2012 (9) TMI 1216 - HC - Income Tax

Summary

Issues Involved:
1. Fraud on the Registrar of Trade Mark.
2. Registered proprietorship of the trademark 'EXIDE'.
3. Prior user and proprietorship of the trademark 'EXIDE' in India.
4. Suppression of material facts.
5. Acquiescence.
6. Infringement of the trademark 'EXIDE'.
7. Passing off.
8. Use of the mark 'EXIDE' as passing off.
9. Relief.

Summary:

Issue 1: Fraud on the Registrar of Trade Mark
The defendant No. 1 argued that the plaintiff obtained the trademark registration fraudulently. However, the court held that the civil court cannot examine the validity of the registration and that such matters must be decided by the appropriate authority u/s 56 of the Trade Marks Act, 1958. Therefore, the issue was decided in favor of the plaintiff.

Issue 2: Registered Proprietorship of the Trademark 'EXIDE'
The court confirmed that the plaintiff is the registered proprietor of the trademark 'EXIDE' based on the registration certificates (Ex. PW2/1 to Ex. PW2/3). The defendant No. 1's arguments regarding the conditional assignment and fraudulent registration were not upheld. Thus, the issue was decided in favor of the plaintiff.

Issue 3: Prior User and Proprietorship of the Trademark 'EXIDE' in India
The court found that the plaintiff and its predecessors had been using the trademark 'EXIDE' in India since around 1960. The defendant No. 1 failed to prove that the plaintiff was merely a common law licensee or registered user. The court held that the plaintiff is the prior user and thus the owner of the trademark 'EXIDE' in India.

Issue 4: Suppression of Material Facts
The court held that any alleged suppression by the plaintiff does not affect the substantive rights proven during the trial. Therefore, the issue was decided against the defendant No. 1.

Issue 5: Acquiescence
The court found no evidence of the defendant No. 1 selling goods under the trademark 'EXIDE' from 1950 to 1997 and no special circumstances were proven. Thus, the issue of acquiescence was decided in favor of the plaintiff.

Issue 6: Infringement of the Trademark 'EXIDE'
The court held that the defendant No. 1's use or proposed use of the trademark 'EXIDE' constitutes infringement of the plaintiff's registered trademark. Therefore, the issue was decided in favor of the plaintiff.

Issue 7: Passing Off
The court found that the plaintiff is the prior user of the trademark 'EXIDE' in India, and the defendant No. 1's use of the trademark constitutes passing off. Thus, the issue was decided in favor of the plaintiff.

Issue 8: Use of the Mark 'EXIDE' as Passing Off
The court agreed that the issue was wrongly framed and should focus on whether the plaintiff's use of 'EXIDE' amounts to passing off the defendant No. 1's trademark. The court found no such passing off by the plaintiff. Therefore, the issue was decided in favor of the plaintiff.

Relief:
The suit was decreed in favor of the plaintiff, and the counter-claim by defendant Nos. 1 and 2 was dismissed. The plaintiff was declared the registered proprietor and prior user of the trademark 'EXIDE' in India. The defendants were injuncted from using the trademark 'EXIDE' or any deceptively similar mark.