2010 (12) TMI 1279 - HC - Companies Law

Summary

Issues Involved:
1. Permanent injunction, grant of damages, and delivery up of infringing material.
2. Alleged violation of proprietary rights and passing off.
3. Alleged concealment of material facts by the plaintiff.
4. Delay, laches, and acquiescence by the plaintiff.
5. Validity of the Assignment Deed and rights of the assignee.
6. Distinctiveness and likelihood of confusion between the trademarks.
7. Equitable relief and conduct of the parties.

Detailed Analysis:

1. Permanent Injunction, Grant of Damages, and Delivery Up of Infringing Material:
The plaintiff, Eveready Industries India Limited, sought a permanent injunction, damages, and delivery up of infringing material against the defendants for using the trademark EVEREADY and EVEREADY (device) in relation to hand tools, which the plaintiff claimed violated its proprietary rights. The plaintiff alleged that the defendants' use of the mark would cause confusion and dilute the distinctive character of its trademark.

2. Alleged Violation of Proprietary Rights and Passing Off:
The plaintiff argued that the defendants' adoption of the EVEREADY mark was in violation of its proprietary rights and constituted passing off. The plaintiff claimed that the defendants copied the essential and dominant features of the EVEREADY (device) to mislead consumers and take advantage of the plaintiff's established reputation.

3. Alleged Concealment of Material Facts by the Plaintiff:
The defendants contended that the plaintiff had suppressed material facts, specifically the knowledge of the defendants' registration of the EVEREADY trademark in class 8 since 1985-86. The court found that the plaintiff was aware of the registration by March 2000 but falsely claimed in the plaint that it first learned of the defendants' use in September 2008. The court emphasized that a party must come to the court with clean hands and disclose all material facts.

4. Delay, Laches, and Acquiescence by the Plaintiff:
The court noted that the plaintiff had not taken any action against the defendants' use of the EVEREADY trademark for over nine years, despite being aware of it since March 2000. This delay amounted to laches and acquiescence, which precluded the plaintiff from obtaining an interim injunction. The court cited several precedents to support the principle that delay and acquiescence can bar equitable relief.

5. Validity of the Assignment Deed and Rights of the Assignee:
The defendants argued that the Assignment Deed dated January 6, 2009, assigned the trademark EVEREADY from Defendant No. 2 to Defendant No. 1. The court found that the assignment was valid and that Defendant No. 1 had applied for registration of the assignment. The court held that the delay in registration by the Trademark Registry did not affect the assignee's right to use the trademark.

6. Distinctiveness and Likelihood of Confusion Between the Trademarks:
The court observed that the products sold by the defendants (screwdrivers and pliers) were different from those sold by the plaintiff (batteries, flashlights, etc.), and were sold through different trade channels. There was no reasonable possibility of confusion among consumers. The court also noted that the defendants had been using the trademark since 1985-86, and the plaintiff did not manufacture or sell similar products.

7. Equitable Relief and Conduct of the Parties:
The court emphasized that equitable relief, such as an injunction, requires the party seeking relief to come with clean hands and not withhold material information. The plaintiff's conduct, including the false statement about when it learned of the defendants' use of the trademark, disentitled it to an interim injunction. The court also considered the balance of convenience and the potential harm to the defendants if they were required to stop using the trademark after building their business over many years.

Conclusion:
The court denied the plaintiff's application for an interim injunction against the use of the EVEREADY trademark by the defendants in respect of screwdrivers and pliers. The court allowed the defendants to continue using the trademark for these products but restrained them from using the EVEREADY (device) as already ordered by the IPAB. The court directed the parties to proceed with the suit for final adjudication.