TMI Blog2008 (7) TMI 1049X X X X Extracts X X X X X X X X Extracts X X X X ..... he parties that we would request the learned Single Judge to expeditiously dispose of the injunction application, as any decision by us would deprive either of the party to a right of appeal. However, Mr. Arun Jaitley, learned Senior Counsel for Appellant submitted that as the learned Single Judge had not disposed of either the injunction application or the Appellant's application for vacation of injunction within thirty days, the present appeal was maintainable. In any event, both the parties requested this Court to dispose of the present appeal on merits. Consequently, with the consent of both the parties the present appeal is being taken up for disposal. 3. Mr. Arun Jaitley, learned Senior Counsel for the Appellant has contended that the Appellant has been using the mark RASMOLA for its product namely digestive tablets since 1989. He further contended that the Appellant's mark had been registered vide Certificate dated 3rd July, 1996. Consequently, Mr. Arun Jaitley submits that no suit for infringement is maintainable against the Appellant. 4. Mr. Arun Jaitley further contended that the suffix MOLA is not an invented word of the Respondent/plaintiff and the latter ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... her part namely MOLA means nothing. Consequently, it was contended that the word HAJMOLA is very distinctive and the Respondent/plaintiffs were entitled to highest protection in the said mark. 8. The Respondent/plaintiff further submitted that admittedly it was the prior user of the registered trade mark HAJMOLA and its usage dates back to 1972. It was contended that in 1989 when the Appellant is alleged to have first adopted the mark RASMOLA, the Respondent/plaintiff already had a turnover of ₹ 8.50 crores in HAJMOLA products and its advertisement budget was ₹ 50.9 lakhs. According to the Respondent/plaintiff its annual sales turnover of HAJMOLA in 2007 was about ₹ 74 crores. It was, therefore submitted that the Respondent/plaintiff's mark was already a well known mark. 9. It was further submitted that the Appellant's adoption of a similar mark was dishonest and no amount of user could cure it. According to Respondent/plaintiff an illegitimate adoption cannot be rectified or cured by a registration as it is a prior use which confers proprietary rights and dishonest adoption confers no right. 10. According to Respondent/plaintiff, Appellant's ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a judgment/order of this Court in Automatic Electric Limited v. R.K. Dhawan reported in 1999 PTC (19) 81. 13. As far as the mark SATMOLA having been allowed by the Respondent/plaintiff is concerned, it was stated that the same was by way of a settlement in Suit No. 62/2006 filed before this Court. The reason given for settlement was acquiescence, as though the Respondent/plaintiff had issued a legal notice to SSG Pharma in 1984 but inadvertently it never followed it up till 2006 when the said suit was filed. In any event it was submitted that Section 28(3) of the Trade Marks Act, 1999 permits more than one proprietor of deceptively similar trademarks. It was also pointed out that the Respondent/plaintiff has filed 14 oppositions and issued 14 cease and desist notices to various users of the suffix MOLA and in fact the Respondent had even received four undertakings. It was further submitted that the Appellant had failed to establish substantial commercial use of the suffix MOLA in the trade, failing which their plea of common to trade must fail. In any event, it was contended that infringement of Respondent/plaintiff's mark as pointed out by the Appellant were insignificant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... days, without assigning any reason. However, in the present case, the Appellant itself was not present when its application for vacation of injunction was taken up for hearing. In any event, the learned Single Judge could not dispose of the injunction application due to heavy workload and paucity of time. Even the Supreme Court in A. Venkatasubiah Naidu v. Chellappan reported in AIR 2000 SC 3032 has held that an appeal lies against ex-parte injunction only in such cases where the learned Single Judge does not give any reason for not disposing the appeal within thirty days. Consequently, as the learned Single Judge had given reason for not disposing of the injunction application as well as application under Order 39 Rule 4, within thirty days, the said injunction is not liable to be interfered on the short ground, as claimed by the Appellant, that the said applications had not been disposed of within thirty days. 18. According to us registration of RASMOLA by the Defendant/Appellant offers no complete defence to it. Even Kerly in his treatise the 'Trade Marks and Trade Names', has stated that passing off action can succeed on the same evidence where trademark action has f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... robability even in business, an injunction will be granted even though the defendants adopted the name innocently. 22. As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said 'infringers' had significant business turnover or they posed a threat to plaintiff's distinctiveness. In fact, we are of the view that the Respondent/plaintiff is not expected to sue all small type infringes who may not be affecting Respondent/plaintiff business. The Supreme Court in National Bell v. Metal Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors. reported in 1989 (7) PTC 14 it has been held as under: To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringes or their respective position in the trade. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... point of time than the impugned user by the respondents. In fact, in Castrol Limited v. A.K. Mehta reported in 1997 PTC (17) 408 DB it has been held that a concession given in one case does not mean that other parties are entitled to use the same. Also in Prakash Roadline v. Prakash Parcel Service reported 1992 (2) Arbitration Law Reporter 174 it has been held that use of a similar mark by a third party in violation of plaintiff's right is no defence. 24. In the present case we also do not find that Respondent/plaintiff's suit is either barred by delay or laches or acquiescence. In fact, from the documents on record, specially at pages 217, 352 and 361 in Paper Book, we find that the Appellant's sales under the mark RASMOLA till the year 2004 were rather insignificant. Even in the cause of action paragraph the Respondent/plaintiff has averred that though it had filed a notice of opposition dated 25th July, 2007, yet it did not find the Appellant's goods in the market till the first week of December 2007. Consequently, at this stage we cannot draw the inference that the present suit is barred by delay or laches. In any event, passing off is a recurring cause of ..... X X X X Extracts X X X X X X X X Extracts X X X X
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