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TMI Blog2014 (11) TMI 1219X X X X Extracts X X X X X X X X Extracts X X X X ..... em and not to the Chinese manufacturer - What emerges from this is that although both the parties claim to have used LIPU for a considerable period of time, the concern to get the mark registered has occurred very recently, in both. The plaintiffs' right to exclusive use of the mark 'LIPU' is not established at this stage. The parties can wait till the outcome of the trial, when the rights of the parties will be finally determined. There are no justification for passing any interim order restraining the defendant from using the said mark. The prayer for an injunction is refused - application disposed off. - G.A. No. 910 of 2014 C.S. No. 98 of 2014 And GA No. 911 of 2014, CS No. 99 of 2014 - - - Dated:- 10-11-2014 - I. P. Mukerji, J. Mr. Pratap Chatterjee, Sr. Adv. Mr. Ranjan Bachawat, Sr. Adv., Mr. Sayantan Bose, Mr. Gautam Kr. Roy, Mr. Prithviraj Sinha.......for plaintiffs Mr. Jishnu Saha, Sr. Adv.,Mr. Debnath Ghosh, Ms. Sananda Ganguly....for defendants. JUDGMENT I.P. Mukerji, G.A. No. 910 of 2014 This interim application is taken out in a passing off suit, by the plaintiffs. They seek an order of injunction restraining the defendant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ngs Ltd. Anr. Vs. Trans Tyres (India) Pvt. Ltd. Anr. reported in 2011 (46) PTC 194 (Delhi) V.K. Jain, J eloquently remarked as follows:- What is essential in this regard is that the customer should come to identify the product and the trademark affixed on it with the distributor/importer and on seeing the product he should believe that the product being purchased by him was the product of that particular distributor/importer. While considering the claim of a distributor/importer, the Court needs to keep in mind that even a foreign manufacturer can acquire domestic goodwill in the trademark in addition to the goodwill which it enjoys in foreign market. If, however, the importer/distributor is able to establish that the customer has come to identify the trademark with it rather than with the manufacturer, it may be able to claim that the ownership in the trade mark in the domestic market belongs to him despite the fact that the goods were not manufactured by it. The most important test in this regard is as to whether customer identifies the trademark with the manufacturer or with the importer/distributor, the presumption of law being that the ownership of the trademark vests ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on 19th October, 2012 whereas the defendant applied for registration of the same mark about ten days earlier on 09th October, 2012. The plaintiffs also applied for registration of the word mark on 13th February, 2014. All these application are pending. The defendant has claims user of the aforesaid mark from 04th June, 2007. On scrutiny of the annexures of the documents annexed to the petitioner, the affidavit-in-opposition and the affidavit-in-reply it appears that both the parties imported machines with the mark LIPU from more than one manufacturer or source in China. For example, in the affidavit-in-reply we come across a sale contract dated 20th September, 2005 between China Light Suit Cases bags and safety product IMP/EXP Corporation and the plaintiffs for supply of LIPU cutting machine. In the Affidavit-in-opposition the defendant has pleaded that both the parties bought machines bearing the same mark from LINHAI New LIPU Machines Co. Ltd. Mr. Saha, learned senior advocate, for the defendant is very frank in his submission that both his client and the plaintiffs are importers and distributors. They import and distribute products of the same manufacturer. The word LIP ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 958 or any modification thereof does not have any extra territorial operation in the sense that registration and prior use of the mark in China could not confer any benefit of any party in India. In my opinion, the point involved in this matter is absolutely different. It is not about registration of the mark in China and its use in that country and in India. It is whether the plaintiffs can be called the proprietors of the mark, in India. There is also no contradiction of the principle laid down in Midas Hygiene Industries (P) Ltd. And Another Vs Sudhir Bhatia And Others reported in 2004 (3) SCC Pg.19 Para 5 cited by Mr. Chatterjee that normally for the purpose of considering the grant of an order of injunction the question of delay does not matter. Now, my prima facie findings. The question is whether the plaintiffs are the proprietors of the mark LIPU in India and that any goods sold under that mark in India are associated with them. If not, the plaintiffs are merely importer and distributor of the goods with the mark belonging to an overseas manufacturer/exporter and cannot claim proprietorship or independent use of the mark. LIPU is a region in China. The sewing machin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e mark 'LIPU' is not established at this stage. The parties can wait till the outcome of the trial, when the rights of the parties will be finally determined. In those circumstances I do not think that there is any justification for passing any interim order restraining the defendant from using the said mark. The prayer for an injunction is refused. However the defendant is directed to maintain accounts of the sale of the above machines from the date of filing of this application till the suit is decreed. The accounts are to be authenticated by a practising Chartered Accountant. The defendant is to supply copies of the current accounts to the Advocate on Record for the plaintiffs on a half yearly basis. This application is disposed of accordingly. G.A. No. 911 of 2014 The facts of this case are more or less identical to the facts in the other case (GA No. 910 of 2014). The mark involved is SUNSHINE . The plaintiffs claim user of the mark from 3rd May, 1994 whereas the defendant claims user from 1st June, 2007. The plaintiffs applied for registration of this mark on 19th October, 2011. The defendant has so applied on 13th February, 2014. The manufacturers for the ..... X X X X Extracts X X X X X X X X Extracts X X X X
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