I.A. 1751/2020 (under Order XXXIX Rule 1 and 2 CPC) I.A. 4098/2020 (under Order XXXIX Rule 4 CPC-by defendant No.1)
1. The plaintiff Mittal Electronics through its partner have filed the present suit inter alia seeking a decree of injunction against the defendants, their directors, partners etc. from manufacturing, purchasing or selling the home appliances and other accessories under the trademark ‘Star SUJATA’ or ‘SUJATA’ or any other identical or deceptively similar mark or corporate name, domain name and email address as the same not only violated its statutory right by way of the registration of the trademark but also amounted to passing off the goods of the defendants as that of the plaintiff besides seeking cancellation of the domain name, declaring the plaintiff’s trademark as a Well Known mark and delivery up, rendition of accounts, damages etc.
2. In the suit, the plaintiff impleaded ‘SUJATA’ Home Appliances (P) Ltd. with its addresses at Delhi, Bhatinda, Punjab as defendant No.1, Gorani Industries Ltd. at Indore, Madhya Pradesh as defendant No.2, Asija Electricals at Sirsa, Haryana as defendant No.3 and Radiant Industries at Chandigarh as defendant No.4. It was stated that defendant No.1 was the main contesting defendant whereas the defendant Nos.2 and 4 were the manufacturer of defendant No.1 and defendant No.3 was the dealer of the goods of defendant No.1 under the infringing trademark.
3. In the suit, the plaintiff stated that the predecessor of the plaintiff adopted the trademark ‘SUJATA’ in the year 1980 which business was gradually expanded to electrical goods and home appliances including Mixer, Grinder, Grater, Shredder, Chopper, Mincer, Kneader, Atta Chakki, Electric Spin Drier, Electric Waste Dispenser, Electric Flat Iron, Heating, Cooling Ventilating, Steam Generating and Cooling Appliances. It was claimed that from the year 1991 to 2018 the plaintiff is the owner of the registered trademark ‘SUJATA’ in various classes including class-7, 8, 9, 11 and 35. Besides the registrations already there, several applications of the plaintiff for the registration of the trademark ‘SUJATA’ in different classes are also pending. Plaintiff claims that it has huge sales under the trademark ‘SUJATA’ and was also spending substantial amount on advertising.
4. Plaintiff pleaded in the plaint that the plaintiff came to know about the defendant No.1 using the mark ‘SUJATA’ for Geysers when one of the technician of the plaintiff visited a premises to repair the geyser and got to know that the Geyser under the trademark ‘SUJATA’ was not manufactured by the plaintiff. Consequently, when the suit came up before this Court for hearing on 7th February, 2020 this Court in I.A. 1751/2020 under Order XXXI Rule 1 and 2 CPC passed an ex-parte ad-interim injunction restraining the defendants from using ‘Star SUJATA’/‘SUJATA’ or any other identical or deceptively similar trademark in terms of prayer in para-36 of the application and also restrained the defendants from using the domain names www.sujatahomeappliances.com and www.sujataro.com and the email address till the next date of hearing. This Court also appointed Local Commissioners to visit the five premises mentioned above and the reports of the Local Commissioners were received therein.
5. On receipt of summons and pursuant to compliance under Order XXXIX Rule 3 CPC defendant No.1 filed an application being I.A.3612/2020 under Order XXXIX Rule 4 CPC on 11th March, 2020 before this Court. However, the said application could not be listed due to lock down, hence, the defendant No.1 filed fresh application being I.A. No.4098/2020 under Order XXXIX Rule 4 CPC which came up for hearing on 1st June, 2020. I.A. 3612/2020 was dismissed as withdrawn on 9th June, 2020 in view of a fresh application being I.A. No.4098/2020 for the same relief being filed. The defendant No.1 sought variation of the interim injunction granted by this Court and pointed out that the plaint filed by the plaintiff suffers from suppression of material facts as Mr.Rajesh Kumar Bansal, Director of defendant No.1 started his business, trading as Luxmi Enterprises based in Bhatinda in the year 2008 which was then a proprietorship firm and was manufacturing and selling water purifiers under the brand name ‘SUJATA’ primarily in the State of Punjab. Rajesh Kumar Bansal had been granted trademark registration under application No.2337951 whereby the device mark ‘SUJATA’ was registered in favour of Rajesh Kumar Bansal trading as Luxmi Enterprises under class-11 in respect of water purifiers, RO system, water filters w.e.f. 25th May, 2012. The defendant No.1 also placed on record invoices relating to its sale of water purifiers and RO systems under the brand name ‘SUJATA’ since the year 2013.
6. It is the case of the defendant No.1 that to expand the business, the defendant No.1 company was incorporated comprising of only two Directors namely Mrs.Mamta Bansal and Mrs.Sampada Bansal, that is wives of Rajesh Kumar Bansal and his brother. Copy of the license agreement dated 25th December, 2017 entered into between Rajesh Kumar Bansal and defendant No.1 company was also placed on record. It is further stated that in the year 2018 since Mrs.Mamta Bansal died, she was replaced by her son Shubham Bansal and finally Rajesh Kumar Bansal and his brother were included as Directors of defendant No.1. In the application for registration Rajesh Kumar Bansal, trading as Luxmi Enterprises had clearly stated user of the trademark ‘SUJATA’ since 1st April, 2008.
7. According to defendant No.1, the plaintiff is selling only juicer, mixer, grinders and geysers despite the fact that the plaintiff has got registration in various classes and is thus squatting on the trademark without using the same. It is clearly stated that the plaintiff has never sold water purifier, RO systems or water filters for which the defendant No.1’s user under the trademark ‘SUJATA’ is prior in time hence the fact that defendant No.1 has a registration in its favour and was the prior user of the mark 'SUJATA' in respect of Water Purifiers, RO Systems and Water Filters was concealed from this Court when an ex-parte ad-interim injunction was sought.
8. By I.A. No.4098/2020 under Order XXXIX Rule 4 CPC the defendant No.1 only seeks modification of the order dated 7th February, 2020 allowing the defendant No.1 to manufacture, sell, offer for sell, advertise its product namely water purifiers, water filters and RO systems under the trademark ‘SUJATA’ and does not seek vacation of the entire ex parte ad interim order in respect of other goods and also seeks release of the goods seized and sealed by the Local Commissioners besides seeking cost.
9. Contentions of learned Senior Counsel on behalf of the plaintiff is that the plaintiff and defendant No.1 are using the trademark ‘SUJATA’ for sale of home and kitchen appliances and the goods of the plaintiff and defendant No.1 are allied and cognate goods even if defendant No.1 was using the mark for the purpose of water purifiers, water filters and RO systems. The said goods are used by the same consumers in the same location and are sold through the same outlet. Hence the plea of defendant No.1 that the goods of the plaintiff and defendant No.1 are entirely different is incorrect. Defendant No.1 adopted the trademark ‘SUJATA’ which is identical to the plaintiff’s prior adopted and registered trademark ‘SUJATA’ and thus the adoption of the defendant No.1 of the trademark ‘SUJATA’ was dishonest and caused serious prejudice and damages to the plaintiff. Rebutting the arguments on behalf of defendant No.1, learned Senior Counsel for the plaintiff submits that the plaintiff has adopted the mark ‘SUJATA’ in the year 1980 and the first registration was granted in favour of the plaintiff on 22nd April, 1991. Plaintiff has filed documents as far back as November, 1988 to show the sales of its product under the trade name ‘SUJATA’ and that the plaintiff is heavily investing on advertisements in prominent newspapers, magazines, TV advertisements as well as international cricket matches. Case of defendant No.1 on the other hand is claim of user only since 2008 by Luxmi Enterprises and the first invoice placed is of June, 2013. Thus the user of the plaintiff is long before the defendant No.1 in respect of similar, allied and cognate goods. In view of the prior adoption of the mark, the order of injunction passed by this Court is completely justified in terms of the decisions reported as 2002 (3) SCC 65 Lakshmikant V. Patel vs. Chetanbhai Shah, 2016 (2) SCC 683 S.Syed Mohindeen vs. P. Sulochana Bai, 1989 ILR (1) Delhi 115 Hindustan Pencils vs. India Stationary Products and 1996 (16) PTC 160 (Del) Aktiebolaget SKF Vs. Rajesh Engineering.
10. The defendant No.1 not only adopted ‘SUJATA’ but ‘Star SUJATA’ after the plaintiff used Star device along with its mark. The trademark application of Rajesh Kumar Bansal for ‘Star SUJATA’ in class-11 was rejected on account of prior registered trademark of the plaintiff and the said order of the Registrar had attained finality as neither the defendant No.1 nor Rajesh Kumar Bansal challenged the same. The Registrar ought to have refused the registration of the mark ‘SUJATA’ also to Rajesh Kumar Bansal which has been wrongly granted. Plaintiff has preferred cancellation petition with requisite fees prior to the service of the application under Order XXXIX Rule 4 CPC filed by defendant No.1 with the Registrar of Trademarks. The plaintiff has made out a substantial case for cancellation of the registration before the Registrar granted in favour of Rajesh Kumar Bansal Proprietor M/s Luxmi Enterprises. Hence the interim order passed by this Court is justified under Section 124(5) of the Trademarks Act (in short ‘TM Act’).
11. Defendant No.1 has not provided details of its sale which would justify that with the use by the defendant No.1 the mark SUAJATA is being associated with defendant No.1. Since the identity of the mark, identity of the goods and identity of the manner have been established in favour of the plaintiff, the order of ex-parte ad-interim injunction passed by this Court was fully justified as held in the decisions reported as 2004 (76) DRJ 1616 Dr.Reddy’s Laboratories Ltd. vs. Reddy Pharmaceuticals Ltd., 237 (2017) DLT 23 FDC Ltd. vs. Docsuggest Healthcare Services Pvt. Ltd. & Ors., 149 (2008) DLT 46 Larsen & Toubro Ltd. vs. Lachmi Narain Trades & Ors. and 2013 (137) DRJ 1273 Malhotra Book Depot & Ors. vs. MBD Electronics Pvt. Ltd.
12. Plaintiff is already into the business of home appliances and kitchen appliances and having registration of the mark ‘SUJATA’ in various classes including classes relating to water purifiers, RO systems and water filters. The plaintiff is at liberty to use the same as and when it deems fit. Defendant No.1 is not entitled to protection as registered proprietor under Section 28 (3) and Section 30 (2) (e) of the TM Act. The license agreement between Rajesh Kumar Bansal and Defendant No.1 is not a stamped document and hence not reliable and fully suspect and in any case in terms of Section 35 of the Indian Stamp Act, the license agreement cannot be relied upon for any purposes. Reliance is placed on the decision reported as 2011 (14) SCC 66 SMS Tea Estates vs. Chandimari Tea Co.
13. Reliance of learned counsel for defendant No.1 on the decision reported as 2018 (9) SCC 183 Nandhini Deluxe vs. Karnataka Co-operative Milk Producers Federation Ltd. is misconceived as the said decision was considering the decision of IPAB in proceedings in opposition to the registration of the trademark and the Supreme Court specifically noted that it was not looking into the issue of injunction. The present action is under Section 29 of the TM Act wherein the legal grounds and applicable principles are entirely different from those under Section 11 of the TM Act as also held in the decision reported as 1997 (4) SCC 201 Vishnudas Trading vs. Vazir Sultan Tobacco Co. Nandhini Deluxe (supra) was a case of honest and concurrent user of the junior user and the two businesses were entirely distinct. The goods in question in Nandhini Deluxe (supra) were found to be entirely distinct being restaurant and milk co-operation and the respondent therein was a public corporation. In the present case it is admitted case of defendant No.1 as per the opposition filed by M/s Luxmi Enterprises that the goods were admittedly similar, allied and cognate. The mark in that case was a generic name of a Goddess and the two label marks in Nandhini Deluxe (supra) were entirely different so that there was no chance of confusion in the mind of ordinary customers. Thus the principles laid down by the Supreme Court in Nandhini Deluxe (supra) or Vishnudas Trading (supra) would not be applicable to the facts of the present case. Allegation of defendant No.1 that the plaintiff is squatting over the registered mark is incorrect and bereft of any supporting material. In any case the ground of non-use by the plaintiff is not relevant for the present action under Section 29 of the TM Act.
14. Defendant No.1 and its purported licensor have not filed any proceedings despite being aware of the registration of the plaintiff thereby estopping the defendant No.1 who today alleges non-use of the registered mark by the plaintiff. The plaintiff is not only entitled to an injunction qua the trademark ‘SUJATA’ used by defendant No.1 but also in respect of ‘SUJATA’ used as corporate name by the defendant No.1. Reliance is placed on the decision as ILR (1997) 1 Delhi 64 Montari Overseas Ltd. vs. Montari Industries Ltd. and Malhotra Book Depot (supra). The use of registered mark of the plaintiff as the corporate name of defendant No.1 clearly contravenes Section 29 (6) of the TM Act.
15. It is vehemently contended that the plaintiff has not concealed any material fact before this Court. Defendant No.1 is not the proprietor of the mark ‘SUJATA’ and is only a licensee of one M/s Luxmi Enterprises in whose favour the mark ‘SUJATA’ has been registered for water purifiers, water filters and RO systems. The plea of defendant No.1 that the plaintiff in the suit concealed material facts and on a mere due diligence it would have been evident that one of the Directors of defendant No.1 being Rajesh Kumar Bansal was the owner of the registered trademark is unsubstantiated. Further it was not Luxmi Enterprises but Rajesh Kumar Bansal who had filed the opposition in respect of the plaintiff’s trademark, the addresses of Rajesh Kumar Bansal and defendant No.1 of Bhatinda are different. The packaging of the products, leaflets and the website of defendant No.1 carried only the Delhi address which was not available in the Ministry of Corporate Affairs (in short ‘MCA’) records. Thus it was difficult to co-relate that the Rajesh Kumar Bansal of defendant No.1 was the same Rajesh Kumar Bansal of Bhatinda. Defendant No.1’s reliance on the decisions reported as 150 (2008) DLT 458 Micolube India Ltd. vs. Maggon Auto Centre & Ors. and Travellers Exchange Corporation Ltd.& Ors. vs. Celebrities Management Pvt. Ltd., CS (COMM) 51/2016 dated 9th May, 2016 is misplaced for the reason that the Court in the said decisions was concerned with the owner of the trademark and not an alleged licensor as in the present case. It is also contended that since the defendant No.1 is violating orders of this Court constraining the plaintiff to file application under Order XXXIX Rule 2A CPC, the application of defendant No.1 under Order XXXIX Rule 4 CPC be dismissed. Reliance is placed on the decision reported as ILR (1980) I Delhi 476 Kashmere Gate Charitable Trust vs. MG Shahani & Co.
16. Opposing the arguments on behalf of the plaintiff, learned counsel for the defendant No.1 vehemently contends that details of registration of the device mark in class-11 over ‘SUJATA’ by its licensor Rajesh Kumar Bansal through M/s Luxmi Enterprises as well as the details of user of the mark by its licensor since 1st April, 2008 have been accepted by the Trademarks Registry as is evident from the document filed at page No.37 of the defendant No.1’s documents. Till date the plaintiff is not manufacturing or selling water purifiers, water filters and RO systems. The plaintiff has not filed one single document showing manufacture or sale of ‘SUJATA’ for water purifiers, water filters and RO system and the documents filed relate only to juicer, mixer, grinder and/or juicer-mixer-grinder.
17. The trademark application was filed by Rajesh Kumar Bansal trading under Luxmi Enterprises on 25th May, 2012 and was granted on 8th April, 2014. This certificate of registration is a public document and in case slight due diligence had been done by the plaintiff, it would have had the knowledge of defendant's registration of the mark. Further the plaintiff did not oppose the registration of the mark ‘SUJATA’ in favour of Rajesh Kumar Bansal nor filed rectification after the registration of the mark despite this fact having come to the notice of the plaintiff when the defendant No.1 applied for the mark ‘Star SUJATA’. The rectification petition has now been filed on 7th March, 2020, thus the averment of the plaintiff that it came to know about the defendant No.1’s mark only after the service of the application under Order XXXIX Rule 4 CPC is incorrect. Defendant No.1 has placed on record invoices of its licensor from June, 2013 to show the use of device mark ‘SUJATA’ continuously in relation to water purifiers, water filters and RO system besides the brochures. The license agreement entered into between Rajesh Kumar Bansal with defendant No.1 on 25th December, 2017 has also been placed on record and the same captures the consideration of license fee being low and fixed at Rs.5,000 since the defendant No.1 was a family entity of the licensor and the licensor was also directly involved in the running of the affairs of the defendant No.1. Further the master data of defendant No.1 is a public record available online which shows Rajesh Kumar Bansal as one of the Directors.
18. Plaintiff's trademark application in class-11 for its mark ‘SUJATA’ filed on 28th July, 2014 was on ‘proposed to be used’ basis which clearly shows that the defendant No.1’s user for mark ‘SUJATA’ in class-11 was prior in time and despite advertisement of the said mark, the plaintiff never opposed the registration of the said device mark ‘SUJATA’ in favour of Rajesh Kumar Bansal in relation to water purifiers, water filters and RO system. Rajesh Kumar Bansal, the licensor on 21st June, 2016 had objected to the plaintiffs registration of the trademark, this opposition is specifically within the knowledge of the plaintiff which fact has been concealed in the present suit. The Plea of the plaintiff that it could not have known that Rajesh Kumar Bansal was the Director of present Defendant No.1 is sham argument as the master data of the defendant No.1 clearly shows that Rajesh Kumar Bansal is one of the Directors. Both Luxmi Enterprises and defendant No.1 have registered addresses at Bhatinda with Rajesh Kumar Bansal as the common link and the plea of different addresses of Luxmi Enterprises and Rajesh Kumar Bansal being taken is an act of gross concealment and suppression. Further the plaintiff also filed opposition to the defendant No.1’s two trademark application being 4282373 and 4282374 in class-11 on 6th February, 2020. In the said notices of opposition the plaintiff clearly refers to Mr.Rajesh Kumar Bansal and M/s Luxmi Enterprises. Thus now to say that the plaintiff was not aware of the link between Luxmi Enterprises and Rajesh Kumar Bansal or between Sujata Home Appliances and Rajesh Kumar Bansal is only a mala fide conduct. The defendant No.1 is not seeking vacation of the ex-parte ad-interim injunction in totality but seeking the modification thereof in terms of the provisions of Order XXXIX Rule 4 CPC. Referring to the order of this Court dated 7th February, 2020, it is stated that from the order itself it is evident that in the product list of the plaintiff there is no mention of water purifiers, water filter and RO system and since the plaintiff was not dealing in water purifiers, water filter and RO system, thus this Court ought not have injuncted the defendant No.1 to that extent. Defendant No.1 by this application only seeks modification of the ex-parte ad-interim injunction to the extent permitting the defendant No.1 to manufacture, sell, offer for sale, advertise its product namely Water Purifiers, Water Filters and RO System, the limited registration granted in favour of the defendant No.1 under the mark ‘SUJATA’. The claim of the defendant No.1 at this stage pending disposal in the suit is only vacation of the stay qua the products water purifier, water filters, RO system in which admittedly till date the plaintiff has not dealt with by either manufacturing or selling the same. Referring to Order XXXIX Rule 4 CPC learned counsel for the defendant No.1 states that in case of suppression and concealment there is a mandate on the Court to vacate the ex parte ad interim order unless the Court records its reason as to why such vacation is not necessary in the interest of justice. The second proviso to Order XXXIX Rule 4 CPC is irrelevant to the facts of the present case. In terms of the mandate under the first proviso to Order XXXIX Rule 4 CPC an ex-parte ad-interim order is liable to be vacated in its entirety. In any case the modification as sought by defendant No.1 is required to be allowed. Reliance is placed on the decision reported as AIR 1994 SC 853 S.P. Chengalvaraya Naidu (Dead) by L.Rs. vs. Jagannath (Dead) by L.Rs. and Ors. Since the plaintiff has approached the Court on the basis of a false suit, the suit of the plaintiff is liable to be dismissed with permission to defendant No.1 to resume sale of water purifiers, water filters and RO system covered by its device trademark registration No.2337951 on ‘SUJATA’ in class-11.
19. A perusal of the para-4 of the plaint itself would reveal that the defendant No.1 never opposed the trademark registration application of the plaintiff except application No.2782142 for STAR SUJATA since the same was for proposed use of the mark in relation to water purifiers, water filter sand RO system. At the time of filing the opposition on 21st June, 2016 the defendant No.1 was already registered proprietor in class-11 of the mark ‘SUJATA’ and was a prior-cum-sole user of the mark ‘SUJATA’ in relation of water purifiers, water filters and RO system. The defendant No.1’s seniority and exclusivity of the use of the mark ‘SUJATA’ in relation to water purifier, water filter and RO system is irrefutable since even as on today the plaintiff is not selling these three products and it is only defendant No.1 who has used said mark for the purpose of water purifier, water filters and RO system for the last 12 years prior to the institution of the suit and in any case has invoices for the last seven years from the filing of the suit. The two examination reports relied by the plaintiff in respect of other trademark applications of Rajesh Kumar Bansal being 3090601 and 3090602 relate to heating and cooling apparatuses such as geysers and rods in calss-11.
20. Distinguishing the decisions relied upon by the learned counsel for the plaintiff, that is, MANU/DE/2036/2005 Anil Krishna Tandon vs. State, AIR 2006 Cal 301 Veer Probhu Marketing Limited and Ors. vs. National Supply Corporation and Ors and 2012 (2) CHN 436 (MANU/WB/1008/2011) Sailendra Nath Patra Vs. Geetanjali Manna and Ors. it is contended that the these decisions are inapplicable to the facts of the present case. Reliance is placed on the decision in SMS Tea Estates (supra).
21. Contention of learned counsel for the plaintiff that the license agreement is inadmissible due to absence of stamp is contrary to the requirement of Section 35 of the Stamp Act. Since inadequate stamping is a curable defect the document can be considered at the stage of interim injunction. Reliance is placed on the decisions reported as 2009 (39) PTC 347 (Del) Sun Pharmaceuticals Industries Ltd. vs. Cipla Limited, MANU/WB/0203/2009 GTZ (India Pvt. Ltd.) vs. Power Electronics Engineers and Ors. and AIR 2019 Bom 149 Gautam Landscapes Pvt. Ltd. & Ors. vs. Shailesh S. Shah & Ors. The allegation that the license agreement is forged and fabricated is without any basis.
22. Learned counsel for the defendant No.1 also states that the plaintiff has filed indiscriminate documents during the course of hearing and the present suit being a commercial suit no additional documents could be filed beyond 30 days that too without seeking leave of the Court.
23. Though the plaintiff had challenged the defendant No.1’s validity of registration however, the same has to be in accordance with Section 124 of the TM Act and since the suit has been filed, only after this Court returns a finding of a prima facie case in favour of the plaintiff that the application for cancellation of the trademark of the defendant No.1 would be maintainable. Reliance is placed on the decision reported as 2018 (73) PTC (15) SC Patel Field Marshal Agencies and Ors. vs. P.M. Diesels Ltd. and Ors.
24. It is contended that the arguments of learned counsel for the plaintiff on the invalidity of the trademark registration of the defendant No.1 are untenable for the reason plaintiff has never actually used the mark ‘SUJATA’ in the context of water purifiers, water filter and RO systems despite having applied for the mark on 28th July, 2014. Whereas the licensor of defendant No.1 applied for the trademark registration of the mark ‘SUJATA’ on 25th May, 2012 and was granted the same on 8th April, 2014 with the user date of 1st April, 2008 and atleast invoices from June, 2013. No material has been placed on record to show that there has been actual confusion or deception in relation to water purifiers, water filter and RO systems and the plaintiff is clearly a squatter of the mark 'SUJATA' in relation to water purifiers, water filters and RO systems under class-11 as it has neither used the mark for the said goods since 2014 nor has shown any intention to use the mark for the said goods. Thus the grant of registration in favour of Rajesh Bansal in class-11 for the said goods is perfectly valid in terms of the law laid down in Nandhini Deluxe (supra).
25. Contention of learned counsel for the plaintiff that the decision in Nandhini Deluxe (supra) is not applicable to the facts of the present case as the present suit relates to infringement and passing off is wholly misconceived. On a comparison it would be found that the Supreme Court in Nandhini Deluxe (supra) compared the two business entities and the audience they cater to and quoting Vishnudas Trading (supra) in para-30 held that it was possible for a subsequent entity to obtain a registration in respect of specific goods within a certain class even if there exists a registration on an identical or similar trademark which covers the entire class, if it is established that the prior registered proprietor had no intention of using the mark in respect of the specific goods sought to be registered by the subsequent applicant. From the combined reading of Vishnudas Trading (supra) and Nandhini Deluxe (supra) it is evident that it is not necessary for the subsequent user to first apply for limiting the earlier registration to those goods which were being used by the prior registered proprietor before filing an application for registration in respect of the excluded goods. As a matter of fact in Nandhini Deluxe (supra), it was a prior registered proprietor who objected to the application of the subsequent user, that is, the restaurant and not vice-versa, whereas in the present case plaintiff never objected to Rajesh Kumar Bansal’s trademark application No.2337951 on ‘SUJATA’ in class-11 for water purifiers, water filters and RO systems nor did the plaintiff file a cancellation petition until 7th March, 2020. Case of defendant No.1 is covered by the law laid down in the decisions of the Supreme Court in Nandhini Deluxe (supra) and Vishnudas Trading (supra).
26. The test of deceptive similarity and confusion under Section 9(2) (a) and 11(2) of the TM Act are identical to the test laid down under Section 29(1) and (2) of the TM Act. The decision in Nandhini Deluxe (supra) has been applied by various High Courts in context of infringement suits e.g. Technova Tapes (India) Pvt. Ltd. vs. Technova Imaging System (P) Limited MANU/TN.0959/209 and Liberty Footwear Company vs. Liberty Innovative Outfits Limited and Ors, MANU/DE/1105/2020: CS (COMM) 637/2019 of the Delhi High Court decided on 26th May, 2020. The decisions relied upon by the learned counsel for the plaintiff were prior to the decision rendered in Nandhini Deluxe (supra) and Vishnudas Trading (supra) and as regards the issue of squatting of trademark is concerned Nandhini Deluxe (supra) and Vishnudas Trading (supra) still occupy the field.
27. It is further contended that the plea of passing off by the plaintiff which is independent of infringement also cannot be sustained for the reason the plaintiff has not filed a single document to demonstrate that the plaintiff is manufacturing/selling water purifiers, water filters and RO system and has thus established goodwill and reputation for the said products whereby an inference can be drawn that the defendant No.1 is riding on the goodwill and reputation of the plaintiff is passing off its goods as that of the plaintiff. The plaintiff has yet not secured a well known registration under Section 124 of the Trademarks Rules, 2017 in order to demonstrate its well known status. In any case the claim of being well known must be tested at the time of adoption of the mark by the defendant No.1 and admittedly, when the defendant No.1 adopted the trademark ‘SUJATA’ for the water purifiers, water filters and RO system, the plaintiff was not even using the said mark for these goods so cannot be considered to be a well known trademark in the said goods.
28. Heard learned counsels for the parties. From the documents filed by the parties the following facts emerge:
a. That the registration of the defendant for the mark ‘SUJATA’ in application No.2337951 w.e.f. 25th February, 2012 was sought with the user as 1st April, 2008.
b. The trademark was first used by Rajesh Kumar Bansal trading under the name Luxmi Enterprises for the products water purifiers under the brand name ‘SUJATA’ from 1st April, 2008.
c. The invoices in this regard have been placed by the defendants from the year 2013 when the plaintiff had not even applied for the registration of the mark and when the plaintiff applied for the registration of the mark in Class-11 it was on proposed to be used basis.
d. Registration of Rajesh Kumar Bansal in Class-11 is for specific goods, that is, water purifiers, RO systems and water filters.
e. Section 31 of the TM Act provides that the registration of the trademark is a prima facie evidence of its validity. Defendant has placed on record documents to show that earlier as Luxmi Enterprises and now as defendant No.1, defendant is selling water purifiers, RO system and water filters all along since the year 2013.
f. The plaintiff’s documents evidences business only in respect of juicer, juicer-mixer-grinder and grinders whereas the plaintiff claims to have registration in all classes in respect of its various goods. Not even one document has been placed on record by the plaintiff to show that it has ever sold water purifiers, RO systems and water filters.
g. Application of the plaintiff of registration in class-11 was filed only in July, 2014 being application No.2782142.
h. Though in the plaint the plaintiff has taken the plea that the defendant No.1 sold geyser under the mark 'SUJATA' however, no document has been filed to show that the customer bought the geyser on the confusion that it was produced by the plaintiff.
29. As noted above vide I.A. 4098/2020 defendant No.1 is seeking modification of the ex-parte ad-interim injunction granted by this Court vide order dated 7th February, 2020 to the limited extent that the same be not applicable to the defendant-1’s three products, that is, water purifiers, water filters and RO systems, thereby permitting the defendant No.1 company to manufacture, sell, offer for sell, advertise the water purifier, RO systems under its registered mark ‘SUJATA’, release of goods/products pertaining to water purifiers, RO systems seized and sealed by the local commissioners pursuant to order dated 7th February, 2020 and imposition of cost on the plaintiff for having obtained the order dated 7th February, 2020 by suppressing material facts and misleading this Court into passing the ex-parte ad-interim injunction.
30. Order XXXIX Rule 4 CPC reads as under:
TEMPORARY INJUNCTIONS AND INTERLOCUTORY ORDERS
1. xxx xxx
2. xxx xxx
4. Order for injunction may be discharged, varied or set aside.- Any Order for an injunction may be discharged, or varied, or set aside by the Court, on application made thereto by any party dissatisfied with such order:
Provided that if in an application for temporary injunction or in any affidavit supporting such application, a party has knowingly made a false or misleading statement in relation to a material particular and the injunction was granted without giving notice to the opposite party, the court shall vacate the injunction unless, for reasons to be recorded, it considers that it is not necessary so to do in the interests of justice:
Provided further that where an Order for injunction has been passed after giving to a party an opportunity of being heard, the Order shall not be discharged, varied or set aside on the application of that party except where such discharge, variation or setting aside has been necessitated by a change in the circumstances, or unless the court is satisfied that the Order has caused undue hardship to that party.
31. A perusal of the proviso to Order XXXIX Rule 4 CPC reveals that in case a false or misleading statement is made in relation to material particulars, resulting in the grant of injunction, without notice to the opposite party, the Court is mandated to vacate the said injunction unless for reasons to be recorded it considers that it is not necessary so to do in the interest of justice. The said order can also be modified/vacated even if passed after providing opportunity to the other party if the same causes undue hardship to that party. In Sailendra Nath Patra (supra) the Division Bench of the Calcutta High Court held that even dehors the proviso to Order XXXIX Rule 4 CPC brought by the Amendment Act, 1976 the Court had the power to vary, discharge or set aside the order of injunction at the instance of any party to the said suit if the interest of justice so warranted.
32. It is a matter of fact that in the suit, the plaintiff did not plead that Rajesh Kumar Bansal, the sole proprietor of M/s Luxmi Enterprises was a registered proprietor of the trademark ‘SUJATA’ in respect of a category of goods, that is, water purifiers, water filters and RO system. The plea taken by the plaintiff is that despite due diligence there was no way that the plaintiff would have come to know that the same Rajesh Bansal who is the registered proprietor of the trademark ‘SUJATA’ for the three goods as mentioned above is the Director of defendant No.1. The grounds urged in this favour are that the application for registration was filed by Luxmi Enterprises and the address of Bhatinda of the defendant No.1 is also different. A perusal of the trademark registration granted vide application No.2337951 in class-11 in respect of water purifiers, RO systems and water filters noted the proprietor’s name as Rajesh Bansal trading as Luxmi Enterprises single firm and the proprietor’s address was Bengali Wali Gali, Near Bus Stand, Bhatinda-15001. The master data with the Registrar of Companies in respect of the defendant No.1 company, which is a public document filed by the defendant No.1 under the name Sujata Home Appliances Pvt. Limited clearly notes Rajesh Kumar Bansal as one of its Directors w.e.f. 1st October, 2019. Admittedly the suit has been filed by the plaintiff after 1st October, 2019. No doubt in the master data the registered address of Sujata Home Appliances Pvt. Limited, that is, defendant No.1 has been mentioned as Rajesh Kumar #12, Kamal Cinema Road, Bhatinda, Bathinda, Pb, 151001 IN, however, the fact that Rajesh Kumar Bansal was one of the directors of defendant No.1 was sufficient for the plaintiff to have carried out further investigation and found out whether it was the same Rajesh Bansal in whose favour registration of the mark 'SUJATA' has been granted, particularly in view of the fact that due to earlier objections and proceedings before the Trade Mark Registry, plaintiff was aware that one Rajesh Kumar Bansal through Luxmi Enterprises has a registration of mark 'SUJATA' in his favour.
33. Earlier knowledge of the plaintiff that mark 'SUJATA' was registered for water purifiers, water filters and RO systems, in favour of Rajesh Bansal, sole proprietor of Luxmi Enterprises is evident from number of documents. An application in opposition to the registration of the mark 'SUJATA' by the plaintiff in class-11 was filed by M/s Luxmi Enterprises having its registered address at Bengali Wali Gali, Near Bus Stand, Bhatinda and duly signed by Rajesh Bansal. Thus even if the said opposition was abandoned the fact that a registration in favour of Rajesh Bansal as sole proprietor of Luxmi Enterprises with address at Bhatinda exists was sufficient for the plaintiff to have conducted the due diligence as to the constitution of defendant No.1 before filing the present suit as noted above. It is clear that despite having knowledge that one Luxmi Enterprises through its sole proprietor Rajesh Bansal was the proprietor of the trademark ‘SUJATA’ in respect of water purifiers, RO systems and water filters which was at Bhatinda, the plaintiff did not reveal this fact in the plaint.
34. The plaint was filed on an ostensible complaint of a geyser, however, in the prayer clauses the products sought to be injuncted were the geysers, water purifiers, RO systems and the products juicer, mixer and grinders were noted thereafter despite the fact till date plaintiff has neither manufactured nor sold water filters, water purifiers and RO system, nor did the plaintiff make any claim whatsoever in plaint in respect of its user of the trade mark SUJATA qua water purifiers, RO Systems and water filters, thus there was no need for the plaintiff to seek protection in relation to these goods and that too prior to its products juicer, mixer and grinders. This conduct of the plaintiffs clearly shows the oblique manner in which the injunction was sought. In case the plaintiff had no knowledge that the defendant No.1 was not dealing in water purifiers, RO systems there was no way that the plaintiff out of the blue after the geysers would have listed the products water purifier, RO systems and only thereafter listed the products which the plaintiff is actually manufacturing and selling in the prayer clause. The plaint is thus a clear case of claver drafting.
35. At this stage it would be relevant to note the prayers in the suit wherein the goods water purifier and RO systems are mentioned in the prayer after Geysers in which the plaintiff was not dealing:-
(i) For a decree of permanent injunction restraining the defendants, their directors, partners, owners, dealers, distributors, agents, stockiest and servants from manufacturing, purchasing, getting it manufactured, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Geysers, Water purifiers, RO Systems, Ionizer, Vegetable Purifier, Juicer, Mixer, Grinder, Heating, Cooling, Ventilating, Steam Generating and Cooling Appliances and other home appliances and accessories thereof under the trade mark Star SUJATA/SUJATA or any other identical and/or deceptively similar mark to the trade mark SUJATA whether using independently or as part of the corporate name, domain name and E-mail address thereby amounting to infringement of the registered trade marks of plaintiff;
(ii) For a decree of permanent injunction restraining the defendants, their directors, partners, owners, dealers, distributors, agents, stockiest and servants from manufacturing, purchasing, getting it manufactured, selling, importing, exporting, offering for sale, advertising, directly or indirectly dealing in Geysers, Water Purifiers, RO Systems, Ionizer, Vegetable Purifier, Juicer, Mixer, Grinder, Heating, Cooling, Ventilating, Steam Generating and Cooling Appliances and other home appliances and accessories thereof under the trade mark Star SUJATA/SUJATA or any other identical and/or deceptively similar mark to the trade mark SUJATA whether using independently or as part of the corporate name, domain name and E-mail address thereby amounting to passing off of the goods and/or business of the defendant for those of the plaintiff.
36. In the decision reported as 2010 (4) SCC 728 Oswal Fats and Oils Limited vs. Additional Commissioner (Administration), Bareilly Division, Bareilly & Ors. the Supreme dealing with the solemn obligation of the parties to disclose all the facts held:
"19. It is quite intriguing and surprising that the lease agreement was not brought to the notice of the Additional Commissioner and the learned Single Judge of the High Court and neither of them was apprised of the fact that the appellant had taken 27.95 acres land on lease from the Government by unequivocally conceding that it had purchased excess land in violation of Section 154(1) of the Act and the same vested in the State Government. In the list of dates and the memo of special leave petition filed in this Court also there is no mention of lease agreement dated 15-10-1994. This shows that the appellant has not approached the Court with clean hands. The withholding of the lease agreement from the Additional Commissioner, the High Court and this Court appears to be a part of the strategy adopted by the appellant to keep the quasi-judicial and judicial forums including this Court in dark about the nature of its possession over the excess land and make them believe that it has been subjected to unfair treatment. If the factum of execution of lease agreement and its contents were disclosed to the Additional Commissioner, he would have definitely incorporated the same in the order dated 30-5-2001. In that event, the High Court or for that reason this Court would have non-suited the appellant at the threshold. However, by concealing a material fact, the appellant succeeded in persuading the High Court and this Court to entertain adventurous litigation instituted by it and pass interim orders. If either of the Courts had been apprised of the fact that by virtue of lease deed dated 15-10-1994, the appellant has succeeded in securing temporary legitimacy for its possession over excess land, then there would have been no occasion for the High Court or this Court to entertain the writ petition or the special leave petition."
37. In the decision reported as 2013 (2) SCC 398 Kishore Samrite vs. State of Uttar Pradesh & Ors. the Supreme Court in para 29 of the report culled out some of the principles that would govern the obligations of a litigant while approaching the Court for redressal of any grievance and the consequences of abuse of the process of the Court as under:-
1. Courts have, over the centuries, frowned upon litigants who, with intent to deceive and mislead the courts, initiated proceedings without full disclosure of facts and came to the courts with “unclean hands”. Courts have held that such litigants are neither entitled to be heard on the merits of the case nor are entitled to any relief.
2. The people, who approach the court for relief on an ex parte statement, are under a contract with the court that they would state the whole case fully and fairly to the court and where the litigant has broken such faith, the discretion of the court cannot be exercised in favour of such a litigant.
3. The obligation to approach the court with clean hands is an absolute obligation and has repeatedly been reiterated by this Court.
4. Quests for personal gains have become so intense that those involved in litigation do not hesitate to take shelter of falsehood and misrepresent and suppress facts in the court proceedings. Materialism, opportunism and malicious intent have overshadowed the old ethos of litigative values for small gains.
5. A litigant who attempts to pollute the stream of justice or who touches the pure fountain of justice with tainted hands is not entitled to any relief, interim or final.
6. The court must ensure that its process is not abused and in order to prevent abuse of process of court, it would be justified even in insisting on furnishing of security and in cases of serious abuse, the court would be duty-bound to impose heavy costs.
7. Wherever a public interest is invoked, the court must examine the petition carefully to ensure that there is genuine public interest involved. The stream of justice should not be allowed to be polluted by unscrupulous litigants.
8. The court, especially the Supreme Court, has to maintain the strictest vigilance over the abuse of process of court and ordinarily meddlesome bystanders should not be granted “visa”. Many societal pollutants create new problems of unredressed grievances and the court should endure to take cases where the justice of the lis well justifies it.
38. In the decision reported as MANU/DE/1814/2510 Charanjit Thukral & Ors. vs. Deepak Thukral & Ors. this Court following the decision of the Supreme Court reported as 2010 (2) SC 114 Dalip Singh vs. State of U.P. and Ors. held:
18. It is settled principle of law that a person who approaches the Court for grant of relief, equitable or otherwise, is under a solemn obligation to candidly disclose all the material/important facts which has bearing on the adjudication of the issues raised in the case. It is the duty of the party asking for an injunction to bring to the notice of the Court all facts material to the determination of his right to have injunction and it is not an excuse for him to say that he was not aware of the importance of any facts which he has omitted to bring forward. Where plaintiff does not act bona fidely and does not put every material facts before the Court, the Court is within its inherent power to refuse to grant him injunction, even though there might be facts upon which injunction might be granted. Conduct of the plaintiff is very material in bringing the case and disclosing the facts before the Court. plaintiff is required to make fullest possible disclosure of all material facts within his knowledge to the Court and if he does not make that fullest possible disclosure, he cannot obtain any advantage from the proceedings and is liable to be deprived of any advantage he might have already obtained by means of the order which has thus wrongly been obtained by him by concealment of material facts.
39. It is trite law when a suit is filed by concealment of material fact, the plaintiff is not entitled to the relief of injunction being a discretionary relief. Therefore,by concealing a material fact and adopting a clever drafting, knowing well that Rajesh Kumar Bansal was the proprietor of mark 'SUJATA' for water filters, water purifiers and RO system, the plaintiff sought and was granted ex parte ad interim injunction which is liable to be modified as per the proviso to Order XXXIX Rule 4 CPC on this count itself.
40. One of the objections of learned counsel for the plaintiff challenging the license agreement executed in favour of the defendant No.1 by Rajesh Kumar Bansal, one of its Directors is that the license agreement is not a stamped document and thus cannot be considered under Section 35 of the Indian Stamp Act, 1899.
41. Section 35 of the Stamps Act reads as under:
Section 35. Instruments not duly stamped inadmissible in evidence, etc. -No instrument chargeable with duty shall be admitted in evidence for any purpose by any person having by law or consent of parties authority to receive evidence, or shall be acted upon, registered or authenticated by any such person or by any public officer, unless such instrument is duly stamped:
(a) any such instrument 1[shall] be admitted in evidence on payment of the duty with which the same is chargeable, or, in the case of any instrument insufficiently stamped, of the amount required to make up such duty, together with a penalty of five rupees, or, when ten times the amount of the proper duty or deficient portion thereof exceeds five rupees, of a sum equal to ten times such duty or portion;
(b) where any person from whom a stamped receipt could have been demanded, has given an unstamped receipt and such receipt, if stamped, would be admissible in evidence against him, then such receipt shall be admitted in evidence against him on payment of a penalty of one rupee by the person tendering it;
(c) where a contract or agreement of any kind is effected by correspondence consisting of two or more letters and any one of the letters bears the proper stamp, the contract or agreement shall be deemed to be duly stamped;
(d) nothing herein contained shall prevent the admission of any instrument in evidence in any proceeding in a Criminal Court, other than a proceeding under Chapter XII or Chapter XXXVI of the Code of Criminal Procedure 1898 (V of 1898);
(e) nothing herein contained shall prevent the admission of any instrument in any Court when such instrument has been executed by or on behalf of the Government, or where it bears the certificate of the Collector as provided by section 32 or any other provision of this Act.
42. Undoubtedly the license agreement between Rajesh Kumar Bansal and defendant No.1 is not a stamped document, however, as noted in proviso (a) to Section 35 of the Indian Stamp Act, the non-stamping of an instrument is a curable defect and such instruments shall be admitted in evidence on payment of the duty with which the same is chargeable. Further the Full Bench of the Bombay High Court in Gautam Landscapes Pvt. Ltd. (supra) held that unstamping or insufficient stamping of the document containing the arbitration clause would not affect the grant of an interim relief under Section 9 of the Arbitration and Conciliation Act and the party cannot be put to disadvantage merely because of insufficiency of stamp on the agreement. In the present case also the suit is at the stage of grant of interim relief or the vacation thereof and not at the final stage after parties have led their evidences and duly exhibited admissible documents. Hence this Court finds no merit in the objection of the learned counsel for the plaintiff that the copy of the license agreement filed by Rajesh Kumar Bansal in favour of defendant No.1 cannot be looked into being an unstamped document.
43. Learned counsel for the plaintiff has seriously contested that the registration in favour of the defendant No.1 is invalid and as has also been challenged by the plaintiff under Section 124 of the Trademarks Act, hence the interim injunction granted in favour of the plaintiff is liable to be confirmed and not modified.
44. Section 124 of the Trademarks Act reads as under:
124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.-(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.
45. A perusal of Section 124 of TM Act reveals that only when prior to the filing of the suit, the proceedings of rectification of the register are pending with the Registrar or the Appellate Board that the Court is required to stay the suit pending disposal of the said proceedings. However, in case the validity of the registration of the trademark is challenged after filing of the suit, then only on the Court being satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trademark is prima facie tenable, that the said issue can be raised and in that case the proceedings before the Court have to be adjourned for a period of three months.
46. In Patel Field Marshal Agencies (supra) the Supreme Court held that in case where the issue of invalidity is raised or arises independent of a suit, prescribed statutory authority will be the sole authority to deal with the matter however, in a situation where the suit is pending (whether instituted before or after filing of a rectification application) exercise of jurisdiction by prescribed statutory authority is contingent on a finding of Civil Court as regards the prima facie tenability of the plea of invalidity.
47. In the present case, admittedly, the application seeking invalidity of the registration of the mark 'SUJATA' in favour of Rajesh Kumar Bansal has been filed by the plaintiff only after the filing of the suit. The suit having been filed prior to the rectification application filed by the plaintiff qua the defendant’s registration for the trademark 'SUJATA' for water purifiers, RO system and water filter unless there is a prima facie finding of invalidity of the trademark by this Court, plaintiff can derive no advantage from Section 124 of the Trade Marks Act.
48. Having held that the plaintiff concealed material fact of Rajesh Kumar Bansal's proprietorship of mark 'SUJATA' in respect of water filters, water purifiers and RO Systems from this Court at the time of grant of interim injunction, thus the interim injunction is liable to be modified, this Court is required to examine the other contention of learned Senior counsel for plaintiff that the interest of justice still demands non-modification of the interim order in case the plaintiff makes out a strong prima facie case in its his favour, would suffer an irreparable loss in case the interim injunction is modified and the balance of convenience also lies in favour of the plaintiff as held by this Court in Anil KrishnaTandon (supra)
49. In Dr.Reddy’s Laboratories Ltd. (Supra) relied upon by learned counsel for the plaintiff, this Court noted that the plaintiff therein was engaged in manufacture and sale of pharmaceutical products for the last over 19 years and was also having overseas operations in marketing the said products under the trademark ‘Dr.Reddy’s’. The registration processes of the trademark ‘Dr.Reddy’s’ had started in various countries including in India however, in India by that time it was not registered. Further the defendant therein was not a registered owner of the mark much less in class of goods it was supplying. There was a past relationship between the plaintiff and defendant therein in as much as the defendant had been purchasing the bulk drugs from plaintiff since 1997 and at no stage it was manufacturing or marketing its own pharmaceutical preparations. Thus the activities of the defendant there were in the nature of distributor/agent of the plaintiff’s manufactured drugs without changing the packaging or the label. It is in the light of these facts, this Court held that the adoption of the mark by the defendant therein was dishonest. Not only the products of the defendant therein prominently displayed the trade name ‘Reddy’, the packaging of the drug was also similar to that of the plaintiff therein and the drug Omeprazole which the plaintiff was selling under the name OMEZ was being sold by the defendant under the name OMRE with similar design of packaging. This Court also noted that the malafides of the defendant therein were writ large as not only the defendant therein started using a similar trademark/trade name but also started using the Hyderabad address despite the fact that the defendant's registered office was in Delhi and the bills clearly mentioned that the customers were required to make payments at Delhi and disputes between the defendant therein and its customers were subject to jurisdiction of Delhi Courts. It is in light of these facts that this Court held that the adoption of the mark was dishonest and granted the injunction.
50. In Hindustan Pencils Pvt. Ltd. (supra) relied upon by learned counsel for the plaintiffs therein were proprietors of two registered trademarks, that is, the trademark NATRAJ with the device of Natraj claiming user since 22nd February, 1961 in class-16 relating to pencils, refills for propelling pens and pencils, pen sharpen, pens, fountain pens, erasers, pin clips and staples etc. and the device of NATRAJ for the same goods. The registration of the two marks was granted on 6th November, 1969 and 27th October, 1970. It was the case of the plaintiff therein that in the year 1985 it got to know that the defendants therein surreptitiously got registered a copyright of the label similar to that of the plaintiff in respect of the pins. The cartons of the defendant therein revealed that the defendants had not only used the registered name of the plaintiffs namely ‘NATRAJ’ but also the device of the ‘dancing Natraj’ which was identical to the dancing figure which had been registered in favour of the plaintiff therein. In Hindustan Pencil Pvt. Ltd. (supra) this Court further noted that where there is an honest, concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages and rendition of accounts but the relief of injunction should not be refused if it is found that the general public may be misled into buying the manufactured goods by the defendant thinking them to be the goods of the plaintiff.
51. In the present case despite the fact that defendant is selling its water filters, water purifiers and RO Systems under the mark 'SUJATA' at least since 2013, there is no material in the plaint that any customer was deceived into buying defendant's product as that of plaintiff except that now the plaintiff relies on the report of the local commissioner to claim confusion. In fact, as per the plaint, it is not the case of the plaintiff that it was even aware of the defendant No.1 manufacturing and selling the water filters, water purifiers and RO systems under the mark 'SUJATA', much less of any consequential confusion in the mind of the customers.
52. In FDC Limited (supra) relief upon by learned counsel for the plaintiff, this Court was dealing with pharmaceutical preparations and the plaintiff was the proprietor of the drugs prefixed with the trademark ZIFI. The defendant therein started using the mark ZIFFI. Though the trade of the defendant therein was of providing business of online appointment booking services in a quick, speedy and efficient manner to the customers intending to avail its services through the website. According to the defendant therein the term ZIFFI was derived from the word ‘Jiffy’ which means ‘very quick’ or ‘in a fraction of a second’. This Court held whether the two sets of goods or services are of the same description or not has to be decided on the basis of classification of goods and services and the test of similarity of goods is to be looked at from the business and commercial point of view. The factors relating to goods and services must required to be taken into account included their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Applying the said test it was held that the plaintiff therein was also using the said trademark in his business, website, services etc. thus use of the mark ZIFFI by the defendant would amount to infringement.
53. Thus applying the test laid down in FDC, even if the goods sold by plaintiff and defendant are in the same class but the goods are different inasmuch as the plaintiff sells mixer, grinders etc. and the defendant sells water purifiers, water filters and RO system, the only commonality of goods being geyser, for which the defendant does not seek modification of the interim order.
54. In Malhotra Book Depot (supra) the plaintiff was using the mark ‘MBD’ for its books whereas the defendant therein was using the mark ‘MBD Electronics’ though it was not dealing in electronic goods and was only trading in shares. This Court noting the test laid down in Larsen and Toubro Ltd. vs. Lachmi Narain Trades and Ors., 2008 (36) PTC 223 (Del) (DB) noted that the question was of one of the real likelihood of confusion or deception or deception amongst the customers and the resultant damages to the plaintiff. As noted above in the present case plaintiff has not been able to any single instance of confusion qua the products of the plaintiff and defendant except geysers because the goods of the plaintiffs and defendants though home appliances are different products and the plaintiff though having subsequent registration for the same class has not till date manufactured or sold water filters, water purifiers and RO systems.
55. In S.Syed Mohideen (supra) the Supreme Court held that owner of a registered trademark cannot sue for infringement of its registered trademark if the defendant also has a trademark which is registered, however, it has to be drawn in mind whether the trademark of the defendant therein would cause deception in the mind of the public at large and the plaintiff therein on the basis of prior user can make out the goodwill and reputation. It reiterated the principle of law that in the case of trademark, registration merely recognises the rights which are already pre-existing in common law. It was further held that where marks of both the parties are registered, the Court has to recognise the pre-existing right in common law and in case of conflict between the two registered marks, evaluation of the better rights in common law is essential. As noted above, the plaintiff's registration of mark 'SUJATA' for class 11 which include water filters, water purifiers and RO systems is subsequent and it has no common law right in the said mark qua these goods till date as the plaintiff has neither manufactured nor sold these goods till date.
56. In Montari Overseas Ltd., the Court was dealing with adoption of the name of the company by the defendant. In the present case defendant No.1 company was incorporated in the year 2017 and is not dealing with all the home appliances. But by I.A.No.4098/2020, the defendant No.1 is not seeking modification of the ex parte ad interim injunction on this count.
57. In the present case, despite knowing the registration of the mark ‘SUJATA’ in favour of Rajesh Kumar Bansal through Luxmi Enterprises since the year 2012, the plaintiff herein took no steps and in the garb that the defendant is manufacturing and selling geysers under the name ‘SUJATA’ has sought injunction qua the goods, that is, water purifiers, water filters and RO system despite the fact that till date there is no material that the plaintiff despite having received registration has manufactured or sold the water purifiers, water filters and RO systems under the mark 'SUJATA'. It is also not the case of the plaintiff in the plaint that in past seven years there has been any confusion in the mind of any customer qua plaintiff's and defendant's products.
58. Supreme Court in Vishnudas Trading as Vishnudas Kushandas (supra) relied upon by learned counsel for the defendant noting the rights of two registered properties of the same or similar marks and the distinction in various goods falling in the same class held:
47. The Respondent Company got registration of its brand name "Charminar" under the broad classification "manufactured tobacco". So long such registration remains operative, the Respondent Company is entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification "manufactured tobacco". Precisely for the said reason, when the Appellant made application for registration of quiwam and zarda under the same brand name "Charminar", such prayer for registration was not allowed. The Appellant, therefore, made application for rectification of the registration made in favour of the Respondent Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the Respondent Compan
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y, namely, cigarettes. In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other Article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific Article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade mark as envisaged in the Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration Under Section 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that Under Sub-section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression "goods" and "description of goods" appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other Sections e.g. goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act. 48. The "class" mentioned in the Fourth Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of Fourth Schedule of the Rules but within the said class, there are a number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles is intended, by specifically mentioning the names of such articles and by indicating the class under which such Article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other specific products made of "manufactured tobacco" as mentioned in Class 34 of Fourth Schedule of the Rules. In our view, the contention of Mr.Vaidyanathan that in view of change in the language of Section 8 of the Trade Marks Act as compared to Section 5 of the Trade Marks Act, 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and Fourth Schedule of the Rules. (Emphasis Supplied) 59. Following the principle laid down by the Supreme Court in Vishnudas Trading (supra), Supreme Court in Nandhini Deluxe (supra) held that the principle of law laid down by the Supreme Court while interpreting the provisions of Trade and Merchandise Act, 1958 in Vishnudas Trading's case is equally applicable as it is unaffected by the Trade Marks Act, 1999 inasmuch as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. Supreme Court referring to Section 11 of the Trade Marks Act which prohibits registration of the mark in respect of similar goods or different goods held that the provisions of the Section does not mean the same class of goods. Supreme Court further held that the use of 'NANDHINI' by the appellant therein in respect of its different goods would not be detrimental to the purported distinctive character or repute of the trade mark of the respondent. It was observed that the appellant therein had adopted the trade mark in respect of the items sold in its restaurants way back in the year 1989 which was soon after the respondent had started using the trade mark 'NANDINI' and that there was no document or material produced by the respondent therein to show that by the year 1989 the respondent therein had acquired distinctiveness in respect of this trade mark within four years of the adoption thereof. Therefore, the case was of a concurrent user of the trade mark by the appellant therein. 60. From the facts as noted above, it is evident that even though plaintiff is the prior user of the mark 'SUJATA' but for the goods mixer, grinders, blenders, however, for the goods water filters, water purifiers and RO System, Rajesh Kumar Bansal the licensor and director of defendant No.1 is the prior registered owner of the mark SUJATA and also the prior user, in fact the only user as till date plaintiff has not used the mark 'SUJATA'for water filters, water purifiers and RO system. Though the goods of the plaintiff and defendant may fall in same broad classification of home appliances are different goods used for different purposes. 61. In view of the discussion, the ex parte ad interim injunction dated 7th February, 2020 is liable to be modified for the concealment of material facts by the plaintiff as also on merits. The applications are disposed of granting injunction in favour of plaintiff and against defendants in terms of prayer in para 36 of I.A.No.1751/2020 except for water filters, water purifiers and RO Systems, which the defendants can continue to manufacture and sell under the mark 'SUJATA'. The goods seized by the learned Local Commissioner and on superdari with defendants are also released in their favour.