Delhi High Court
Nuvoco Vistas Corporation ... vs Jk Lakshmi Cement Limited & Anr on 15 April, 2019
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 256/2017
NUVOCO VISTAS CORPORATION LIMITED ..... Plaintiff
Through: Mr. Chander M. Lall, Senior
Advocate with Ms. Nancy Roy
and Mr. Dhruv Nayyar,
Advocates.
versus
JK LAKSHMI CEMENT LIMITED & ANR ..... Defendants
Through: Mr. Akhil Sibal, Senior
Advocate with Ms. Tanvi Misra
and Mr. Sanchith Shivakumar,
Advocates.
Reserved on: 25th March, 2019
% Date of Decision:15th April, 2019
CORAM:
HON'BLE MR. JUSTICE MANMOHAN
JUDGMENT
MANMOHAN, J:
I.A. No. 4261/2017, 5564/2017
1. While I.A. No. 4261/2017 has been filed by the plaintiff under
Order 39 Rules 1 & 2 CPC, I.A. 5564/2017 has been filed by the
defendants under Order 39 Rule 4 CPC for vacation of the ex parte ad
interim order dated 11th April, 2017 passed by the learned Predecessor
of this Court.
2. It is pertinent to mention that the present suit has been filed for
injunction and damages for infringement of trademark, passing off,
and unfair trade competition against the defendants. The prayer clause
in the plaint is reproduced hereinbelow:-
―A. The Defendants, their directors, principals,
partners, officers, employees, agents, distributors, suppliers,
affiliates, subsidiaries, franchisees, licensees,
representatives and assigns be restrained by a permanent
injunction from :
i. Manufacturing, or authorizing the manufacture,
distributing, exporting, selling, offering for sale,
advertising, promoting, displaying and/or using in
any manner whatsoever, the impugned products, as
mentioned in Paragraph Nos. 34, 43 and 44 of the
Plaint, bearing the marks CONCRETA and
CONCRETA (label) and/or any other product bearing
any mark and/or label which is identical and/or
deceptively and confusingly similar to the Plaintiff's
registered trade mark CONCRETO, as tabulated
under Paragraph No. 8 of the Plaint, as a trade mark
or part of a trade mark, trade name or
a part of trade name, name of business concern or
part of the name, of business concern, domain name
or a part of domain name or in any other manner
whatsoever, in relation to any goods or services, or in
relation to any promotional, marketing or advertising
material or any other material used or intended to be
used for labelling or packaging or for
advertising any goods or services, which would
amount to infringement of the registered trade mark
of the Plaintiffs;
ii. Manufacturing, or authorizing the manufacture,
distributing, exporting, selling, offering for sale,
advertising, promoting, displaying and/or using in
any manner whatsoever, the impugned products, as
and 44 of the Plaint, bearing the marks CONCRETA
and CONCRETA (label) and/or any other product
bearing any mark and/or label which is identical
and/or deceptively and confusingly similar to the
Plaintiff's trade marks, as tabulated under Paragraph
Nos. 8, 10 and 11 of the Plaint, as a trade mark or
part of a trade mark, trade name or a part of trade
name, name of business concern or part of the name
of business concern, domain name or a part of
domain name or in any manner whatsoever, in
relation to any goods or services, or in relation to any
promotional, marketing or advertising material or
any other material used or intended to be used for
labelling or packaging or for advertising any goods
or services, which would amount to passing off of the
Plaintiff's marks;
B. The Defendants, their directors, principals, partners,
officers, employees, agents, distributors, suppliers,
affiliates, subsidiaries, franchisees, licensees,
representatives and assigns be ordered by a decree of
mandatory injunction directing that they at their own
expense:
(i) Recall all the stocks of the impugned products
and all marketing, promotional and advertising
materials that bear or incorporate the
impugned marks and/or any other mark which
is identical and/or deceptively and confusingly
similar to the Plaintiff's trade marks which has
been manufactured or marketed or distributed
or sold in the market, including on online
retail.
(ii) Deliver to the Plaintiff's attorneys or
representatives for destruction all the stocks of
the impugned products and all material
including labels, packaging, brochures,
business cards, business envelopes, letterheads,
labels, cartons, publicity material such as
pamphlets, hoardings, signboards, stationery
etc. in its possession or under its control,
bearing the impugned marks or any other mark
identical or deceptively and confusingly similar
to the Plaintiff's registered trade marks;
(iii) The Defendants be ordered by a decree of
mandatory injunction to withdraw trade mark
applications for the impugned mark, as
tabulated in Paragraph No. 34 and provide
duly endorsed proofs of the said withdrawals to
the Plaintiff;
(iv) Disclose to the Plaintiff any other application
for registration of the impugned marks filed by
the Defendants;
C. The Defendants be called upon to allow inspection
of their accounts to assist in ascertaining the amount of
profits made by them and/or damages including exemplary
and penal damages suffered by the Plaintiff on account of the
Defendants' offending activities and a decree is passed in
favor of the Plaintiff and against the Defendants for the
amount found due.
D. Cost of the suit be awarded to the Plaintiff; and
E. Any other relief which this Hon'ble Court thinks fit
and proper in the circumstances of the case is allowed in
favor of the Plaintiff and against the Defendants.‖
ARGUMENTS ON BEHALF OF THE PLAINTIFF
3. Mr. Chander M. Lall, learned senior counsel for the plaintiff
stated that the plaintiff had been the registered proprietor of the word
mark CONCRETO since 30th November, 2005. He stated that the
plaintiff was the registered proprietor of other marks consisting of
labels in which CONCRETO was the most essential and prominent
part. He stated that the plaintiff had a registration for a label with a
distinctive slanting roof design also. The list of trade mark
registrations relied upon by the plaintiff in paragraph 8 of the plaint
are reproduced hereinbelow:-
Trade Mark Date Number Class
CONCRETO 30/11/2005 1402591 19
(word)
Goods: Cement and other building materials.
20/12/2002 1160537 19
Goods: Cement, building materials, included in class 19
24.03.2011 2120892 19
Goods: Cement
24.03.2011 2120893 19
Goods: Cement
20/12/2002 1160536 16
Goods: Paper and paper articles, card, board and card board
articles, printed matters, newspapers, periodicals, included in
class 16
03/10/2012 2404960 16
Goods:
Paper, cardboard and goods made from these materials, not
included in other classes; printed matter; bookbinding material;
photographs; stationery; adhesives for stationery or household
purposes; artistic; materials; paint brushes; typewriters and
office requisites (except furniture); instructional and teaching
material (except apparatus); plastic materials for packaging (not
included in other classes); high density poly ethylene (HDPE)
bags used for packaging; playing cards; printers; type; printing
blocks; printing blocks for use on high density poly ethylene
(HDPE) bags
03/10/2012 2404963 16
Goods:
Paper, cardboard and goods made from these materials, not
included in other classes; printed matter; bookbinding material;
photographs; stationery; adhesives for stationery or household
purposes; artistic; materials; paint brushes; typewriters and
office requisites (except furniture); instructional and teaching
material (except apparatus); plastic materials for packaging (not
included in other classes); high density poly ethylene (HOPE)
bags used for packaging; playing cards; printers; type; printing
blocks; printing blocks for use on high density poly ethylene
(HDPE) bags
4. Learned senior counsel for the plaintiff contended that the
plaintiff was the prior user of the word mark and the labels for
CONCRETO and had been using it since 2002. He stated that the
plaintiff had spent huge amounts on the advertisement and promotion
of its cement under the mark CONCRETO and had earned huge
revenues on account of sale of its cement products under the mark
CONCRETO. He further stated that the plaintiff had initiated and
obtained orders against third parties for infringement of its trademark
CONCRETO. Consequently, according to him, the brand
CONCRETO, had acquired the status of a well-known mark.
5. Learned senior counsel for the plaintiff stated that the defendant
had adopted a deceptively and confusingly similar mark CONCRETA
recently, for identical goods, i.e. cement. He pointed out that the labels
of the impugned mark CONCRETA also bore close resemblance with
one of the labels of the plaintiff‟s prior brand CONCRETO. A
comparison of the labels relied upon by learned senior counsel for the
plaintiff is reproduced hereinbelow:-
Plaintiff's label mark Defendants' impugned
mark
6. He stated that bad faith of the defendant was apparent, as the
defendants were in the same trade as that of the plaintiff and therefore
the defendant should be deemed to have known about the plaintiff‟s
brand CONCRETO and the plaintiff‟s slanting roof design. He
submitted that in cases of bad faith, courts have to see the items of
similarity rather than dissimilarity and therefore the use of the mark
„JK‟ would not absolve the defendant.
7. Learned senior counsel for the plaintiff contended that the
defendants‟ defence in the written statement that its brand „JK‟ was so
popular that it had no incentive to associate itself with the plaintiff,
could not be accepted as even innocent infringement cannot be
condoned. In support of his contention, he relied on the judgment of
Laxmikant V. Patel vs. Chetanbaht Shah, [2002(24) PTC 1].
ARGUMENTS ON BEHALF OF THE DEFENDANTS
8. Per contra, Mr. Akhil Sibal, learned senior counsel for the
defendants stated that the plaintiff was not entitled to any rights in the
impugned mark as the same was wholly descriptive and lacked
distinctiveness. He stated that the word „Concrete‟ was
interchangeable with "cement" and was used descriptively by many
manufacturers in the industry in relation to their products. He pointed
out that the word „Concreto‟ was the word for "cement" in a number
of languages such as Spanish, Portuguese, Italian, etc.
9. He further stated that no exclusive right can be vested in the use
of the word „concrete‟. He stated that a number of bonafide third
parties were using the impugned or similar word mark and the same
was an indication that the said word could not be monopolised by any
one player. He submitted that in J.R. Kapoor Vs. Micronix India,
1994 Supp (3) SCC 215, the Supreme Court has held that a prefix
which is a common or general name, which is descriptive of the
product, cannot be monopolised.
10. Learned senior counsel for the defendants stated that the
plaintiff was not the owner of five out of the seven asserted marks in
paragraph 8 of the plaint, in which the word „LAFARGE‟ was
mentioned. He stated that by operation of the Competition
Commission of India (hereinafter referred to as "CCI") order dated
02nd February, 2016, which sought to divest the business of the
plaintiff‟s predecessor, LAFARGE, and which resulted in the creation
of present plaintiff, the latter was not entitled to ownership in the
impugned five marks as they used the word LAFARGE. The relevant
portion of Schedule I of the Supplementary order dated 02nd February,
2016, passed by the CCI and relied upon by learned senior counsel for
the defendants is reproduced hereinbelow:-
―4. Exclusions from Divestment Business:
i. Brands listed at Appendix III, which are (A) under the
proprietorship of Lafarge India and use the word Lafarge
(hereinafter called as ―Category I excluded brands‖); and
(B) under the proprietorship of Lafarge and/or other group
entities of Lafarge and are currently licenced to Lafarge
India (hereinafter called as ―Category II excluded
brands‖), are excluded from Divestment Business provided
that subject to the requirement o the Approved Purchaser,
the Parties shall enter into a transitional arrangement with
the Approved Purchaser for use of such brands for a
certain mutually agreed duration.‖
(emphasis supplied)
11. Learned senior counsel for the defendants stated that the
plaintiff in the present suit had set up a false case of ownership and not
that of a licensee or a permitted user. He contended that in view of the
divestment order of CCI, the plaintiff lacked the requisite locus standi
to institute the present suit, as the plaintiff could have, at best, been a
permitted user by virtue of a Share Purchase and Transitional
Agreement dated 10th September, 2016 (hereinafter referred to as
"Transitional Agreement, 2016") and the remedy against
infringement was only available to a party that had proprietorship
rights in the marks.
12. Learned senior counsel for the defendants averred that the
plaintiff had suppressed various facts relating to the maintainability of
the present dispute. He stated that the plaintiff had suppressed portions
of the CCI order dated 02nd February, 2016, in terms of which, the
plaintiff had been explicitly disentitled from proprietorship over the
five impugned marks. He stated that the plaintiff had failed to disclose
the Transitional Agreement, 2016 which gave the plaintiff the alleged
right to use the impugned marks. He submitted that it is a well-settled
proposition of law that a party seeking an ex parte injunction must be
held to a standard of "uberrima fides" or "utmost good faith". In
support of his submission, he relied on Morgan Stanley Mutual Fund
vs. Kartick Das, (1994) 4 SCC 225.
13. Learned senior counsel for the defendants stated that the
plaintiff had not shown any use of the remaining two CONCRETO
word mark registrations, owned by the plaintiff. He contended that the
comparison of the plaintiff‟s mark CONCRETO and the defendants‟
mark CONCRETA was of a label mark, of which the plaintiff was not
the owner.
14. Learned counsel for the defendants stated that there was no
likelihood of confusion between the plaintiff‟s and the defendants‟
products as the two competing marks pertain to different products. He
pointed out that the plaintiff‟s product was Portland Slag Cement
which was used in mass concreting application such as dams and
construction in coastal areas, while the defendants‟ product was
Portland Pozolona Cement which was used in casting works and
preventing cracks. He stated that the two marks operate in entirely
different trade channels and the plaintiff‟s product was sold solely in
East India, while the defendants‟ product was marketed in Rajasthan
only.
15. Learned counsel for the defendants further stated that the
plaintiff was using „Lafarge‟ to indicate the source of the product,
while the defendants‟ displayed its product with a „hammer and hand‟
logo along with the words „HEAVY DUTY CEMENT‟.
REJOINDER ARGUMENTS ON BEHALF OF THE PLAINTIFF
16. In rejoinder, learned senior counsel for the plaintiff stated that
the plaintiff was a subsidiary of LAFARGE SA, a company
incorporated under the laws of France and during the said time, two
trade mark registrations were obtained in the name of LAFARGE SA
for the label mark LAFARGE CONCRETO bearing No.1258433.
Subsequently in 2014, due to the global merger of LAFARGE SA and
Holcim, the new entity LafargeHolcim was directed by the CCI vide
order dated 30th March, 2015 and further vide modified order dated
02nd February, 2016, to divest its entire business in India. He stated
that in compliance with the directions of CCI, LafargeHolcim divested
Lafarge India Limited and consequently, Lafarge India Limited
became a hundred per cent subsidiary of M/s. Nirchem Ltd. Upon
change of name of Lafarge India Limited, it is now known as Nuvoco
Vistas Corp. Ltd. - the plaintiff. He stated that the aforementioned
facts had been disclosed by the plaintiff in paragraph 9 of the plaint.
17. In any event, learned senior counsel for the plaintiff submitted
that the CCI orders dated 30th March, 2015 and 2nd September 2016
had no relevance in the present suit as, they were with regard to the
mark LAFARGE and not the stand-alone word mark or stylized word
mark CONCRETO. He stated that the defendants had themselves
admitted in the written statement that the plaintiff had stand-alone
registrations for the mark CONCRETO. He further stated that the
plaintiff had been using the mark CONCRETO as the most prominent
part of its packaging and had used LAFARGE only as a corporate
name.
18. Learned senior counsel for the plaintiff filed an additional
affidavit dated 30th November, 2018 of the authorized representative
of the plaintiff company to clarify that the plaintiff had proprietorship
rights in the CONCRETO mark as per the Transitional Agreement,
2016. The relevant portion of the said affidavit is reproduced
hereinbelow:-
―3. I state that paragraph 8 of the plaint asserts that the
Plaintiff is the owner of the trade mark registrations
mentioned in the said paragraph of the plaint. I state that at
the time of filing of the present suit, the Plaintiff was the
registrant of all of the registrations mentioned in paragraph
8 of the plaint. Even today, as per the records of the Trade
Marks Registry, the Plaintiff continues to be the registrant
of the said registrations.
4. I state that the Plaintiff was a subsidiary of Lafarge
SA. Owing to the combination of Lafarge SA and Holcim
Limited, the Competition Commission of India vide order
dated 30th March 2015 and further order dated 2nd February
2016 and further order dated 7th September 2016
(hereinafter referred to as CCI order) directed the
divestment of the business of the said combination.
5. As per the order of the Competition Commission of
India, the Divestment business was to include all tangible
and intangible assets (including intellectual property rights)
related to and/or being used in connection with the
Divestment Business (See para 33(i)).
6. However, the CCI Order provided for a list of
exclusions from the Divestment Business. This is provided
in para 4 of the CCI order which categorically provides that
the brands listed at Appendix III, which are (A) under the
proprietorship of Lafarge India (Plaintiff herein) and use
the word Lafarge (category I excluded brands); and (B)
under the proprietorship of Lafarge and/or other Group
entities of Lafarge and are currently licensed to Lafarge
India (Plaintiff herein). The same paragraph also provides
that ―subject to requirements of the Approved Purchaser the
Parties shall enter into a transitional arrangement with the
Approved Purchaser for use of such brands for a certain
mutually agreed duration.‖
7. The aforementioned Appendix III does not mention
the word mark registration for the mark CONCRETO
bearing No. 1402591 in Class 19 and CONCRETO stylized
bearing No. 2120892 in Class 19. These two registrations
were and continue to be owned by the Plaintiff herein.
8. Pursuant to the CCI Order, Lafarge Holcim and
Nirchem entered into a share purchase and transitional
agreement on 4th October 2016. Certain definitions in the
said Share Purchase Agreement are relevant and are
reproduced below:
(i) Closing date being the 15thBusiness Day following the
date of thisAgreement;
(ii)Corporate marks means (A) any trade or service name
or mark, business name, logo or domain name that is used
or held by any member of the Sellers Group (including, for
the avoidance of doubt, the excluded brands under Appendix
III to Schedule I of the Supplementary order and the trade
marks listed in Schedule 5), in each case to the extent used
in trade in India by the Company in the 12 months before
closing date; or (B) any mark, name or logo which, in the
reasonable opinion of the Sellers is substantially or
confusingly similar to any of them (together, the Corporate
Marks);
(iii) Lafarge Logo means the stylized form in which the
Lafarge Name is used on products by the Company in India
as at the Closing Date;
(iv) Lafarge Mark means the Lafarge Name and Lafarge
Logo together;
(v) Lafarge Name means name Lafarge.
(vi) Phase out Period means after the Closing Date and in
any event no later than the end of 18 months following the
Closing Date.
9. As per 15.1 (b)(i) of the said Share Purchase Agreement,
the Plaintiff was allowed to use the Corporate Marks
containing Lafarge during the Phase-Out Period. In
compliance with this, the Plaintiff has already changed its
name to Nuvoco Vistas Corporation Limited as stated in the
plaint.
10. It is submitted that the Plaintiff is the absolute
owner of the trade mark "CONCRETO" and other brands
which are not relevant to the present suit. In recognition of
the Plaintiffs ownership of the trade mark CONCRETO, as
per clause 15.1(b) of the Share Purchase Agreement the
sellers (LafargeHolcim) were not allowed to use the trade
mark "CONCRETO" in addition to other trade marks owned
by the Plaintiff such as "PSC" INFRACHEM" "SAMP ARK"
and "DURA GUARD".
11. As per the aforementioned Share Purchase
Agreement the 18 months' Phase Out period ended on 25th
March 2018. During this period, the Plaintiff continued to
be the owner of the registrations mentioned in paragraph 8
of the plaint and was duty bound to initiate appropriate
legal action against third party violations of the said
registrations, as in the present case. This is as per para 35
of the CCI order which provides that until the closing date,
the parties were to take such steps as would be necessary to
maintain the economic viability, marketability and
competitiveness of the Divestment Business, minimize the
loss of competitive potential of the Divestment Business and
to prevent the destruction, removal, wasting, deterioration,
sale, disposition, transfer (including creation of
encumbrance) or impairment of the assets related to the
Divestment Business, except as would occur in the ordinary
course of business. Relevant pages of the aforementioned
Share purchase agreement are annexed hereto as Annexure
A. I state that the contents of the said Share purchase
Agreement are extremely confidential and the Plaintiff is
only filing the relevant pages of the said Agreement for the
perusal of this Hon'ble Court.
12. The Plaintiff is currently using the trade marks
"CONCRETO" "PSC" INFRACHEM" "SAMP ARK" and
"DURA GUARD" amongst others, without the word Lafarge
and is the exclusive owner of these trade marks.
13. In the current year 2018 the Plaintiff has now changed
its packaging in relation to the trade mark CONCRETO as
under:
In the submission of the Plaintiff, as can be seen from the
facts above and the facts in the plaint, CONCRETO has
always been and continues to be the most essential part of
the Plaintiffs branding. The use of CONCRETA by the
Defendants is and has always been clearly mischievous and
infringing.
14. It is submitted that since the present suit concerns the
use of the trade mark CONCRETA which is deceptively and
confusingly similar to the Plaintiffs registered trade mark
CONCRETO, the Plaintiff did not consider it necessary to
further explain the status of the Lafarge trade marks and the
impact of the CCI order in relation to the trade mark
Lafarge. The Plaintiff believes that they have made a
sufficient disclosure in paragraph 9 of the plaint. It is
reiterated that the Plaintiff has always been the exclusive
owner of the trade mark CONCRETO, which is the subject
matter of the present suit, prior to the CCI order and
continues to be the exclusive owner till date. The seller
(LafargeHolcim) has no right, title or interest in the trade
mark CONCRETO whatsoever.‖
(emphasis supplied)
19. Learned counsel for the plaintiff stated that on the date of filing
of suit and even today the plaintiff is the owner of all the seven marks
mentioned in paragraph 8 of the plaint. He stated that the plaintiff had
placed on record Registration Certificates for all seven marks.
20. Learned senior counsel for the plaintiff emphasized that the
defendants had not disclosed any sales or use of the impugned mark
CONCRETA and had already changed their brand name to
PLATINUM and had been using the same for their cement products.
SUR-REJOINDER ARGUMENTS ON BEHALF OF THE
DEFENDANTS
21. Learned senior counsel for the defendants stated that the
defendants had issued a notice dated 03rd August, 2017 to the plaintiff
to produce the Transitional Agreement, 2016, in terms of which the
plaintiff had claimed proprietorship over the CONCRETO marks, but
the plaintiff, vide its reply to notice dated 01st September, 2017, had
refused to provide the said agreement to the defendants claiming that
the said Agreement was completely irrelevant to the present
proceedings as the trade mark LAFARGE was not the subject matter
of the present suit. He contended that filing of the Transitional
Agreement, 2016 at the rejoinder stage was irrelevant and should not
be taken into account by this Court.
22. He reiterated that on the date of filing of the suit the plaintiff
was not the owner of five out of the seven asserted marks and the
statements made by the plaintiff in the plaint and the affidavit dated
30th November, 2018 were blatantly false. He contended that in terms
of the Transitional Agreement, 2016, the plaintiff had no right to
either use the LAFARGE stand-alone marks or any composite/device
mark which contained the mark LAFARGE, like LAFARGE
CONCRETO, after the „Closing date‟ which period, according to him,
ended on 25th September, 2016. In support of his contention, the
learned senior counsel for the defendants relied on the definition of
"Closing date" and Clause 15 of the Transitional Agreement, 2016
annexed with the plaintiff‟s affidavit dated 30th November, 2018. The
relevant portion of the Transitional Agreement, 2016 relied upon by
learned senior counsel for the defendants is reproduced hereinbelow:-
"Closing date being the 15th Business Day following the date of
this Agreement;
Company means Lafarge India Limited;
xxx xxx xxx
Phase-Out Period means after the Closing Date and in any event no
later than the end of 18 months following the Closing Date;
xxx xxx xxx
Purchaser means[.] Limited, [a wholly-owned subsidiary of Nirma
Limited which is being incorporated under the laws of India];
xxx xxx xxx
Seller means Financiere Lafarge SAS (Financiere Lafarge) and
Holderind Investments Limited (Holdeerinied), each of them a
Seller,
xxx xxx xxx
Subsidiary means Lafarge Eastern India Limited;
15. CHANGES OF NAME
15.1 The Purchaser, the company and the subsidiary
(as appropriate) shall:
a) as soon as reasonably practicable after the Closing
Date and in any event no later than 30 Business
Days thereafter, procure that the name of the
Company and the Subsidiary to the extent that it
uses, consists of or incorporates the word "Lafarge"
is changed to a name which does not include that
word or any name which, in the reasonable opinion
of the Sellers is substantially or confusingly similar;
and
b) after the Closing Date and in any event no later
than the end of 18 months following the Closing
Date (the Phase-Out Period):
i. cease using or displaying (A) any trade or
service name or mark, business name, logo or
domain name that is used or held by any
member of the Sellers Group (including, for the
avoidance of doubt, the excluded brands under
Appendix III to Schedule I of the Supplementary
Order and the trade marks listed in Schedule 5),
in each case to the extent used in trade in India
by the Company in the twelve (12) months
before the Closing Date; or (B) any mark, name
or logo which, in the reasonable opinion of the
Sellers is substantially or confusingly similar to
any of them (together, the Corporate Marks);
and
ii. remove or cover any Corporate Mark on all
signs, billboards, advertising materials,
telephone listings, labels, stationery, office
forms, trucks, packaging or other properties or
materials of the Company or the Subsidiary;
provided that if the Sellers become aware of
any location where Corporate Marks appear
following the Phase-Out Period, the Sellers
shall inform the Purchaser and the Purchaser
shall remove such Corporate Marks within 10
Business Days thereafter,
and the, parties acknowledge that each of
"CONCRETO","PSC", "INFRACEM", "SAMPARK"
and "DURA GUARD", in each case on its own, is
not a Corporate Mark, and the Sellers shall not use
any of them as a trade mark in India.
15.2 During the Phase-Out Period, subject to clause 15.3,
the Company shall be permitted to continue using the
Corporate Marks, including the name "Lafarge" (the
Lafarge Name) and the stylized form in which the
Lafarge name is used on products by the company in
India as at the Closing Date (the Lafarge Logo)
(together, the Lafarge Mark), in India (and not for
export) on the Company's products, packaging,
promotions and advertising, in each case solely in the
manner and to extent used at the Closing Date.
15.3 The Purchaser:
(a) acknowledges that all goodwill associated with the
use of the Corporate Marks by the Company (or its
Affiliates) shall vest in the Sellers (or their
Affiliates), and that the Company and its affiliates
are not entitled to any rights, title or interest in or
to any of the Corporate Marks except as granted
under this clause 15 in respect of the phase-out
period. The Purchaser shall not, and shall ensure
that its Affiliates (Including, with effect from the
Closing Date, the company) shall not, make any
claim or allegation in respect of any of the
Corporate Marks that is inconsistent with this
Clause 15;
(b) shall notify the Sellers promptly of any
infringement or improper use by any third party of
any Corporate Mark of which Purchaser or its
Affiliates becomes aware, and agrees that the
Sellers shall have sole discretion and control with
regards to (and the benefit of any remedies
recovered in respect of) any proceedings related
to such infringement or improper use, and the
Purchaser shall, if requested by Sellers ensure
that its Affiliates (including, with effect from the
Closing Date, the Company) assist the Sellers in
relation to any such proceedings and shall in no
circumstances make any admissions or settle any
action in connection with such infringement or
improper use;
(c) shall ensure that any use of the Corporate Marks is
(i) Solely in the manner and to the extent used at the
Closing Date;
(ii) Not combined with any other trade mark except
with the prior written approval of the Seller (Such
approval not to be unreasonably withheld or
delayed, provided that such use would not be
detrimental to the reputation of the Seller and the
"Lafarge" brand), it being acknowledged that
such approval shall be deemed given in respect of
such use of the Lafarge Logo (in the same
proportion but different size(s)) combined with
one of the following marks : "NIRMA",
"NIRMAX", "NIMA" or ―NIRMAN" and
(iii) Subject to standards of quality and specifications
that conform to or exceed those quality standards
and operational specifications currently used by
Seller and that otherwise conform with all
applicable laws; and
(d) shall pay to the sellers an amount equal to any
and all Losses arising out of or relating to the
Purchaser's, the Company's or the Subsidiary's
use of the Corporate Marks (including the Lafarge
Mark) where such use (i) is in breach of the
obligations set out in (a) to (C) above; or (ii) is
materially damaging to the reputation of a
Corporate Mark or the Sellers or is misleading."
(emphasis supplied)
23. Consequently, learned senior counsel for the defendants stated
that the plaintiff had knowingly made a false and misleading statement
while obtaining the injunction on 11th April, 2017. He stated that in
accordance with Order 39 Rule 4 of CPC, this Court was duty bound
to vacate the injunction order dated 11th April, 2017.
COURT'S REASONING
NO FALSE CASE OF OWNERSHIP OR USE HAS BEEN SET UP BY
THE PLAINTIFF IN THE PLAINT WITH REGARD TO THE
LAFARGE MARKS. IN ANY EVENT, THE PRESENT DISPUTE
CONCERNS THE INFRINGEMENT OF THE MARK CONCRETO
AND NOT LAFARGE. ALSO KEEPING IN VIEW THE
CONFIDENTIAL NATURE OF THE DIVESTMENT PROCESS, THIS
COURT IS OF THE VIEW THAT THERE IS SUFFICIENT
DISCLOSURE OF FACTS IN THE PLAINT WITH REGARD TO THE
PROCEEDINGS AND ORDERS PASSED BY THE CCI
24. Having heard learned senior counsel for the parties, this Court is
of the opinion that there is no suppression and no falsehood in the
plaint. On the date of filing of the suit, the plaintiff was the owner of
all the seven marks mentioned in paragraph 8 of the plaint. The
Registration Certificates at page Nos.15, 18, 21, 26, 29, 33 and 37 of
Part-IIIA1 file shows that all the seven registrations, till date, are in
the name of the predecessor of the plaintiff, i.e., Lafarge India Private
Limited.
25. While it is true that the marks containing the word LAFARGE
were excluded from the divestment business by virtue of the CCI
orders dated 30th March, 2015 and 02nd September, 2016, yet on the
date the plaint was filed, the Phase-Out Period was in subsistence and
during this period the plaintiff was permitted to even use the
Corporate Marks, including the mark LAFARGE and/or corporate
marks containing the mark LAFARGE on the plaintiff‟s products,
packaging, promotions and advertising in the manner and to the extent
used at the Closing Date, in accordance with Clause 15 of the
Transitional Agreement, 2016.
26. It is pertinent to mention that despite lapse of nearly four
months, no reply has been filed by the defendants to the plaintiff‟s
additional affidavit dated 30th November, 2018.
27. In any event, the present dispute concerns the infringement of
the mark CONCRETO and not LAFARGE.
28. In the Transitional Agreement, 2016, it has been admitted
between the Seller (LafargeHolcim) and Purchaser (Plaintiff) that the
mark CONCRETO is not a Corporate Mark and the Seller
(LafargeHolcim) shall not use the mark CONCRETO as a trade mark
in India.
29. Even after the Phase-Out Period has expired (which happened
during the pendency of the present suit), the plaintiff continues to be
the owner and is thus entitled to the exclusive use of the marks
CONCRETO bearing the Registration Nos. 1402591 and 2120892.
30. The plaintiff in the past had been using the mark CONCRETO
as a prominent part of its packaging and had used LAFARGE only as
its corporate name. It is pertinent to mention that the defendants also
use their corporate name on their product packaging which acts as an
additional source identifier. Consequently, the defendants cannot
claim that by previously using the corporate name on the packaging of
the product along with its trade mark, the plaintiff had not used its
trade mark CONCRETO. The Supreme Court in Ramdev Food
Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel & Ors., AIR 2006
SC 3304 has held as under:-
―42. .........What is registered is a logo wherein the words
―Ramdev‖ and ―Masala‖ are prominent. A person may be
held to be permitted to carry on business in spices as
contradistinguished from the permission to carry on
manufacturing goods which are similar to that of the
appellant, but in terms of the statutory provisions, the
respondents were not legally permitted to sell their products
in packages or labels which would be deceptively similar to
that of the registered owner of a trade mark. The right to
manufacture masala and to sell the same with the registered
logo, it will bear repetition to state, was assigned as far
back in 1991. If the contention of the Senior Counsel is
accepted, the said purpose would be lost. In a case of this
nature, therefore, ordinarily an injunction would issue. By
reason of interpretation of MOU, trade mark cannot be
infringed and further when the right of user has been
relinquished, the same could not have been claimed by the
respondents.‖
(emphasis supplied)
31. Furthermore, this Court is of the view that even if there exists a
dispute between the plaintiff (Purchaser) and LafargeHolcim (Seller),
the same does not confer any right on the defendants to use the
impugned mark CONCRETA.
32. Consequently, no false case of ownership or use has been set up
by the plaintiff in the plaint. Also keeping in view the confidential
nature of the divestment process, this Court is of the view that there is
sufficient disclosure of facts, in particular with regard to the
proceedings and orders passed by the CCI in the plaint, in particular,
in its paragraph 9.
BY VIRTUE OF SECTION 28 OF THE TRADE MARKS ACT, 1999,
THE PLAINTIFF HAS THE EXCLUSIVE RIGHT TO USE THE
CONCRETO TRADEMARKS
33. This Court is of the view that the plaintiff is the prior user, since
2002, and registered proprietor of the stand-alone word mark
CONCRETO bearing Registration No. 1402591 as well as the stylized
word mark CONCRETO bearing Registration No. 2120892. There
have been no changes to the aforesaid Registration Certificates and no
cancellation proceedings have been filed by the defendants with
respect to aforesaid marks.
34. Consequently, this Court is of the view that by virtue of Section
28 of the Trade Marks Act, 1999, the plaintiff has the exclusive right
to use the CONCRETO trademarks, inter alia, in respect of the class
of goods, i.e., cement, for which they are registered.
AS THE ONLY DIFFERENCE BETWEEN THE PLAINTIFF'S MARK
CONCRETO AND THE IMPUGNED DEFENDANTS' MARK
CONCRETA IS THAT THE ALPHABET ‗O' HAS BEEN REPLACED
WITH AN ‗A' BY THE DEFENDANTS, THIS COURT IS OF THE
VIEW THAT THE MOST ESSENTIAL PART OF THE PLAINTIFF'S
REGISTERED MARK IS VISUALLY AND PHONETICALLY SIMILAR
TO THE DEFENDANTS' MARK AND THE SAME CONSTITUTES
INFRINGEMENT.
35. The only difference between the plaintiff‟s mark CONCRETO
and the impugned defendants‟ mark CONCRETA is that the alphabet
„O‟ in the plaintiff‟s mark CONCRETO has been replaced with an „A‟
by the defendants in the impugned mark CONCRETA. Consequently,
this Court is of the view that the most essential part of the plaintiff‟s
registered mark is visually and phonetically similar to the defendants‟
mark.
36. Not only are the marks similar, but the goods being sold by both
parties are also similar. This Court in Inter IKEA Systems BV vs.
Annanya Gautam & Anr., CS(COMM) 1089/2018 decided on 28th
September, 2018 has held as under:-
―19. It is settled law that in order to come to the conclusion
whether one mark is deceptively similar to another, the
broad and essential features of the two marks have to be
considered. In Amritdhara Pharmacy Vs. Satyadeo Gupta,
1963 SCR 484, the Supreme Court has held, ―..the overall
structural and phonetic similarity of the two names
‗Amritdhara' and ‗Lakshmandhara' is, in our opinion,
likely to deceive or cause confusion. We must consider the
overall similarity of the two composite words ‗Amritdhara'
and ‗Lakshmandhara'. We do not think that the learned
Judges of the High Court were right in saying that no
Indian would mistake one for the other. An unwary
purchaser of average intelligence and imperfect recollection
would not, as the High Court supposed; split the name into
its component parts and consider the etymological meaning
thereof or even consider the meanings of the composite
words as ‗current of nectar' or ‗current of Lakshman'. He
would go more by the overall structural and phonetic
similarity and the nature of the medicine he has previously
purchased, or has been told about, or about which has
otherwise learnt and which he wants to purchase.‖
20.Subsequently, in K.R. Chinna Krishna Chettiar Vs. Shri
Ambal and Co. &Ors., (1969) 2 SCC 131, the Supreme
Court has held, ―the resemblance between the two marks
must be considered with reference to the ear as well as the
eye. There is a close affinity of sound between Ambal and
Andal.
21. McCarthy on Trademarks and Unfair Competition [J.
Thomas McCarthy, IV Ed., Clark Boardman Callaghan
2007] under the sub-heading ―Comparing Marks :
Differences and Similarities, the treatise states :-
―23.15.... The typical shopper does not retain all of the
individual details of a composite mark in his or her
mind, but retains only an overall, general impression
created by the composite as a whole. It is the overall
impression created by the mark from the ordinary
shopper's cursory observation in the marketplace that
will or will not lead to a likelihood of confusion, not
the impression created from a meticulous comparison
as expressed in carefully weighed analysis in legal
briefs.‖
―In litigation over the alleged similarity of
marks, the owner will emphasize the similarities and
the alleged infringer will emphasize the differences.
The point is that the two marks should not be examined
with a microscope to find the differences, for this is not
the way the average purchaser views the marks. To the
average buyer, the points of similarity are more
important that minor points of difference. A court
should not engage in "technical gymnastics" in an
attempt to find some minor differences between
conflicting marks. However, where there are both
similarities and differences in the marks, there must be
weighed against one another to see which
predominate.‖
(emphasis supplied)
22. Further, as pointed out by the Apex Court in Cadila
Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (supra),
the approach of the Court has to be to examine similarity in
the marks and not the dissimilarities.
23. In any event, phonetic and visual similarities are
disjunctive and not conjunctive tests. As long as either test
is satisfied, similarity stands established in accordance with
Section 29 of the Trade Marks Act, 1999.....‖
37. This Court is further of the view that in infringement cases if
the essential features of the mark of the plaintiff are adopted by the
defendants, then it is immaterial if the get-up, packaging and other
writings or marks on the goods or on the packets in which the
defendants offer their goods for sale show marked differences, or
indicate a trade origin different from that of the registered proprietor
of the mark. Since the essential features of the impugned mark
CONCRETA are similar to the plaintiff‟s registered trade mark
CONCRETO, the use of the „hammer and hand‟ logo along with the
words „HEAVY DUTY CEMENT‟ by the defendants are immaterial,
irrelevant and inconsequential. The Supreme Court in Kaviraj Pandit
Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories,
AIR 1965 SC 980 has held as under:-
―28. The other ground of objection that the findings are
inconsistent really proceeds on an error in appreciating
the basic differences between the causes of action and
right to relief in suits for passing off and for infringement
of a registered trade mark and in equating the essentials of
a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark.
We have already pointed out that the suit by the
respondent complained both of an invasion of a statutory
right under Section 21 in respect of a registered trade
mark and also of a passing off by the use of the same mark.
The finding in favour of the appellant to which the learned
counsel drew our attention was based upon dissimilarity of
the packing in which the goods of the two parties were
vended, the difference in the physical appearance of the
two packets by reason of the variation in the colour and
other features and their general get-up together with the
circumstance that the name and address of the
manufactory of the appellant was prominently displayed
on his packets and these features were all set out for
negativing the respondent's claim that the appellant had
passed off his goods as those of the respondent. These
matters which are of the essence of the cause of action for
relief on the ground of passing off play but a limited role in
an action for infringement of a registered trade mark by
the registered proprietor who has a statutory right to that
mark and who has a statutory remedy for the event of the
use by another of that mark or a colourable imitation
thereof. While an action for passing off is a Common Law
remedy being in substance an action for deceit, that is, a
passing off by a person of his own goods as those of
another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade
mark for the vindication of the exclusive right to the use of
the trade mark in relation to those goods‖ (Vide Section 21
of the Act). The use by the defendant of the trade mark of
the plaintiff is not essential in an action for passing off, but
is the sine qua non in the case of an action for
infringement. No doubt, where the evidence in respect of
passing off consists merely of the colourable use of a
registered trade mark, the essential features of both the
actions might coincide in the sense that what would be a
colourable imitation of a trade mark in a passing off action
would also be such in an action for infringement of the
same trade mark. But there the correspondence between
the two ceases. In an action for infringement, the plaintiff
must, no doubt, make out that the use of the defendant's
mark is likely to deceive, but where the similarity between
the plaintiff's and the defendant's mark is so close either
visually, phonetically or otherwise and the court reaches
the conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff's rights
are violated. Expressed in another way, if the essential
features of the trade mark of the plaintiff have been
adopted by the defendant, the fact that the get-up, packing
and other writing or marks on the goods or on the packets
in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different
from that of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the
defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from
those of the plaintiff.
29. When once the use by the defendant of the mark which
is claimed to infringe the plaintiff's mark is shown to be
―in the course of trade‖, the question whether there has
been an infringement is to be decided by comparison of the
two marks. Where the two marks are identical no further
questions arise; for then the infringement is made out.
When the two marks are not identical, the plaintiff would
have to establish that the mark used by the defendant so
nearly resembles the plaintiff's registered trade mark as is
likely to deceive or cause confusion and in relation to
goods in respect of which it is registered (Vide Section 21).
A point has sometimes been raised as to whether the words
―or cause confusion‖ introduce any element which is not
already covered by the words ―likely to deceive‖ and it
has sometimes been answered by saying that it is merely
an extension of the earlier test and does not add very
materially to the concept indicated by the earlier words
―likely to deceive‖. But this apart, as the question arises in
an action for infringement the onus would be on the
plaintiff to establish that the trade mark used by the
defendant in the course of trade in the goods in respect of
which his mark is registered, is deceptively similar. This
has necessarily to be ascertained by a comparison of the
two marks--the degree of resemblance which is necessary
to exist to cause deception not being capable of definition
by laying down objective standards. The persons who
would be deceived are, of course, the purchasers of the
goods and it is the likelihood of their being deceived that is
the subject of consideration. The resemblance may be
phonetic, visual or in the basic idea represented by the
plaintiff's mark. The purpose of the comparison is for
determining whether the essential features of the plaintiff's
trade mark are to be found in that used by the defendant.
The identification of the essential features of the mark is in
essence a question of fact and depends on the judgment of
the Court based on the evidence led before it as regards
the usage of the trade. It should, however, be borne in
mind that the object of the enquiry in ultimate analysis is
whether the mark used by the defendant as a whole is
deceptively similar to that of the registered mark of the
plaintiff.‖
(emphasis supplied)
38. Consequently, this Court is of the view that owing to the
registration of the word mark CONCRETO and use of a virtually
identical mark CONCRETA amounts to infringement of the plaintiff‟s
mark by the defendants.
BAD FAITH IS APPARENT AS THE DEFENDANTS BEING IN THE
SAME TRADE OUGHT TO HAVE KNOWN OF THE PLAINTIFF'S
BRAND AND MARK CONCRETO.
39. In Laxmikant V. Patel vs. Chetanbhat Shah, 2002 (24) PTC 1,
it has been held that even innocent infringement cannot be condoned.
However, in the present case, bad faith is apparent as the defendants
being in the same trade ought to have known of the plaintiff‟s brand
and mark CONCRETO. It is pertinent to mention that the defendants
have given no reasons/justification as to why they adopted the mark
CONCRETA.
ARGUMENTS OF EQUITY, UBERRIMA FIDES OR UTMOST
GOOD FAITH AND CLEAN HANDS CANNOT BE ADVANCED BY
‗RANK INFRINGERS'- LIKE THE DEFENDANTS.
40. This Court is also of the opinion that arguments of equity,
uberrima fides or utmost good faith and clean hands cannot be
advanced by ‗rank infringers'-like the defendants. It is settled law
that he who seeks equity must do equity.
DEFENDANTS' ASSERTION THAT, THE TWO PRODUCTS BEING
SOLD BY THE PARTIES OPERATE IN DIFFERENT TRADE
CHANNELS AND IN DIFFERENT GEOGRAPHICAL AREAS
WITHIN INDIA, IS CONTRARY TO FACTS AND UNTENABLE IN
LAW, AS THE PLAINTIFF'S REGISTRATION FOR ‗CEMENT'
INCLUDES CEMENT OF ALL VARIETIES AND SUCH
REGISTRATION WOULD BE WITHOUT ANY RESTRICTION TO
THE TERRITORY TO WHICH IT IS APPLICABLE
41. Moreover, the application filed by the defendants for
registration of the CONCRETA label is for cement and is not
restricted to a particular type of cement only and, therefore, the
defendants cannot claim benefit of the two products being different
varieties of cement and/or being sold in different markets. The
defendants‟ assertion that, the two products being sold by the parties
operate in different trade channels and in different geographical areas
within India, is contrary to facts and untenable in law, as the plaintiff‟s
registration for „cement‟ would include cement of all varieties and
such registration would be without any restriction to the territory to
which it is applicable.
MERELY BECAUSE THERE ARE A FEW OTHER PARTIES USING
A MARK WHICH IS DECEPTIVELY AND CONFUSINGLY SIMILAR
TO THAT OF THE PLAINTIFF'S MARK, THE PLAINTIFF IS NOT
ESTOPPED FROM TAKING ACTION AGAINST THE
DEFENDANTS
42. This Court is also of the opinion that merely because there are a
few other parties using a mark which is deceptively and confusingly
similar to that of the plaintiff‟s mark, the plaintiff is not estopped from
taking action against the defendants. It is settled law that the plaintiff
is not supposed to initiate legal actions against all such third parties
and failure to take action cannot operate as an estoppel or waiver
against the plaintiff or amount to acquiescence on the part of the
plaintiff. In Pankaj Goel v. Dabur India Ltd., [2008(38) PTC 49
(Del) DB] it has been held as under:-
―22. As far as the Appellant's argument that the word
MOLA is common to the trade and that variants of MOLA
are available in the market, we find that the Appellant has
not been able to prima facie prove that the said ‗infringers'
had significant business turnover or they posed a threat to
Plaintiff's distinctiveness. In fact, we are of the view that the
Respondent/Plaintiff is not expected to sue all small type
infringers who may not be affecting Respondent/Plaintiff
business. The Supreme Court in NATIONAL BELL VS.
METAL GOODS reported in AIR 1971 SC 898 has held
that a proprietor of a trademark need not take action
against infringement which do not cause prejudice to its
distinctiveness. In EXPRESS BOTTLERS SERVICES
PVT. LTD. VS. PEPSI INC. & OTHERS reported in 1989
(7) PTC 14 it has been held as under:-
―....To establish the plea of common use, the use by
other persons should be shown to be substantial. In
the present case, there is no evidence regarding the
extent of the trade carried on by the alleged
infringers or their respective position in the trade.
If the proprietor of the mark is expected to pursue
each and every insignificant infringer to save his
mark, the business will come to a standstill.
Because there may be occasion when the malicious
persons, just to harass the proprietor may use his
mark by way of pinpricks.... The mere use of the
name is irrelevant because a registered proprietor is
not expected to go on filing suits or proceedings
against infringers who are of no consequence....
Mere delay in taking action against the infringers is
not sufficient to hold that the registered proprietor
has lost the mark intentionally unless it is positively
proved that delay was due to intentional
abandonment of the right over the registered mark.
This Court is inclined to accept the submissions of
the respondent No. 1 on this point....The respondent
No. 1 did not lose its mark by not proceeding
against insignificant infringers...‖
In fact, in DR. REDDY LABORATORIES VS.
REDDY PAHARMACEUTICALS reported in 2004 (29)
PTC 435 a Single Judge of this Court has held as under :-
―..., the owners of trade marks or copy rights are
not expected to run after every infringer and thereby
remain involved in litigation at the cost of their
business time. If the impugned infringement is too
trivial or insignificant and is not capable of harming
their business interests, they may overlook and
ignore petty violations till they assume alarming
proportions. If a road side Dhaba puts up a board
of ―Taj Hotel‖, the owners of Taj Group are not
expected to swing into action and raise objections
forthwith. They can wait till the time the user of
their name starts harming their business interest
and starts misleading and confusing their
customers.‖
THE DEFENDANTS THEMSELVES HAVING APPLIED FOR
REGISTRATION OF THE MARK CONCRETA CANNOT ASSERT
TODAY THAT THE MARK OF THE PLAINTIFF IS DESCRIPTIVE
OR THAT IT IS TOO SIMILAR TO THE GENERIC WORD
‗CONCRETE'. THE DEFENDANTS CANNOT APPROBATE AND
REPROBATE
43. A perusal of the paper book reveals that the defendants
themselves have applied for registration of the mark CONCRETA
claiming exclusive rights therein. Consequently, the defendants cannot
assert today that the mark of the plaintiff is descriptive or that it is too
similar to the generic word „concrete‟. This Court is of the view that
the defendants cannot approbate and reprobate. In P&G
Manufacturing v. Anchor Health & Beauty care, FAO(OS)
241/2014 it has been held as under:-
―10. We have weighed the rival contentions aforesaid and do
not find any merit in this appeal for the following reasons:-
xxxxx xxxx xxxx xxxx
(xviii) As far as the argument, of the respondent / plaintiff not
using the registered trade mark ―ALLROUND‖ owing to
having suffixed it with the word ―PROTECTION‖ is
concerned, again, the appellants / defendants in the US,
obtained registration of the mark ―ALLROUND‖
―PROTECTION‖ disclaiming the word ―PROTECTION‖. The
same is indicative of the appellants/defendants admitted that
use of the word ―PROTECTION‖ as a suffix to the use of the
registered mark ―ALLROUND‖ not negating the use of the
trade mark. The same reasoning, of approbate and reprobate,
applied by the learned Single Judge, in our opinion, would
apply to this aspect as well.‖
CONCLUSION
44. Keeping in view the aforesaid findings, the I.A. 5564/2017 filed
by the defendants under Order 39 Rule 4 CPC is dismissed and the ex
parte ad interim order dated 11th April, 2017 is confirmed till the
disposal of the present suit. Accordingly, I.A. 4261/2017 stands
disposed of.
45. Needless to say, the aforesaid findings are prima facie in nature
and shall not prejudice either of the parties at the stage of final hearing
of the present suit.
MANMOHAN, J
APRIL 15, 2019
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