2019 (12) TMI 1599 - HC - Indian Laws

Suit for infringement of this trademark and passing off - first and foremost point is that Shyam is another name of Lord Krishna no exclusive right can be claimed by anybody over this mark - HELD THAT - Section 125 says that where in a suit for infringement of a registered trademark the validity of registration is questioned by the defendant the application under Section 57 has to be made only to the Appellate Board. Sub-section 2 provides that subject to sub-section 1 if an application for rectification of the register is made to the Registrar under Section 57 if he thinks fit shall refer the application at any stage of the proceedings to the appellate board. The effect of this section inter alia is that the question of validity of a trademark is to be decided by the tribunal. The court retains its powers to decide the question of validity on a prima facie basis pending this decision. When this question of validity is raised and referred to the tribunal or it is pending before the tribunal the interlocutory application can be disposed of but the suit has to remain stayed till the disposal of the lis by the Appellate Board. This court cannot say as an infallible principle of law that registration of the word Shyam was invalid and its registration should be cancelled. The respondent has to prove by leading cogent evidence before the Board that indeed the name Shyam refers to God only is not distinctive of the appellant is generic and common. Hence its registration was invalid. The respondent has not been able to establish this even prima facie - The respondent has also not been able to produce any significant evidence to show that it was carrying on business using the subject trademark evidence by sales figures prior to registration of the appellant s mark or prior to the date from which the appellant claimed first user of the mark. The impugned ad-interim order was made only on the basis of the petition. Before us there is additional evidence in the form of the affidavit-in-opposition and the affidavit-in-reply. Some supplemental papers have also been filed. Therefore the case is considered on the basis of the petition as well as the additional evidence produced. This court is not called upon only to evaluate whether the exercise of discretion by the learned trial court was right or wrong. This court is duty bound to pass a suitable interim order pending trial of the suit. In doing so this court has to put itself in a position as if it was moved to pass an interim order in the suit. The prima facie case on facts theoretically is in favour of the appellant. However for atleast four years from December 2015 the respondent has been manufacturing and selling TMT bars using the trademark Shyam without any active interference by the appellant. Prima facie it is opined that there is no acquiescence to its use on the part of the appellant but inaction and delay in taking action. The respondents shall be permitted to clear their exiting stock by manufacture and sale of their products with the said existing subject trademark till 30th April 2020 - application disposed off.

Summary

Issues Involved:
1. Infringement of Trademark
2. Passing Off
3. Validity of Trademark Registration
4. Honest Concurrent Use
5. Delay and Acquiescence
6. Prima Facie Case and Balance of Convenience
7. Interim Injunction

Detailed Analysis:

1. Infringement of Trademark:
The plaintiff, a registered proprietor of the word mark 'Shyam' and label marks featuring this word prominently, alleged that the defendant's use of 'Shyam Metalics' on their products infringed their trademark. The court noted that the appellant's and respondent's products (TMT bars) appeared identical in character, composition, and packaging, with both using the word 'Shyam' prominently.

2. Passing Off:
The plaintiff claimed that the defendant’s use of the mark 'Shyam' constituted passing off, misleading the public into believing that the defendant’s products were associated with the plaintiff. The court observed that the respondent resisted this claim, arguing that 'Shyam' was part of their business name and had been used for a significant period.

3. Validity of Trademark Registration:
The respondent challenged the validity of the plaintiff’s trademark registration, arguing that 'Shyam' is a common name (another name of Lord Krishna) and cannot be exclusively claimed by any party. The court examined the provisions of the Trademarks Act, 1999, particularly Sections 17, 28, 29, 31, 34, and 57, and noted that the registration of a trademark is prima facie evidence of its validity. The court held that the respondent had not provided sufficient evidence to prove that the registration of 'Shyam' was invalid.

4. Honest Concurrent Use:
The respondent argued that they had been using the mark 'Shyam' since 1998 and that it was part of their business name for over five decades, which constituted honest concurrent use. The court noted that the respondent had not produced significant evidence to show continuous and uninterrupted use of the mark prior to the plaintiff’s registration.

5. Delay and Acquiescence:
The court considered whether the plaintiff had acquiesced to the defendant’s use of the mark due to inaction. The court observed that the plaintiff was aware of the defendant’s use of 'Shyam' since at least December 2015 but filed the suit only in 2019. The court concluded that while there was no acquiescence, there was inaction and delay on the part of the plaintiff.

6. Prima Facie Case and Balance of Convenience:
The court assessed the prima facie case and balance of convenience, noting that the plaintiff had a registered trademark and the respondent’s use of 'Shyam' could cause confusion. However, the delay in filing the suit affected the balance of convenience. The court referred to relevant case law, including Midas Hygiene Industries and Wander Ltd., to support its findings.

7. Interim Injunction:
The court decided to dispose of the interlocutory application itself rather than remanding it to the lower court. The court granted the respondent time until 30th April 2020 to clear existing stock with the 'Shyam' mark and issued an injunction from 1st May 2020 restraining the respondent from using the mark 'Shyam' until the suit’s disposal. The court also provided for the possibility of the respondent applying for vacation of the injunction if the Appellate Board decided the rectification proceedings in their favor.

Conclusion:
The court modified the impugned judgment and order dated 2nd April 2019, allowing the respondent to clear existing stock until 30th April 2020 and issuing an injunction from 1st May 2020. The suit was expedited, and the court emphasized the need for compliance with Section 124 of the Trademarks Act, 1999. The court also directed the maintenance of accounts by the respondent as per the original order, subject to modifications by the trial court.