9911796707
TMI Blog2010 (12) TMI 1279X X X X Extracts X X X X X X X X Extracts X X X X ..... EREADY since 1905 when its predecessor-in-title National Carbon Company (India) Limited came into existence. The plaintiff is the registered owner of the trademark EVEREADY and EVEREADY (device) and it is using the aforesaid trademark in respect of cell batteries, re-chargeable batteries, flash lights, compact fluorescent lamps, general service lamps, insect repellants and packet tea. The trademark EVEREADY also forms a prominent and dominant feature of its corporate name Eveready Industries (India) Limited. This is also the case of the plaintiff that its trademarks EVEREADY and EVEREADY (device) have acquired a unique reputation in the mind of purchasing public and trade on account of quality of the products which are sold under the marks. The trademark EVEREADY is registered in favour of the plaintiff-company in respect of various classes mentioned in para 10 of the plaint. The plaintiff claims advertisement expenditure of ₹ 3795.29 lacs, 4317.03 lacs and 3858.88 lacs in the years 2005-06, 2006-07, 2007-08 respectively. 2. It is alleged in para 13 of the plaint that in or about 1st September, 2008, it first came to the knowledge of the plaintiff that the Defendant was us ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ration in class 8. The factum of issue of cross-notice has been suppressed in the plaint in order to obtain ex parte injunction against the Defendants. It is also alleged that the plaintiff itself excluded screw drivers, cutting pliers, while seeking registration vide application No. 641191, thereby recognizing the rights of the Defendants with respect to the trademark EVEREADY in respect of screw drivers, cutting pliers, etc. The plea taken by the Defendant, therefore, is that the plaintiff is guilty also of delay, latches and acquiescence, as no step was taken by it since the year 2003, despite coming to know of rights of Defendants with respect to the aforesaid trademark in relation to hand tools. 6. On merits, it is alleged by the Defendants that the mark/label EVEREADY was adopted by Defendant No. 2 in the year 1985, while carrying business under the name of M/s Everest Tool Industries. By virtue of assignment dated 06th January, 2009, Defendant No. 2 assigned her rights in the aforesaid trademark in favour of Defendant No. 1 along with its goodwill and reputation and Defendant No. 1, thereby became owner and proprietor of the aforesaid trademark. It is also claimed that th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... perusal of the record of Trade Mark Registry, copy of which has been placed on record by the Defendant, would show that when the plaintiff, through its attorneys, Mr D.P. Ahuja and Co. applied to the Registrar of Trademarks for registration of the trademark EVEREADY in the name of Union Carbide India Ltd., vide application No. 641191, the application was examined by the trademark registry and vide examination report No. 31312 dated 11th November, 1999, it was pointed out that the mark EVEREADY was already registered in the name of Ms. Kamlesh Chadha, D-58, Bhajanpura, Delhi with respect to screw drivers and cutting pliers in Class 8 vide registration No. 439833 and in respect of hand tools vide registration No. 539621. A copy of the examination report dated 11th November, 1999 was forwarded to Mr. D.P. Ahuja and Co., Patent and Trademark Attorneys which the plaintiff had appointed for submitting trademark application 641191 for registration of the mark EVEREADY in Class 8, as is evident from the letter sent by Mr. D.P. Ahuja and Co. to the Registrar of Trademarks on 25th March, 2000. It was stated in the letter that the applicant (the plaintiff, which at that time was known as Uni ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s. Kamlesh Chadha and her address also was available to him having been given on the examination report prepared by the Trademark Registry, it ought to have made enquiry and made survey, in case it wanted to confirm the user of the trademark by Ms. Kamlesh Chadha, to ascertain whether the mark was actually being used by her or not. This is not the case of the plaintiff that it had made enquiry on coming to know of registration of the mark EVEREADY in the name of Ms. Kamlesh Chadha and had come to know that mark was not used by her for manufacturing and/or selling the products for which the registration was obtained by her. Had the plaintiff undertaken such enquiry/survey, it would have come to know that this mark was actually being used by Ms. Kamlesh Chadha since the sale of the Defendants is stated to be ₹ 6,94,610/- in the year 1999-2000.In Shri Gopal Engg. and Chemical Works v. POMX Laboratory AIR 1992 Delhi 302, there was unexplained delay of 14 months in seeking injunction. The explanation given by the plaintiff for the delay was that it could not lay hands on the impugned goods of the Defendant bearing the impugned trademark despite best efforts. It was also claimed th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n exercised, in revoking the leave to appeal granted even at the time of hearing of the appeal.In M/s Gujarat Bottling Co. Ltd. and Ors. v. Coca Cola Company and Ors. 1995 SC 2372, the Supreme Court, inter-alia, observed as under 50. ...Under Order 39 of the Code of Civil procedure, jurisdiction of the Court to interfere with an order of interlocutory or temporary injunction is purely equitable and, therefore, the Court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the Court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the Court has to show that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the person who seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the Code of Civil Procedure, but also in respect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o the knowledge of plaintiff company by March, 2000. This suit, however, has been filed on 3rd August, 2009 though the affidavit in support of the plaint has been sworn on 23rd May, 2009. The Defendants claim sale of ₹ 8,48,700/-, ₹ 13,14,819/- and ₹ 31,58,181/- in the years 2006-07, 2007-08 and 2008-09 respectively as against sale of ₹ 3,56,988/- in the year 2005-06, under the trademark EVEREADY and EVEREADY (device). By not seeking cancellation of registration in favour of Ms. Kamlesh Chadha and not coming to Civil Court seeking injunction against use of the trademarks EVEREADY and EVEREADY (device) by her, the plaintiff allowed here to build and promote her brand and increase her sale manifold between 2005-06 to 2008-09. Had the plaintiff objected to use of the trademarks EVEREADY and EVEREADY (device) by Ms. Kamlesh Chadha, in the year 1999-2000 when it first came to know of the registration in her favour, she might possibly have adopted another trademark and might not have made any expenditure on building and promoting trademark EVEREADY with respect to the goods in which the Defendants are dealing. The Defendants could in the period of about 9 years ha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lity of confusion or deception would normally be less.In Mahendra and Mahendra Paper Mills Ltd. v. Mahendra and Mahendra Ltd. 2002 (24) PTC 121 (SC), the Supreme Court, inter-alia, observed as under The court also, in restraining a Defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the Defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the Defendant is yet to commence his enterprise, are attracted. In The Fairdeal Corporation (Pvt.) Ltd. v. Vijay Pharmaceuticals, 1985 PTC 80, the stand taken by the plaintiff before this Court was that he had come to know about the offending activities of the Defendants on purchase of the product with offending mark in Delhi on 25th September, 1984. The Defendant, however, placed on record a copy of the notice dated 14th July, 1982 sent by the advocate of the plaintiff to the Defendant referring therein to an earlier notice of February 12, 1981 sent by him on behalf of the plaintiff. The Defendant had r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n them to have nipped the evil in the bud by forwarding to the Defendants a legal notice of CEASE AND DESIST. This Court further observed that deliberate suppression of material facts, so far as the grant of equitable relief of injunction is concerned, is fatal. In Wander Ltd. and Anr. v. Antox India (P) Ltd. 1991 PTC 1, the Supreme Court, inter-alia, observed as under: 9. ...The object of the interlocutory injunction, it is stated is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the Defendant to be protected against injury resulting from his having been prevented from exercising his legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the balance of convenience lies . The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie. The court also, in restraining a Defendant from exercising what he conside ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was not an honest one. The Court would be justified in concluding that the Defendant, in such an action, wanted to cash in on the plaintiff's name and reputation and that was the sole, primary or the real motive of the Defendant adopting such a mark. Even if. in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the Defendant has been using the mark for a number of years. However, in para 33 of the judgment, this Court expressed the following view: As already noted, acquiescence may mean an encouragement by the plaintiff to the Defendant to use the infringing mark. It is as if the plaintiff wants the Defendant to be under the belief that the plaintiff does not regard- the action of the Defendant as being vocative of the plaintiff's rights. Furthermore, there should be a tacit or an express assent by the plaintiff to the Defendant's using the ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the trademark EVEREADY in respect of the specified hand tools, whereas the Defendant in the case of Hindustan Pencils (supra) was holding only copyright in respect of a label. 20. In the case of Ansul Industries (supra), the Appellant M/s Ansul Industries as well as the Respondent M/s Shiva Tobacco were manufacturing and selling the same product, i.e., chewing tobacco, the Appellant under the name 'Udta Panchhi' and the Respondent under the name 'Panchhi Chhap'. The Respondent was also the registered user of the brand name 'Punchhi Chhap' under the Trade and Merchandise Marks Act, whereas there was no registration of the trademark 'Udta Panchhi' in favour of the Appellant. In para 44 of the judgment, this Court referred to certain principles of law in the matter of granting interim injunction in such matters and principle (vi) referred therein read as under: Where initial adoption by the Defendant itself is vitiated by fraud and/or is dishonest, delay is not a valid ground to allow misuse. If user is at the inception is tainted by fraud and dishonesty, continuous use does not bestow legality. 21. In the case of Beiersdoft A.G.(supra), this C ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... een 'Hamdard' and this case. Moreover as noted earlier, the plaintiff having not come to this Court with clean hands and having misrepresented with respect to the date on which it came to know about the use of the trademark EVEREADY by the Defendant is not entitled to the discretionary relief of injunction from this Court. 24. In the case of DCM Shriram Consolidated Limited (supra), the case of the Defendants was that the plaintiff had not pleaded that the cease and desist notice has been issued by it more than two years before filing of the suit. It was also pointed out that the cause of action given in the plaint was silent about the date on which the cause of action arose. This Court was of the view that since both the Defendants had claimed registration in their favour and one of them was also claiming copyright, the Defendants in terms of the decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharam v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980, could expect to escape liability only if they could show that the added matter was sufficient to distinguish their product from that of the plaintiff. It was also noticed that the only added feature in the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it would have come to know that the Defendant had been actually using that trademark for selling certain hand tools. It is not open to the plaintiff not to make any effort to find out actual user of the trademark by Defendant No. 2 even on coming to know of registration in her favour and then say that it was not aware of the use of the trademark. 25. In the case of Rhizome Distilleries P. Ltd.(supra), this Court had declined injunction to the plaintiffs finding no similarity between the trade dress of the parties and noticing significant variance in the price of the brands of the plaintiff and the brands of the Defendant. However, during the course of the judgment, it was observed by this Court that Section 124(5) of Trade Marks Act, 1999 preserved the power of the Court to make any order, including granting an injunction during the period the suit is stayed by it. This judgment, to my mind, is of no help to the plaintiff since there is no quarrel with the express provision of law in this regard. But, the facts and circumstances of this case, as discussed earlier, disentitle the plaintiff to grant of interim injunction. 26. In the case of Midas Hygiene Industries P. Ltd. (su ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y be no defence to a suit for infringement of a trade mark, but the decisions to which I have referred to clearly indicate that where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rival's business. If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood. A village may develop into a large town as the result of the building up of a business and most of the inhabitants may be dependent on the business. No hard and fast rule can be laid down for deciding when a person has, as the result of inaction, lost the right of stopping another using his mark. As pointed out in Rowland v. Michell each case must depend on its own circumstances, but obviously a person cannot be allowed to stand by indefinitely without suffering the consequence. In the case before this Court, not only did the plaintiff modify its application, seeking registration under class 8, it failed to apply for cancellation of the registration granted to Mrs Kamlesh Chadha with respect to certa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e trademark EVEREADY since Assignment Deed, signed in the year 2009, claiming retrospectivity since the year 2005 is not valid in the eyes of law, no business was carried out by the Defendants during 2000-01, 2004-05 and sales tax registration has already been surrendered by Defendant No. 2 Kamlesh Chadha who is the registered proprietor of the mark EVEREADY in respect of certain hand tools. I, however, find no merit in the contention. Vide Assignment Deed dated 06th January, 2009, the mark EVEREADY as well as EVEREADY (device) Registration No. 439233 and 539621 were assigned by Defendant No. 2 Smt.Kamlesh Chadha to her son Sanjay Chadha. The plaintiff submitted Form TM-23 and deposited the requisite fee of ₹ 6000/- with Registrar of Trade Marks on 06th January, 2009. Even if the assignment operates from 06th January, 2009 when the Assignment Deed was executed, it can hardly be disputed that the rights in the trademark EVEREADY in respect of screw drivers and pliers now vest in him. He has already applied for registration of the assignment in his favor and has, therefore, done whatever he could have to get the assignment registered in his name. If there is delay on the part o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vestment Pvt. Ltd. 2003 (27) PTC 603 (SC), the Supreme Court noticed that there was an assignment in favour of the first Respondent though it had not been registered. The Supreme Court was of the view that mere non-registration of the assignment could not alter the position. In view of the facts and circumstances discussed above, I am of the considered view that the plaintiff is not entitled to grant of ad interim injunction against use of the word mark EVEREADY by the Defendants in respect of the screw drivers and pliers.Admittedly, the Defendants have already been restrained by IPAB from using EVEREADY (device). Hence, there is no need for the Court to injunct against use of this device by the Defendants. The Defendants, however, will not use the word trademark 'EVEREADY' except in respect of the screw drivers and pliers. If, however, the registration in favour of the Defendants is cancelled, they will forthwith stop the use of the word mark 'EVEREADY' even in respect of screw drivers and pliers. The interim order passed by this Court on August 24, 2009 stands modified accordingly. The observation made in this order being tentative and having been necessitated for ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
