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TMI Blog2019 (12) TMI 1599X X X X Extracts X X X X X X X X Extracts X X X X ..... interlocutory application (GA 857 of 2019), made by the plaintiff the learned single judge at the ad-interim stage, that is to say at the time the motion was presented to the court refused to grant an injunction restraining the first defendant from using these marks. Obviously, at this stage no affidavit-in-opposition on behalf of the defendants could be invited. In the said order the case of the parties was noted. Then the order was passed after recording the reasons in support of it very shortly as follows: "I have heard learned counsel for the parties. Prima facie, I am of the view that 'Shyam' being a part of the business name of the defendants, no injunction should be passed to restrain them from using the said word on their packaging. Further, if the case of honest adoption can be made out by the defendants, that would also be a point in their favour. I deem it proper to grant the defendants time to file affidavit-inopposition which may be filed positively within two weeks from date and no prayer for extension of time shall be entertained. Reply, if any, be filed within a week thereafter. List the matter three weeks hence under the heading 'Adjourned Motion' as a com ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 2007. The registration had been renewed for a period of 10 years from 2nd February, 2011 to 2nd February, 2021. On 22nd August, 2006 the appellant applied for registration under the mark type 'device', the trademark "SHYAM STEEL (WHEEL DE)". User was claimed from 1st January, 1953. This mark was registered and a certificate issued on 18th March, 2008 which was valid till 22nd August, 2026. In or about 7th June, 2013 the respondent made an application for registration of the mark "Shyam Infra". It is said that the respondent had filed an opposition to the appellants' application for registration of the trademark "Shyam EQR TMT" which was a label mark, and later abandoned it. A controversial document is the purported letter dated 25th December, 2015 written by a director of the appellant referring to his telephonic discussion with the director of the respondent on 16th December of that year. It said that recently it had come to the knowledge of the appellant that the respondent was using 'Shyam' in addition to 'SEL'. The director of the respondent is said to have acknowledged that the use was by mistake or inadvertence and that after disposal of the stock on or before the da ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y and phonetically" similar to the appellants' mark. Sometime in 2019 the respondent has also applied before the Intellectual Property Appellate Board under Sections 47, 57 and 125 of the Trade Marks Act, 1999 for rectification of the register by removal of the appellant's registered trademark No. 987596. This application for rectification has been opposed by the appellant. This application is also pending. The respondent has taken various points in defence. The first and foremost point is that 'Shyam' is another name of Lord Krishna. No exclusive right can be claimed by anybody over this mark. Mr. Kapur, their learned senior counsel argued that the right of the registered owner to use the mark exclusively was acquired only if its registration was valid. The registration in favour of the appellant was invalid. This ground had been taken in the application made by them before the appellate board for cancellation of this registration and rectification of the register. His client was likely to succeed, he agreed. The respondent had been using this mark on their goods since 1998. They had been using it as a business mark for more than five decades. To substantiate this argume ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... SION:- First, the law on the subject has to be noticed. Section 17 of the Trademarks Act, 1999 read with Section 28 thereof provides that when a trademark is registered, it confers on the proprietor thereof the exclusive right to use it. Section 28 adds a rider that such registration would also give him the exclusive right to use it in relation to the goods or services for which it is registered. It imposes a condition that such right could be exercised only if the registration is valid and also subject to any provisions of the Act. Section 31 clarifies that the registration of a trademark shall be prima facie evidence of its validity. Section 29 is about infringement of registered trademarks by a person who is not its registered proprietor. There are well-known exceptions to this very broad principle. The first is that if another person is able to establish that he used the mark prior to the first date on which the registered proprietor used it or prior to the date of its registration, he could claim an honest concurrent use of the mark and even make a claim for its registration. (See Sections 12 and 34). Another exception is acquiescence or user by consent of the prop ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit." 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... id "all issues relating to and connected with the validity of registration has to be dealt with by the tribunal and not by the civil court." Another aspect of the law is of great relevance to this case. If the registered proprietor of a mark has allowed another person to use the mark for some length of time but such permission to use cannot be claimed to be acquiescence or consent to its use, then, in that case the registered proprietor is entitled to an order of injunction restraining the other person from using the mark but that person is allowed time to dispose of his stock. (See M/s. Hindustan Pencils Pvt. Ltd. Vs. M/s. India Stationery Products Co. and Anr. reported in AIR 1990 Delhi 19). In Wander Ltd. and Ors. Vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727 the Supreme Court opined that the appeal court will not substitute its opinion for that expressed by the trial court, in an interim application unless there is perversity in the order. To my mind, the first question which needs to be addressed is to what extent the respondent has been able to prima facie establish before this court that registration of the appellant's mark 'Shyam' was invalid. In Lal Babu Pr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. It is unquestionable that the appellant is the registered owner of the trademark 'Shyam'. Prima facie, without prejudice to the invalidity point of the respondent, the word "Shyam Steel" used by the appellant, of which 'Shyam' is only a part tends to identify the said mark with the manufacture of the appellant. Now, the question of delay and acquiescence. Undoubtedly, at least from the date of the letter dated 25th December, 2015 the appellant can be said to be aware of the use of their mark by the respondent. This suit was filed only in 2019. In the meantime, the respondent had applied for rectification of the register under Section 57 of the said Act by cancellation of the appellant's trademark which the appellant is contesting. They have also made an application for registration of the self same mark in their favour. All this, the appellant was aware of much prior to filing of the suit. Yet, they took thei ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. In that respect, this case is different from Wander Ltd. and Ors. Vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727. 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, I am of the opinion that there is no acquiescence to its use on the part of the appellant but inaction and delay in taking action. Considering the prima facie case and balance of convenience I make the following order:- a) The interlocutory application before the learned single judge (GA 857 of 2019) is disposed of by this judgment and order. aa) 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; b) From 1st May, 2020 there shall be operate an order of injunction restraining them from, in any way, manufacturing, s ..... X X X X Extracts X X X X X X X X Extracts X X X X
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