Delhi High Court
M/S R G Oswal Hosiety Industries & ... vs Dindayal Gupta & Anr. on 24 August, 2016
$~21
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: August 24, 2016
+ FAO 406/2016
M/S R G OSWAL HOSIERY INDUSTRIES & ANR ....Appellants
Through: Mr. S.K. Bansal, Mr. Ajay
Amitabh Suman, Mr. Virendra
Sinha and Mr. Rahul Sharma,
Advocates
versus
DINDAYAL GUPTA & ANR .....Respondents
Through: Nemo
CORAM:
HON'BLE MR. JUSTICE SUNIL GAUR
JUDGMENT
% (ORAL)
C.M.No.30558/2016 (Exemption)
Allowed subject to all just exceptions.
C.M.No.30559/2016 (Delay)
There is one day's delay in filing the accompanying appeal.
For the reasons stated in the application, it is allowed and the delay
of one day is condoned.
The application stands disposed of.
FAO 406/2016 & C.Ms.30556/2016 (Stay), 30557/2016
Impugned order of 2nd May, 2016 declines appellant's application
for interim relief in a case of 'passing off' by observing that the
trademark of appellant-plaintiff was removed by Intellectual Property
Appellate Board (IPAB) in December, 2009 and that the continuous user
is not established. It is also observed in the impugned order that the sales
of respondent-defendant are higher and there is delay of six years as
despite legal notice served upon appellant in the year 1994, no steps were
taken by the appellant to protect its trademark. It is also noted in the
impugned order that in the instant suit, which is pending for the last 16
years, there is no interim relief in favour of appellant and that appellant-
plaintiff has failed to establish the reputation and the goodwill of its
trademark 'Dollar' in the market in hosiery goods.
The challenge to the impugned order in this appeal by learned
counsel for appellant is on the ground that trademark of appellant-
plaintiff was removed by the IPAB because the renewal application was
filed by the licencee as appellant No.1 had given licence to appellant
No.2 in the year 1989 and since then, appellant No.2 is using the
trademark 'Dollar' and has established the reputation and that the
adoption of the trademark 'Dollar' by the respondent-defendant is
dishonest. Reliance is placed upon a Single Bench decision of this Court
in Ansul Industries v. Shiva Tobacco Company 2007 (34) PTC 392 (Del.)
to submit that prior user of the trademark is entitled to injunction as
dishonest adoption of the trademark by the defendant is unacceptable.
Reliance is also placed upon another Single Bench decision of Calcutta
High Court in Hybo Hindusthan and Anr. v. Sethia Hosiery Mills 2002
(24) PTC 65 (Cal) to submit that defendant was using the trademark of
the plaintiff with the knowledge that he is violating plaintiff's right and
so, the delay should not defeat the prayer for injunction. Thus, it is
submitted on behalf of appellants that the impugned order deserves to be
set aside and appellants' application for interim relief ought to be
allowed.
Upon hearing and on perusal of the impugned order, the material
on record and the decisions cited, I find that to establish prior user,
learned counsel for appellants-plaintiffs have not shown any material to
evaluate market pre-dominance and sales prior to the year 1989.
Pertinently, there are only few bills from the year 1967-72 in respect of
trademark 'Dollor'. Whereas, on the other hand, respondents-defendants
have placed on record their bills/invoices from the year 1975 till the date
of filing of the suit as well as copy of the advertisements and labels from
late 1970s upto 1987-88 and as per the sale figures of respondents-
defendants for the year 1990-2000, the sale of their product under the
trademark 'Dollar' was to the tune of about `20 crores, which shows its
heavy presence and recognition in the market in Kolkata and its vicinity.
Appellants are stationed in Delhi and the sale figures of
respondents-defendants is much ahead than that of appellants. There is
nothing on record to prima facie show that appellants are the prior user of
the trademark in question. Reliance placed upon Ansul Industries (supra)
is of no avail to appellants as it cannot be prima facie said that there is
dishonest adoption of the trademark by the respondents-defendants or that
appellants are the prior user of the trademark in question. Similarly, the
decision in Hybo Hindusthan (supra) is of no avail to the appellants as
use of the trademark in question by the respondents cannot prima facie
said to be unauthorized. Even the reputation and goodwill of appellants'
trademark is not prima facie established.
It was not explained during the course of hearing as to why
appellants had kept silent from the year 1994 till the year 2000 when
'notice to cease and desist' was issued to them. Undisputedly, appellants'
suit is pending trial for the last 16 years with no interim relief and rightly
so, as prima facie case to obtain interim relief is not made out.
Finding no infirmity in the impugned order, this appeal and the
applications are dismissed while making it clear that any observation
shall have no bearing on merits at trial.
This appeal and the applications are accordingly disposed of.
(SUNIL GAUR)
JUDGE
AUGUST 22, 2016
s
