2009 (10) TMI 960 - HC - Companies Law

Summary

Issues Involved:
1. Proprietorship of the Trademark 'PRINCE'
2. Suppression of Material Facts by the Plaintiff
3. Prior Use of the Trademark by the Defendants
4. Equitable Relief of Injunction
5. Vested Rights under the Trademarks Act

Issue-wise Detailed Analysis:

1. Proprietorship of the Trademark 'PRINCE':
The plaintiff claimed that the trademark 'PRINCE' had been used since April 2001 and was registered on 27.09.2004. The defendants contested this, asserting that they had adopted the trademark/trade name 'PRINCE Auto Industries' in 1998. The court noted that the defendants' use of the business name 'PRINCE Auto Industries' predates the plaintiff's adoption of the trademark, thus raising questions about the plaintiff's claim to proprietorship.

2. Suppression of Material Facts by the Plaintiff:
The court found that the plaintiff suppressed material facts, particularly the existence of Stockiest Agreements dated 19.08.2002 and 20.09.2002, which appointed the plaintiff as the authorized stockiest of the defendants. This suppression was deemed deliberate and material, as it concealed the true nature of the relationship between the parties and the defendants' prior use of the trademark 'PRINCE'.

3. Prior Use of the Trademark by the Defendants:
The defendants provided evidence of prior use of the trademark 'PRINCE' through sales invoices, Sales Tax Registration Certificates, and Sales Tax Quarterly Returns dating back to 1999. The court found this evidence credible and indicative of the defendants' prior adoption and use of the mark 'PRINCE' in relation to auto parts and accessories.

4. Equitable Relief of Injunction:
The court emphasized that equitable relief, such as an injunction, requires the plaintiff to come with clean hands. Given the plaintiff's suppression of material facts and the defendants' prior use of the trademark, the court held that the plaintiff was not entitled to the equitable relief of an injunction. The ex parte ad interim injunction granted to the plaintiff was vacated.

5. Vested Rights under the Trademarks Act:
The court referred to Section 34 of the Trademarks Act, which protects the vested rights of prior users of a trademark. The defendants' prior use of the trademark 'PRINCE' since 1998 was recognized, and the court held that this vested right could not be interfered with by the plaintiff's subsequent registration of the trademark.

Conclusion:
The court vacated the interim orders dated 02.06.2006 and directed the defendants to maintain accounts of profits earned under the trademark 'PRINCE' and file them quarterly. The defendants were also ordered to publish public notices informing prospective buyers that their goods marketed under the trademark 'PRINCE' had no connection with the plaintiff's goods. The case was listed for further proceedings, including framing of issues and recording of evidence.