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TMI Blog2013 (11) TMI 786X X X X Extracts X X X X X X X X Extracts X X X X ..... . The present suit was instituted on 30th May, 2011 by which time the applications of the plaintiff No. 1870842 had already been rejected. Even the application filed by Kanta Aggarwal on behalf of the sister concern i.e. M/s. RSA Fastners had been rejected. Further, in the application No. 1898926 the date of user was shown to be “proposed to be used” and it was not claimed that the trademark was being used. There is no dispute that the defendant No.1 is the registered owner of the trademark PTA and has been selling its goods since the year 2002. Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12 (3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. The onus and burden is on the defendant to show that the user and adoption at the initial stage was honest. Further where an alleged infringer had built up the trade with the specific knowled ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... inctive nature of the pioneering activities of the plaintiff the two trademarks PATTA and PTA have acquired excellent reputation from the very beginning and are synonymous with high standard of quality in respect of goods produced by the plaintiff company. The plaintiff is a SGS ISO 9001:2000 certified company and a member of UKAS Quality Management the sole national accreditation body recognized by United States Government that provides certification, testing, inspection and calibration services. The plaintiff company is a registered proprietor of the trademarks PATTA and PTA in many countries and was registered in India. In India trademark PATTA was registered on 1st November, 2004 in Class 6 with user claimed since 9th October, 2002. Further the trademark PTA of the plaintiff company is pending registration in India claiming user since 2002 in Class 6 since October and December, 2009. The plaintiff claims to have adopted a very distinctive packaging design in a very special manner since 2002 with the word PATTA and its logo on the outer packaging of each and every product manufactured by it, and the trademark PTA embossed on the products sold under the trademark PATTA. The p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pplications have been taken up for hearing. 3. Learned counsel for the plaintiff reiterates the averments in the plaint as mentioned above. Learned counsel for the plaintiff admits that defendant No.1 is the registered trademark holder of PTA in India. His contention is that the plaintiff has been selling goods under the trademark PTA in India and defendant No.1 had also been buying its goods. It is irrelevant even if the same are not being used first in India by the plaintiff, as the ultimate test is who is the first adopter and user of the trademark in the world. Reliance is placed on Milmet Oftho Industries Ors. Vs. Allergan Inc. (2004) 12 SCC 624. The defendants have copied the entire packaging including the logo. Further, only the first user gets the right to the trademark as held in Century Traders Vs. Roshan Lal Duggar Company AIR 1978 Delhi 250. Defendant No.1 started using the trademark PTA in 2011 whereas the trademark application of the plaintiff was filed as far back as 2008 claiming user since 2001. The print-out of the website clearly show the packaging of PATTA in blue and white colour and the screws with PTA headed thereon. 4. In the written statement defend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o the customized job work and the plaintiff company does not manufacture or sell screws under the trademark PTA and sells globally door stoppers, hinges etc. Further, the samples of the screws manufactured for sale by the plaintiff company or its group companies do not have embossed trademark PTA on the screws. The defendant No.1 denied dealing with the products under the trademark PATTA except in special circumstances where it gets stocks from dealers from Bangalore and Chennai, as it had run out of stock, but the products were found to be defective and thus the same were found lying. 6. Defendant is claiming its right only on the trademark PTA and is not concerned whatsoever with the plaintiff s trademark PATTA. In the replication to the written statement the plaintiff does not deny his application for registration of trademark PTA being rejected. Once it is the case of the plaintiff itself in the application filed before the Trade Mark Registry, that the two trademarks are different, the plaintiff is estopped from claiming that the defendant No.1 is passing off his goods as that of the plaintiffs. A copy of the brochure of plaintiff has been filed by the defendant as per which ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the trademark PTA it is stated that the plaintiff proposes to use the trademark. Thus, all the claims of the plaintiff in the plaint with regard to the prior user of the trademark PTA in India stand falsified. 10. In The Central Council for Research in Ayurveda and Sidha and Anr. Vs. Dr. K. Santhakumari (2001) 5 SCC 60 relied upon by the learned counsel for the plaintiff, the Supreme Court has noted that a wrong concession on question of law made by the counsel is not binding on his client and such concession cannot constitute a just ground for a binding precedent. Further in Hidesign Vs. Hi-Design Creations 1991 (11) PTC 178 (Del) it was urged that the defendant did not disclose that he was not known to the plaintiff and the plaintiff and the defendant were having business dealings. This Court held that at this stage it would be appropriate to impose fine and the fact of non-disclosure would be considered at the time of final determination of the suit. However, in the present case the plaintiff not only concealed material facts but also stated incorrect facts like the pendency of the application for registration of trademark PTA though the same had been rejected and that too on ..... X X X X Extracts X X X X X X X X Extracts X X X X
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