by the defendants in respect of the
screw drivers and pliers.
Admittedly, the defendants have already been
restrained by IPAB from using EVEREADY (device). Hence,
there is no need for the Court to injunct against use of this
device by the defendants. The defendants, however, will not
use the word trademark „EVEREADY‟ except in respect of
the screw drivers and pliers. If, however, the registration in
favour of the defendants is cancelled, they will forthwith
stop the use of the word mark „EVEREADY‟ even in respect
of screw drivers and pliers. The interim order passed by this
Court on August 24, 2009 stands modified accordingly. The
observation made in this order being tentative and having
been necessitated for the purpose of taking a prima facie
view, will not affect the decision of the suit in any manner.
The applications stand disposed of.
The parties are directed to appear before the Joint
Registrar for admission/denial of documents on 14th
February, 2011. The matter be listed for framing of issues
on 04th April, 2011.
(V.K. JAIN)
JUDGE
DECEMBER 22, 2010
BG/VK
