TMI Blog2009 (10) TMI 960X X X X Extracts X X X X X X X X Extracts X X X X ..... on, if any. The certificate of registration was issued on 31.10.2005, which registration is valid and subsisting till 26.09.2014. 3. The plaintiff thus claims that the trademark 'PRINCE' has been used by the plaintiff and its predecessor since April, 2001 openly, continuously and extensively and that the plaintiff has conducted huge sales under the aforesaid trademark and also spent huge amount on publicity thereof. The plaintiff has been protecting its trademark 'PRINCE' and filed its opposition to the registration of the aforesaid trademark by some other party from Haryana, who sought to register the trademark 'PRINCE' for auto accessories, etc.. The said opposition filed in January, 2006 is stated to be still pending in the Office of the Registrar of Trademarks, New Delhi. The defendants, the plaintiff asserts, had complete knowledge about the said trademark of the plaintiff as the plaintiff earlier used to purchase wheel covers from the defendants, pack the wheel covers in its own packing under the trademark 'PRINCE' and then market the said goods. However, since the defendants had not been able to supply the goods to the plaintiff properly as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt No. 2 since the year 2001, and had in fact subsequently entered into written agreements dated 19.08.2002 and 20.09.2002 with the defendant No. 2, in its capacity as an authorised stockiest. Being an authorised stockiest of the defendants, the plaintiff was well aware of the fact that the trademark 'PRINCE' belonged to the defendant No. 2, which the defendant No. 2 had been using since the year 1998 and which forms the emphatic and primary part of the trading style/trademark 'PRINCE Auto Industries' of the defendant No. 2. The plaintiff in fact had fraudulently registered the trademark 'PRINCE' of the defendant No. 2 in its own name shortly after the defendant No. 2 ceased to have any business dealings with the plaintiff as the plaintiff was defaulting on payments due to the defendant No. 2. In fact, the last batch of goods manufactured by the defendant No. 2 under the trademark 'PRINCE'/'PRINCE Auto Industries' was sold to the plaintiff in terms of the agreements dated 19.08.2002 and 20.09.2002 on the 15th day of September, 2004 and the plaintiff immediately thereafter, i.e. on 27th September, 2004, fraudulently applied for the defendant N ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistration as a trademark by the office of the Registrar of Trademarks. For example, the trademark/name Mahendra Brothers for M/s. Mahendra Brothers, Ketan Brothers Exports for M/s. Ketan Brothers Exports, Seiko Lex Bangles for Seikolex Bangles, Jutee Handicrafts for Jutee Handicrafts, Ratna House for Ratna House, BANSAL for Bansal Silver Ornaments, Home Television Network Limited for Home Television Network Limited, Lohan's Commerce Classes for Lohans's Commerce Classes, Lohana's Test Series for Lohana's Test Series. 10. Mr. Mohan Vidhani, the learned Counsel for the plaintiff, on the other hand, contended that the defendants have never used any trademark on its goods or packing and thus there was no question of prior use by the defendants. The defendants had been trading under the name and style of 'PRINCE Auto Industries' and this Court had, therefore, modified the ex parte ad interim injunction order on 17.07.2006 permitting the defendants to continue using 'PRINCE Auto Industries'. The defendants were trying to make a mountain out of a mole hill by unduly emphasizing that the plaintiff had not come to the Court with clean h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39; in favour of the plaintiff before the Registrar Trade Marks. Further, no cancellation petition or counter claim had been filed by the defendants nor the defendants had cared to file any application under Section 124(5) of the Trademarks Act for stay of the instant suit to facilitate the defendants in filing cancellation petition. The plaintiff, on the other hand, had filed two affidavits, one being the affidavit of Mr. Trilok Singh, one of the partners of the plaintiff firm and the other being an affidavit of a third party to substantiate its case that the wheel covers which were purchased from the defendant No. 2 firm by the plaintiff did not have any trade name/trademark or firm name embossed on the back of the wheel covers, though however, there used to be a sticker pasted on the front of the wheel covers reading 'PRINCE' and the packing of the said wheel covers used to show the name of M/S. WHEELS INDIA. 13. Reliance is placed by the learned Counsel for the plaintiff on the following judgments of this Court and of the Hon'ble Supreme Court to contend that temporary injunction must be granted when there is a clear infringement of the plaintiff's registered ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s, which clearly mentioned the name/mark 'PRINCE Auto Industries'. The agreement dated 19th August, 2002, being apposite, is reproduced hereunder: PRINCE AUTO INDUSTRIES Mfgr. Job Work of: AUTOMOBILE ACCESSORIES WZ-III B 111, VISHNU GARDEN, NEW DELHI-110018 Ref. No. PAI/2002-2003/07 Dated 19/8/2002 M/S WHEELS INDIA WZ-34/65, VISHNU GARDEN, NEW DELHI - 110018. SUB: AGREEMENT FOR APPOINTMENT AS AUTHORISED STOCKIEST Sir, This agreement for your appointment as Authorized Stockiest for our Standard Products is on the following agreed terms. 1. PRODUCTS Your order may be placed for our standard products viz. Auto Parts and their Accessories, as described in our catalogues. We shall have the right to add or delete any items at our sole discretion. 2. PRICES DISCOUNTS The list price circulated to you are the maximum prices at which you are allowed to sell. You are however at liberty to sell at prices lower than the list price. 3. TERMS OF PAYMENT a) You shall made full payments to us for the products including Sales Tax, Excise duties (if any), Packing, Forwarding and Freight charges and any other charges, taxes or levies again ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... between the parties valid from 19th August, 2002 to 18th August, 2005 appointing the plaintiff as authorised stockiest is on the same lines. Both these agreements have not been filed by the plaintiff or even referred to in the pleadings. 18. The plaintiff, therefore, has disentitled itself to the equitable relief of injunction on account of deliberate suppression of material facts in the plaint as well as suppression of documentary evidence from the scrutiny of this Court. Concealment of material facts or documents deserves to be seriously viewed, for one who comes to the Court owes a duty to the Court to disclose all facts and documents to the Court. The contention of the plaintiff in the instant case that it had disclosed in the plaint that it was purchasing goods from the defendants is neither here nor there. The plaintiff deliberately and intentionally, in my view, hid from the Court the fact that the defendant No. 2, M/s. PRINCE Auto Industries had been dealing with the same goods, viz. wheel covers and auto accessories and had made a mark in its field of activity well before the plaintiff got registered the trademark 'PRINCE'. The plaintiff also hid from the Court ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the relief); and (ii) whether the plaintiff was in the knowledge of or could have been in the knowledge of such fact. If both the answers be in the affirmative, the plaintiff would be held disentitled. The court would not then enter into the merits of the case. The court would simply tell the plaintiff - Your conduct has been unbecoming of the confidence impliedly reposed by the court in you and so you must be shown out of the court. The plaintiff may then either withdraw the application, may be subject to terms, or suffer a dismissal. 20. Applying the above two tests to the instant case, it cannot be said as regards the first test that what the plaintiff failed to disclose was not a relevant fact. As regards the second test, viz., whether the plaintiff was in the knowledge of or could have been in the knowledge of such fact, the plaintiff itself has not denied (as indeed it could not have) that it was in the knowledge of the Stockiest Agreements. The conduct of the plaintiff must, therefore, be said to be unbecoming of the confidence impliedly imposed by the Court in it. Whether or not the plaintiff should be shown out of the Court is, however, a matter to which I shall ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... about the aforementioned agreements between the parties before the said statutory authority. Additionally, the defendant No. 2 has placed on record sample bills of sales made to the plaintiff from the month of November, 2001 onwards. On the other hand, the plaintiff has failed to file any documentary evidence in support of its averment that the defendant No. 2 was ever manufacturing the goods on behalf of the plaintiff under the mark 'PRINCE'. Even otherwise, in my view, it is inconceivable that the defendant No. 2 functioning as 'PRINCE Auto Industries' after having appointed the plaintiff as a stockiest would thereafter agree to manufacture goods on behalf of the plaintiff under a verbal agreement, whose terms were clearly contrary to the aforementioned written agreement and thereby dilute its own name/mark 'PRINCE Auto Industries'. The said contention of the plaintiff as submitted by the defendants' counsel is squarely hit by the provisions of Sections 91 and 92 of the Evidence Act. 24. Further, the defendant No. 2 has placed on record sample copies of its bills of sales (about 70 in number) bearing the mark/name 'PRINCE Auto Industries' to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... es the sale figures of the plaintiff. The fact that the sale figures of the defendant No. 2 were substantially higher than those claimed by the plaintiff also clearly establishes the mark made by the defendant No. 2 in the market pertaining to auto parts and accessories, from which an inference may be drawn that the defendant No. 2 was well established in the market under the trade name of PRINCE Auto Industries when the plaintiff was still at the teething stage. The same are as under: Sales figures of the plaintiff as set out in Annexure A to the plaint M/S. WHEELS INDIA YEAR WISE SALES FIGURES Years Sales 2001-2002 2,44,260.00 2002-2003 11,60,374.00 2003-2004 5,18,927.00 2004-2005 3,51,917.00 2005-2006 6,21,605.00 Sales figures of the defendants as set out in the written statement M/S. PRINCE AUTO INDUSTRIES YEAR WISE SALES FIGURES YEAR SALES 1998-99 4,51,425.00 1999-00 7,72,780.00 2000-01 5,84,250.00 2001-02 6,47,100.00 2002-03 14,68,420.00 2003-04 13,82,465.00 2004-05 13,76,385.00 27. Then again, it is the plea of the defendant No. 2 that the trading style of the defendant No. 2, viz., 'PRINCE Auto Industries' is derived from the name of the son of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... istration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark. 31. It also deserves to be mentioned that the definition of mark encompasses within its folds a name . Section 2(1)(m) is as under: 2(1)(m) mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. 32. In Ellora Industries, Delhi v. Banarsi Dass and Ors . Delhi 1981 PTC 46 the allegation made in the suit was that the use of the trademark Ellora as the key portion of the trading style Ellora Industries was an infringement of the registered trademark Ellora which was the exclusive property of the plaintiff and that the use of the trademark as a trading style was deliberately and fraudulently chosen by the defendants to 'cash in' on the reputation of the plaintiff and usurp the efforts of its self-a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iation with the plaintiffs of which they complain. 40. The mischief in this case is that the defendants have taken their rival trader's name and made it their trade mark. B.K. It is the striking and significant feature of the plaintiff's name. This trade name and reputation the defendants have appropriated to their use.... 34. In the instant case, the gist of the defence taken by the defendants is that their trade name and their house mark are being invaded, a key portion of their trading style has been pilfered and false representation is thereby made to the purchasing public as to the origin of the goods. The question which arises is: Assuming for the sake of argument that the defendant No. 2 M/s. PRINCE Auto Industries at no point of time used the trademark or trade name 'PRINCE', was it open to a rival trader to start selling his wheel covers under the trade name 'PRINCE' so as to mislead the purchasing public into believing that his goods are the goods of the defendant. 35. In Parker-Knoll Ltd. v. Knoll International Ltd . (1962) RPC 265 Lord Devlin answered a somewhat similar question by holding that even if a man uses his own name so as to d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppens, the plaintiff would have achieved his purpose without a trial. It can only be allowed to happen if the plaintiff has such a strong case that it is almost impossible to refute. We have not been shown any such material on record.... 40. However, in Snell's Equity (29th Edition 1990, page 660), the learned author observed: Interlocutory Injunctions. Over the years a rule was evolved that the plaintiff would be granted an interlocutory order only if, on the material before the court, he could show a strong prima facie case that he was entitled to the right which he claimed and also that his allegation that this right had been infringed was reasonably capable of succeeding. In time this test was rejected on the ground that the remedy of an interlocutory injunction must be kept flexible and discretionary and that the case must be considered as a whole on the basis of fairness, justice and common sense but subject to this the plaintiff would fail if he could not establish a prima facie case. 41. In Dalpat Kumar v. Prahlad Singh : AIR 1993 SC 276 the Supreme Court emphasised: The phrases prima facie case , balance of convenience and irreparable loss are not ..... X X X X Extracts X X X X X X X X Extracts X X X X
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