2021 (5) TMI 1087 - HC - Indian Laws

Application under Order XXXIX Rules 1 2 of the CPC of the respondent/plaintiff Black Diamond Motors Private Limited - Permanent injunction to restrain infringement of trade mark - whether the conduct of the respondent/plaintiff is bona fide and if not, whether it disentitles the respondent/plaintiff to the interim relief, which is discretionary, and awarded on equitable principles? - HELD THAT - Section 34 of the Trade Marks Act provides that nothing in the said Act shall entitle the proprietor of registered trade mark to interfere with or restrain the use by any person of a trade mark, identical with or nearly resembling it, in relation to goods or services in relation to which that person or his predecessor in title has continuously used that trade mark, from a date prior to the use of the said trade mark by registered proprietor thereof in relation to those goods or services or prior to the date of registration of the trade mark in respect of those goods or services in the name of the proprietor thereof, whichever is the earlier. The contention of the senior counsel for the respondent/plaintiff that the appellants/defendants were not using 'BLACK DIAMOND' mark in relation to Class 12 goods, thus cannot be accepted because the appellants/defendants No. 5 3 i.e. Parvinder Singh Bhatia and his son Raminder Singh Bhatia, till separation on 31st March, 2014, were very much part and parcel of the respondent/plaintiff and were as such using the mark 'BLACK DIAMOND' in respect to Class 12 goods also. Rather, the respondent/plaintiff, incorporated in the year 2005, became entitled to use the mark 'BLACK DIAMOND' in relation to Class 12 goods, only for the reason of being a company incorporated by the Bhatias aforesaid, who and their predecessors had adopted the said mark way back in the year 1983 and who were using the said mark for all their mining businesses. In such a situation, it is not open to Pushpinder Singh Bhatia who is now in control of the respondent/plaintiff, to, using the garb of a corporate veil, contend that the other family members viz. Parvinder Singh Bhatia and his son Raminder Singh Bhatia who till 31st March, 2014 were part and parcel of respondent/plaintiff, were not using the mark 'BLACK DIAMOND' for Class 12 goods. The present is not a case of the appellants/defendants having used the trade mark 'BLACK DIAMOND' with the permission of respondent/plaintiff; rather here the appellants/defendants were using the trade mark 'BLACK DIAMOND' in their own right, including with respect to the subject goods. The impugned order cannot be sustained and the appeal is allowed and the impugned order set aside.

Summary

Issues Involved:

1. Forum Shopping and Interim Relief
2. Oral Family Settlement and Use of Trademark
3. Prior Use and Section 34 of the Trade Marks Act
4. Territorial Jurisdiction

Issue-wise Detailed Analysis:

1. Forum Shopping and Interim Relief:

The primary issue was whether the respondent/plaintiff was entitled to interim relief after having withdrawn a previous suit from the Bilaspur Court, where interim relief was denied, and subsequently filing a new suit in Delhi. The court found that the respondent/plaintiff engaged in forum shopping by withdrawing the suit from Bilaspur and refiling in Delhi, which was deemed an abuse of the court process. The court emphasized that interim relief is discretionary and should be granted only if the court is approached with bona fide intentions and clean hands. The respondent/plaintiff's conduct in seeking a favorable forum was not considered bona fide, leading to the denial of interim relief.

2. Oral Family Settlement and Use of Trademark:

The respondent/plaintiff claimed an oral family settlement restricted the appellants/defendants from using the 'BLACK DIAMOND' trademark for certain goods. However, the court found this claim unsupported by evidence, such as resolutions from the companies involved, and thus not credible at this stage. The court noted that the plea of an oral family settlement appeared as an afterthought, especially since it was not raised in the initial suit filed in Bilaspur. Consequently, the court found no basis to restrain the appellants/defendants from using the trademark based on the alleged family settlement.

3. Prior Use and Section 34 of the Trade Marks Act:

The court examined whether the appellants/defendants were prior users of the 'BLACK DIAMOND' trademark under Section 34 of the Trade Marks Act. The court acknowledged that the appellants/defendants, being part of the family business, had been using the trademark since before the registration was granted to the respondent/plaintiff. The court found that the appellants/defendants were entitled to use the trademark due to their prior use, which predated the respondent/plaintiff's registration. The court emphasized that the appellants/defendants' use of the trademark was not in bad faith, and they were not attempting to pass off their goods as those of the respondent/plaintiff.

4. Territorial Jurisdiction:

While the issue of territorial jurisdiction was raised, the court chose not to address it in detail within this judgment, as it was subject to another order in the suit. However, it was noted that the respondent/plaintiff and appellants/defendants were primarily based in Bilaspur, suggesting that the initial filing in Bilaspur was more appropriate.

Conclusion:

The court set aside the impugned order granting interim relief to the respondent/plaintiff, dismissing the application for interim relief. The appellants/defendants were allowed to continue using the 'BLACK DIAMOND' trademark, provided they included identifiers such as "Raminder Singh Bhatia Group" or "Parvinder Singh Bhatia Group" on their labels to prevent confusion. The court also ordered the respondent/plaintiff to pay costs of Rs. 50,000 to the appellants/defendants.