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TMI Blog2000 (5) TMI 1084X X X X Extracts X X X X X X X X Extracts X X X X ..... irm doing business in the name of M/s. Prakash Sugandh Bhandar comprising of Om Prakash, Sumer Chand and Promod Kumar as its partners since the year 1973. Subsequently, one of the partner retired and one other expired and now plaintiff is its sole proprietor. It is alleged that the plaintiff has traded extensively under the trade mark SURAJ CHHAP for different varieties of tobacco since the year 1973 in several States including, Delhi, Rajasthan, U.P., Gujarat and M.P. and has got good reputation in his products. It is further alleged that plaintiff is also the owner and proprietor of the artistic work in the labels and pouches used for sale of their products which are distinctive, with typical trade dress and unique colour combination. plaintiff also claims that he has also got common law right for action for passing off in respect of this trademark on account of long and extensive use. It is however, admitted that the plaintiff had stopped the sale of his goods under this trade mark for some time (period of non-user not mentioned). It is further alleged that the defendants used to sell tobacco under trademarks of PATANGA and HARIBIHARI but have recently started using plaint ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or in the good will in respect of this trademark, survive due to non-user. He has restarted new business only in the year 1999, whereas the defendants have been using the trademark of SURAJ CHHAP' since 1993; xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx (5) that the plaintiff thus neither a registered proprietor, in respect of the trade mark nor in the label/pouches the label/pouches SURAJ CHHAP'; (6) that the label/pouches of the defendants are not identical or deceptively similar to those of the plaintiff also. And so there is no valid ground to grant injunction; the injunction has been obtained by suppression of material facts and documents and fraudulently concealing the fact of his trade mark being conditioned by disclaimer. Defendant thus claims vacation of the injunction as well as dismissal of the suit. Both the parties have produced large number of documents and also have submitted written submissions besides addressing oral arguments quite at length. 4. I have considered the contentions, the material on record as well as the circumstances. First contention of the learned Counsel for the defendants is that the interim injunction has been obtained by suppressing relevant a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... placed on the record. Notice to the defendants for 18,11.1999. In the meantime, interim order in terms of prayers (a) and (b) of this application. 8. The proof of registration of the trademark produced with the plaint is a copy of the certificate of registration of trade mark No. 287631 dated 24.4.1973 in the names of Om Prakash, Sumer Chand and Promod Kumar in Clause 34 in respect of scented chewing tobacco with the representation of the label annexed. There is a note at the foot that this certificate is not for use in legal proceedings. 9. The pleadings, submissions made before the Court and the documents relied clearly show that the suit of the plaintiff is for infringement of registered trademark of SURAJ CHHAP registered at No. 287631. It is clearly so represented. 10. Defendant has also filed a copy of the certificate of registration of the trademark No, 287631 registered on 24.4.1973 in the same names but with the following disclaimer: REGISTRATION OF THIS TRADEMARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE DEVICE SUN AND THE WORD SURAJ . 11. The fact of the disclaimer has not been mentioned in the plaint nor so disclosed orally on 10.8.1999 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ibed in emblem but really happens in the portals of Courts. The Court held that the husband and committed contempt of Court and awarded him two weeks sentence of imprisonment. 13. Again in Indian Bank v. Satyam fibres (India) Pvt., AIR1996SC2592 , the respondent had sought review of the judgment of the National Consumer Disputes Redressal Commission, New Delhi whereby it had passed a money decree against the appellant, on the plea that the judgment was obtained on the basis of letter No. 2776 which was a forged document used for the purpose of that case. The Commission did not take notice of this plea. The Supreme Court observed that: This plea could not have been legally ignored by the Commission which needs to be reminded that the Authorities, be they constitutional statutory or administrative (and particularly those who have to decide a lis) possess the power to recall their judgments or orders if they are obtained by fraud as Fraud and Justice never dwell together (Faucet just cohabitant). It has been repeatedly said that fraud and deceit defend or excuse no man. Regarding the scope of the inherent power of the Court and Tribunal in such matters it was observed a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... above, the trademark was registered subject to disclaimer that this registration shall give no right to the exclusive use of the device of 'Sun' and the word SURAJ . This means that the word SURAJ and the device of Sun do not form part of the registered trademark. And the registered trademark is only Zafrani Patti . 17. Section 17 of the Act reads as under : 17. Registration of trade marks subject to disclaimer.- (a) contains any part (i) which is not the subject of a separate application the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor was a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character; the Tribunal, in deciding whether the trade mark shall be entered or shall remain, on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the Tribunal holds him not to be entitled, or make such other disclaimer as the Tribunal may consider ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that title. Whereas the proprietor of an unregistered trademark cannot use for its infringement or recover damages for infringement of his mark [Section 27(1)]. The only way open to the latter to protect his trademark against infringement is by means of an action for passing off or by way of criminal proceedings for offence under Section 78. The Supreme Court in the case of Wander Ltd. and Anr. v. Antox India P. Ltd., has noticed the difference in the remedies available in respect of registered and unregistered trademarks as under: An infringement action is available when there is violation of specific. property right acquired under and recognised by the Statute. In a passing off action, however, the plaintiff's right is independent of such a statutory right to a trademark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. 21. The plaintiff thus by suppressing the fact of disclaimer, has prevaricated and has tried to overreach the process of the Court in an attempt to obtain ex parte injunction. The special advantages which the Act gives to the proprietor by reason of the registration of its trademark did not e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... imed parts or matters are not within the protection of the statute. That circumstance, however, does not mean that the proprietor's rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way. 25. Learned Counsel for the defendant has contended that in an action for passing off in order to succeed in getting an interim injunction, the plaintiff has to establish continuous user of the trademark prior in point of time than the impugned user by the defendant, and in this case though learned Counsel has contended that the plaintiff had started the use of this trademark in 1973 but he used the same till about the year 1978 and as the plaintiff could not make market in the trade mark or in this business he closed tobacco business did not use the same for about 20 y ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r the plaintiff has contended that the registration of the plaintiff's trademark remains on the register of the trademark till today having been renewed every seven years which is till valid. The plea is that it shows that there was no intention to abandon the trademark. However, the trademark SURAJ CHHAP or device of SUN in question is not a registered trademark as there is a disclaimer in respect of this word SURAJ and the device and thus it is not on the register of the trade mark. As such validity of the registration of the other trademark is not of any relevance. 29. For the time being, without going into the question, whether the trademark SURAJ or the device of Sun was capable of acquiring distinction as a trademark, the question is whether the plaintiff has abandoned this trademark in question. To abandon means to give up absolutely and irrevocably. The question of abandonment is one of intention to be inferred from the facts of the particular case. Though non-user in given circumstances properly justifying non-user even for a long time may not constitute abandonment, however, an intention to abandon may be inferred from the circumstance of non-user even for ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... voluntarily but due to restrictions imposed by the Government in respect of dairy business and in the circumstances there was no abandonment. In Avis International Ltd. v. Avi Footwear Industries and Anr., 46(1992)DLT625 , the plaintiff was a registered proprietor of trademark AVIS in respect of readymade garments since 1.8.1979. In the suit for injunction filed by the plaintiff for restraining the defendants from using it, the defendant took the objection that there was non-user of the trademark by the plaintiff for five years of more which was disputed by the plaintiff. It was observed as under : In the present case, there is only an assertion that there has been a non-user of the mark AVIS with respect to footwears for a period longer than the statutory period. The burden to prove that in fact there has been non-user for the period required by the statute is on the person who asserts it........ Obviously there was prima facie no material to show even non-user and consequently abandonment of the trade mark. 32. In Garden Perfume (P) Ltd. v. Anand Soaps and Detergents, also, in the facts and circumstances before it, the Court did not prima facie found it a case of ab ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot disputed the fact of non-user after 1979. The ground for non-user pleaded is interruption in the use due to a tragic death of a member in the family . In the written submissions filed on behalf of the plaintiff, it is alleged that non-user was due to death of Promod Kumar, one of the partner who had died on 16.6.1985. 36. The non-user was since 1979 and the death admittedly took place on 16.6.1985, i.e., six years later. Even the excise license was not renewed after 1982. The death of a partner could not be the reason for non-user. The Explanation for non-user thus, prima facie, is no Explanation and is apparently an after-thought and the same cannot be said to be proper and valid Explanation .Not only this, vide order dated 10.8.1999, the plaintiff was directed to file an affidavit stating the period during which the use of the trademark was discontinued. Affidavit was filed but without any Explanation to this effect. The period of non-user since 1979 till 1999, for over 20 years, is quite long and in the absence of any valid and reasonable Explanation available, it would be a reasonable inference that the plaintiff had abandoned the trade mark, SURAJ CHHAP in 1979. Once ..... X X X X Extracts X X X X X X X X Extracts X X X X
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