Bombay High Court
Orient Paper & Industries Limited vs Naresh M. Kakriya And Others on 5 February, 2013
Author: S. J. Kathawalla
Bench: S. J. Kathawalla
KPP 1 NMS 164/2013
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION NO. 164 OF 2013
IN
SUIT NO. 76 OF 2013
Orient Paper & Industries Limited ... Plaintiff
vs.
Naresh M. Kakriya and others ....Defendants
Mr. Virag Tulzapurkar, Senior Advocate, along with Mr. Amit Jamsandekar, Mr.
Shyamrao Gore and Mr. Amit R. Jadhav, instructed by Mr. Sachin V. Masurkar, for the
Plaintiff.
Mr. Nitin Potdar for Defendant No.2.
CORAM : S. J. KATHAWALLA, J.
DATE : 5
FEBRUARY 2013
th
ORAL ORDER:
1. The above Suit is filed on two causes of action; (i) infringement of the registered trade mark 'Orient' of the Plaintiff; (ii) the acts of passing off and unfair trading committed by the Defendants by using the mark 'Orient', in respect of electric household appliances. The Plaintiff has sought reliefs, inter alia, of permanent injunction, damages, accounts of profits, delivery up for destruction, etc. The Plaintiff has also filed Notice of Motion seeking ad-interim and interim reliefs to restrain the Defendants, pending the hearing and final disposal of the above mentioned Suit, from using the mark 'Orient', in respect of the goods manufactured and sold by the Defendants.
::: Downloaded on - 09/06/2013 19:38:01 ::: KPP 2 NMS 164/20132. The above Notice of Motion of the Plaintiff was heard by this Court for ad-interim reliefs on 7th August 2012. The Notice of Motion was not registered at that time. The Defendants were not present during the hearing of the Plaintiff's application for ad-interim relief, though served. The affidavit-in-reply of the Defendants was on record. The Court by its order dated 7 th August 2012, after recording that the matter was adjourned from time to time and that on 7 th August 2012 none appeared for the Defendants for the hearing, proceeded with the hearing of the ad-interim application of the Plaintiff and restrained the Defendants from using the mark 'Orient' in respect of the goods manufactured and sold by the Defendants.
3. Thereafter the Defendants filed Notice of Motion No. 2176 of 2012 for recalling the order dated 7 th August 2012 on the grounds mentioned in the affidavit-
in- support thereto. The order of injunction passed on 7 th August 2012 was in operation from 7th August 2012 till 4th January 2013. The Suit itself was listed for 'directions' before this Court on 4 th January 2013, when this Court vacated the ad-
interim order dated 7th August 2012 with liberty to the Plaintiff to apply afresh for restoration of the ad-interim order after the Suit was numbered. The ad-interim order was vacated only because of non-removal of office objections in respect of the Plaint and not on merits. In view of the ad-interim order dated 7 th August 2012 being vacated on 4th January 2013, the Notice of Motion taken out by the Defendants for vacating the ad-interim order being Notice of Motion No. 2176 of 2012 was ::: Downloaded on - 09/06/2013 19:38:01 ::: KPP 3 NMS 164/2013 disposed of as infructuous.
4. The Plaintiff has now removed the office objections and has got the Suit and the Notice of Motion numbered and pursuant to the liberty granted vide order dated 4th January 2013, has moved the present application for ad-interim reliefs. By consent of the parties, the Notice of Motion is finally heard.
5. According to the Plaintiff, the causes of action of infringement and passing off and unfair trading arose because the Defendants are carrying on the business of manufacturing and selling mixer grinders, ironpress, electric toaster, fruit juicer, electric kettle, induction cooker, food processors and rice cookers, etc. by using the trade mark 'Orient', which is an identical trade mark to the well-known trade mark 'Orient' of the Plaintiff registered in the name of the Plaintiff.
6. Facts as narrated by the Plaintiff are as set out hereunder:
7. The Plaintiff was incorporated with the name 'Orient Papers Mills Limited' on 25th July 1936. The Plaintiff adopted a highly distinctive mark 'Orient' as its Corporate Name. In the year 1936, the Plaintiff started its business activities in the field of manufacturing of paper and pulp bearing the mark 'Orient'. Since its adoption the Plaintiff has used the mark 'Orient' extensively, continuously and exclusively in respect of its goods. The name of the Plaintiff was changed from Orient Papers Mills Ltd. to the existing name on 26 th August 1978 and a fresh ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 4 NMS 164/2013 Certificate of Incorporation was issued by the Registrar of Companies (Exhibit-B page 49 of the Plaint). However, the mark continued to remain the essential and prominent feature of the Corporate Name of the Plaintiff since its adoption in the year 1936.
8. In the year 1954, the Plaintiff formed its subsidiary - Orient General Industries Limited. The said subsidiary was incorporated on 20 th April 1954. The Plaintiff was holding 100 per cent shares of the said subsidiary - Orient General Industries Limited. Since the Plaintiff had direct control over the said entity by virtue of its 100 per cent shareholding, the mark 'Orient' was allowed by the Plaintiff to be used by the said subsidiary of the Plaintiff also. According to the Plaintiff, the use of the mark 'Orient' by Orient General Industries Limited was for and on behalf of the Plaintiff and the goodwill and reputation generated by the use of the mark 'Orient' by Orient General Industries Limited was owned by the Plaintiff.
9. The Plaintiff was originally doing business of paper and pulp and thereafter extended its business to electric and other household appliances and cement business, as can be seen from the Memorandum of Association of the Plaintiff as amended from time to time (Exhibit-D pages 78 to 130 to the Plaint).
10. The Plaintiff's 100% subsidiary - Orient General Industries Limited was incorporated to do business of electric goods, home appliances, engineering transformers, generators, motor parts etc. as more particularly mentioned in the ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 5 NMS 164/2013 Memorandum of Association of Orient General Industries Limited ( Exhibit-E pages 131 to 159 to the Plaint). Subsequently, Orient General Industries Limited entered into an Agreement dated 30th April 1954 to take over The Calcutta Electrical Company Limited and acquired all right, title and interest in the business of The Calcutta Electrical Company Ltd. The Calcutta Electrical Company Limited also executed an Assignment Deed dated 11 th August 1954 in favour of Orient General Industries Ltd. and thereby assigned all its right, title, interest in the trade marks bearing Nos. 106066 in Class 1, trade mark No. 106063 in Class 9 and trade mark No. 106065 in Class 11 along with the goodwill of the business concern. Thus, apart from the mark 'Orient' as used by the Plaintiff since 1936 in respect of papers and pulps the Plaintiff also acquired statutory rights in the mark 'Orient' by taking an assignment of the 'Orient' mark from the said Calcutta Electrical Company Limited.
11. According to the Plaintiff, the subsidiary of the Plaintiff, Orient General Industries Limited, has used the mark 'Orient' since 1954 continuously, extensively and exclusively in respect of the goods manufactured, marketed and sold by Orient General Industries Limited. The said Orient General Industries Limited started its business with the manufacturing of ceiling fans bearing the mark 'Orient' in the year 1954 and then over time extended its business activities in respect of allied and cognate goods in the sector of electric and household appliances. The said Orient General Industries Limited was manufacturing, marketing and selling fans, electric motors and allied goods across the country since 1954. The said Orient General Industries Limited extensively promoted and advertised its goods bearing the mark ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 6 NMS 164/2013 'Orient' by issuing and publishing advertisement in the newspapers, magazines, by hoardings and posters, on the radio and television etc. The goods bearing the mark 'Orient' of the said Orient General Industries Limited were well received and became extremely popular in India. The mark 'Orient' became a household mark because of fans which is one of the most popular product of the said Orient General Industries Limited and has presence in majority households along with the other products of the said Orient General Industries Limited. The said Orient General Industries Limited generated tremendous goodwill and reputation in the mark "Orient" by extensive, continuous and exclusive use of the mark 'Orient' and by way of heavy promotions and advertisements carried on by the said Orient General Industries Limited. According to the Plaintiff, the goodwill and reputation generated by the said Orient General Industries Limited in the mark 'Orient" enures to the benefit of the Plaintiff because the mark was used by the said Orient General Industries Limited for and on behalf of the Plaintiff. Thus the Plaintiff became the owner of the goodwill and reputation generated by the said Orient General Industries Limited in the mark 'Orient'.
12. Thereafter in pursuance of the orders dated 3 rd October 1994 and 21st February 1995 passed in an amalgamation petition bearing No. 295 of 1994 and Petition Nos. 12 and 16 of 1994 before the High Court of Calcutta and the High Court of Orissa, Orient General Industries Limited amalgamated into the Plaintiff Company with all its rights and liabilities. Pursuant to the said order by the Calcutta High Court on 3rd October 1994 and by an order dated 21 st February,1995 ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 7 NMS 164/2013 passed by the High Court at Orissa, a scheme of amalgamation by and between the Plaintiff and the said Orient General Industries Limited was sanctioned whereunder all the properties and assets of Orient General Industries Limited including its trade mark stood vested in the Plaintiff.
13. The Plaintiff and/or its predecessor in title has made various applications for registration of the trade mark containing the mark 'Orient' as an essential and prominent feature of the trade mark. The details of the registration for the mark 'Orient' are given in paragraph 12 of the plaint. The Plaintiff has also applied for various other marks containing the mark 'Orient' as an essential and prominent feature of the mark. The Plaintiff has therefore submitted that it is the owner of the goodwill and reputation in the said mark and the mark 'Orient' is a household mark and a well-known mark in India and is known to a substantial number of people in India. In support of this contention, the Plaintiff has produced the following documents:
(i) The Certificate of Incorporation dated 25 th July 1936 bearing the mark 'Orient' in the Corporate Name (Exhibit-A Page 46 to the Plaint) and a fresh Certificate of Incorporation dated 13 th September 1974 (Exhibit-B page 49 to the plaint);
(ii) The Certificate of Incorporation dated 20 th April 1954 bearing the mark 'Orient' in the Corporate Name (Exhibit-C page 66 to the plaint);
(iii) The catalogues of the Plaintiff, which are distributed throughout the country (Exhibit-K-1 to K-12 Pages 214 to 291 to the plaint);::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 8 NMS 164/2013
(iv) The sample invoices showing sales of the product bearing the mark 'Orient' by the predecessor of the Plaintiff and the Plaintiff (Exhibit L-1 to L-
120 Pages 292 to 433 to the plaint);
(v) The statement of sales and promotional expenses in respect of the said mark 'Orient' for the years 1936 to F.Y. 2010-2011 (Exhibits M-1 and M-2 Pages 434 to 436 to the Plaint);
(vi) The audited balance sheets of the Plaintiff for the year 1936 to 1954, 1957 to 1979, 1981 till 2011 and of Orient General Industries Ltd. from 1954, 1957 to 1979, 1981 to 2011;
(vii) The photocopies of few of the advertisements in various print medias including newspapers, periodicals, publications, magazines (Exhibits N-1 to N-52 Pages 437 to 518 and R-1 and R-2 (pages 726 and 727 to the plaint);
(viii) The photocopies of invoices, advertisement logos appearing on various television channels as also advertisements issued in various electronic media, sponsorship for IPL matches, film production etc. (Exhibits O-1 to O-61 Pages 519 to 677 to the Plaint);
(ix) The copies of the advertisements issued by the Plaintiff by using the persona of Mr. M.S. Dhoni, Captain of the Indian Cricket Team bearing the mark 'Orient' (Exhibits P-1 to P-36 Pages 678 to 713 to the plaint);
(x) The details of the various awards received by the Plaintiff in respect of its product bearing the mark 'Orient' are given in para 34 of the plaint and the necessary documents in support thereof are at Exhibits Q-1 to Q-12 ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 9 NMS 164/2013 Pages 714 to 725 to the plaint.
14. In support of the Plaintiff's contention and claim that the Plaintiff has used the mark 'Orient' since 1936 extensively and has advertised the same, the Plaintiff has extensively pleaded in the plaint the following facts:
(i) The Plaintiff's distribution network is very widely spread out in the Country with over 50 offices/depots and more than 5000 distributors/sub-
distributors/dealers. The mark 'Orient' has its presence in practically every corner of India. The advertisement of the product bearing the mark 'Orient' can be seen on buses, bus stops, shops, sign boards, hoardings, housewall in the rural areas, public places where advertisements are allowed, magazines, newspapers, television etc.
(ii) The Plaintiff is also exporting its products and has its presence in several countries like Sudan, UAE, Yemen, Nigeria, Kenya, Saudi Arabia, Oman, Singapore, Ghana, Togo, Sri Lanka,Egypt, Seychelles, Tanzania, Bahrain, Maldives, Angola, Ivory Coast, Iraq, Qatar, Mauritius, South Africa, Fiji, Botswana, Kuwait, Bangladesh, Malaysia and Panama,and around the World.. The goods of the Plaintiff are very popular in these Countries and the Plaintiff has acquired tremendous goodwill and reputation in the trade mark 'Orient' in these Countries.
(iii) The Plaintiff is a Group Company of the C.K. Birla Group and the Plaintiff has received various Awards since 1936;
(iv) The Plaintiff's Fan Division i.e."Orient Fans" is an undisputed leader in the sub- continent and is present in nearly 29 countries viz. Sudan, UAE, ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 10 NMS 164/2013 Yemen, Nigeria, Kenya, Saudi Arabia, Oman, Singapore, Ghana, Togo, Sri Lanka, Egypt, Seychelles, Tanzania, Bahrain, Maldives, Angola, Ivory Coast, Iraq, Qatar, Mauritius, South Africa, Fiji, Botswana, Kuwait, Bangladesh, Malaysia and Panama.. The Plaintiff's achievements in the field of exports are regularly recognized and awarded the Star Performer award by EEPC India (agency for Export and Promotion of Engineering goods) since the last decade. The Plaintiff's Fan Division "Orient Fans" is rated as "STAR EXPORT HOUSE" by the Ministry of Commerce and Industry, Government of India.
(v) The Plaintiff is the owner of various domain names which includes www.orientpaperindia.com; www.orientcement.com; ww.orientfansindka.com.
The Plaintiff is also carrying on business and promoting the goods bearing the mark 'Orient" through these websites which are very popular amongst the consumers and traders.
15. It is submitted on behalf of the Plaintiff, that in view of the above documents and facts, the mark 'Orient' has become distinctive of and connotes and denotes to the members of the trade and public the products of the Plaintiff exclusively, by virtue of its extensive, continuous, uninterrupted use through the length and breadth of this Country coupled with impeccable quality for the products bearing the mark 'Orient', and has become a household name. It is submitted on behalf of the Plaintiff that by virtue of the intrinsic quality of the products bearing the mark 'Orient' and the tremendous time and effort spent on the promotion of the same, the mark 'Orient' has acquired a vast and enviable reputation in various countries around the World and particularly in India. Due to the goodwill and ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 11 NMS 164/2013 reputation generated by the Plaintiff due to its untiring efforts since the year of its inception, the mark 'Orient' has been a great success amongst the trade and public and has succeeded in achieving an extremely high recall value in the minds of the intending purchasers and the consuming public at large and qualify to be a well known and famous trade mark. It is therefore submitted that the Plaintiff has statutory and common law rights in the mark 'Orient' and is thus entitled to exclusively use the same.
16. According to the Plaintiff, in September 2011, the Plaintiff noticed the goods (electrical household appliances) of the Defendants bearing the mark 'Orient'.
Therefore, the Plaintiff caused a cease and desist notice dated 19 th September 2011 to be issued calling upon the Defendants not to use the said mark. The Defendants have not responded to the said notice despite having received the same. Therefore the Plaintiff sent a reminder on 21st October 2011 to the Defendants. The Defendants despite having received the said reminder, once again failed and /or neglected to reply to the same. According to the Plaintiff, the Defendants have applied for registration of the mark 'Orient' in numerous classes in the name of the Defendants, without using or having any intention to use it for those goods and the Defendants have registered 'Orient' mark in their name in Class 7. The Plaintiff has adopted appropriate proceedings for rectification of the trade mark Register in respect of the mark which is registered in the name of the Defendants. According to the Plaintiff, the manner in which the applications for registrations are made, by itself proves that the adoption of the mark 'Orient' is dishonest and mala fide and ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 12 NMS 164/2013 without any due cause. According to the Plaintiff, the most important fact, which is mentioned in the plaint, is that when the application for registration in Class 11 was opposed by the Plaintiff, the Defendants abandoned the application and continued applying in other classes in various other goods. The Plaintiff has submitted that the claim of the use of the mark 'Orient' since 1989 is not supported by any credible material and is false. The Defendants are dishonestly and mala fide also using other well-known marks such as Crown, Reliance, Santro, Tavera, Safari, i10, Swift, etc.
17. The Defendants have admitted the use of the mark 'Orient' in respect of electric household appliances as also other marks such as Crown and Reliance etc. and the fact that the Defendants have made applications for registration of the mark 'Orient' as stated in paragraph 46 of the Plaint.. The Plaintiff, therefore submits that the mark 'Orient' used by the Defendants is identical to the Plaintiff's mark and is used in respect of electric household appliances. There is no explanation at all as to the adoption of the mark by the Defendants. The Defendants always had express and/or constructive notice of the statutory and common law rights of the Plaintiff in the mark 'Orient'. The adoption and use of the mark 'Orient' by the Defendants is ab initio dishonest, without due cause and is detrimental to the character and reputation of the Plaintiff's mark. The use of the mark 'Orient' by the Defendants is causing confusion and deception and/or there is likelihood of confusion and/or association. The Defendants are trading on the goodwill and reputation of the Plaintiff's mark and causing confusion and deception in the market by use of the identical mark in respect of electric household appliances. It is therefore submitted ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 13 NMS 164/2013 on behalf of the Plaintiff that they are entitled to interim relief as sought for by them in the above Notice of Motion.
18. Defendant Nos. 1 and 3 have not filed an Affidavit-in-Reply to the Notice of Motion. They have also not remained present during the hearing of the Notice of Motion. The contentions raised by the Plaintiff have therefore remained uncontroverted as regards Defendant Nos. 1 and 3. Shri Rangraj Jain, Proprietor of the second Defendant - Mahavir Industries has filed his reply to the Notice of Motion of the Plaintiff and opposed grant of any interim relief to the Plaintiff. The second Defendant has admitted use of the mark 'Orient'. The second Defendant has stated in the affidavit-in-reply to the Notice of Motion that the mark 'Orient' in respect of some of the electric household appliances is in use by the second Defendant since 1989. In support of this contention, the second Defendant has relied on the brochures, some invoices, advertisements, manufacturing certificates etc. and some figures in the affidavit, of the turnover in respect of the goods bearing the mark 'Orient'. In paragraph 8 (g), the second Defendant has given details of the marks which the second Defendant has applied for in various classes. In paragraph 8 (1), the second Defendant has given details of the certificate issued by the Trade Mark Registrar to the effect that no other trade mark deceptively similar to the artistic work of the Defendant is registered. The second Defendant has stated that by using the mark 'Orient' in respect of mixers and grinders, the Plaintiff is causing confusion and deception. The second Defendant has stated that in fact the Plaintiff is committing acts of infringement and passing off. The second Defendant has relied on ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 14 NMS 164/2013 the registration of the mark 'Orient' in Class 7 in the affidavit-in-reply. During the course of the arguments, the Counsel for the second Defendant relied on one more registration of the mark 'Orient' in Class 9 in the name of the Defendant. He submitted that the mark 'Orient' is registered in the name of the first Defendant in Class 9 after filing of the affidavit-in-reply. Though the second Defendant admits the use of the mark 'Orient', he has denied that the similar get up or packaging etc. is used by the Defendants.
19. The Plaintiff has filed affidavit in rejoinder to the reply of the second Defendant in which the Plaintiff has denied the use of the mark 'Orient' by the Defendants since 1989. It is submitted on behalf of the Plaintiff that there is no material on record to support the use alleged by the second Defendant. In any case, the Plaintiff has stated that the very adoption itself is dishonest and mala fide and with prior notice of the Plaintiff's rights because even in 1989 the Plaintiff had a very strong presence in the market with the mark 'Orient'. The Plaintiff has denied the turnover of the second Defendant as stated in his reply.
20. The learned Advocate appearing for the second Defendant addressed the Court for not more than 15 minutes, in which he only pointed out that the mark 'Orient' is registered in the name of the first Defendant in Classes 7 and 9 to the Fourth Schedule of the Trade Mark Rules, 2002 and, therefore in view of Section 28(3) of the Trade Marks Act, 1999, the suit for infringement of the mark against the Defendants is not maintainable. He also took me through the invoices and certain ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 15 NMS 164/2013 advertisements annexed to the affidavit- in- reply and submitted that since the Defendants are using the mark 'Orient' since the year 1989 the Plaintiff is not entitled to any reliefs as prayed for by them. However, with regard to the submissions recorded in the written submissions, the learned Advocate has not even made a whisper in his oral arguments. The practice of recording submissions in written submissions which are not canvassed at the time of arguments, is currently on the rise and needs to be strongly deprecated. However, keeping in mind the principle that a party to the suit should not suffer because of the conduct of his Advocate, I have gone through the affidavit -in -reply filed by the second Defendant and the summary of the defence raised by the second Defendant found therein (which is also set out by the Plaintiff in paragraph 25 of its written submissions) which is as under:
(i) That the mark 'Orient' is used by the Defendants since 1989 in respect of household electrical appliances through a network of 1200 dealers in 60 cities;
(ii) That the mark 'Orient' is registered in the name of the Defendants in Classes 7 and 9 to the Fourth Schedule of the Trade Marks Rules, 2002;
(iii) That the Plaintiff is a subsequent user of the mark 'Orient';
(iv) That the balance of convenience is in favour of the Defendants and against the Plaintiff; and
(v) That the Plaintiff has approached the Court with unclean hands.
21. Mr. Virag Tulzapurkar, the Learned Senior Advocate appearing for the ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 16 NMS 164/2013 Plaintiff, has clarified that in view of the first Defendant presently holding registration in Classes 7 and 9, the Plaintiff at this stage is not pressing for relief on the basis of infringement of its registered trade mark but reserves its right to do so, as the Plaintiff has challenged the registration of the Defendants. The Learned Senior Advocate appearing for the Plaintiff has also submitted that the registration of a trade mark is not a defense to the common law action of passing off. If the Plaintiff has established prior user of the mark and the reputation and goodwill in the same, then the registration of the mark in favour of the second Defendant is not an answer to the action of passing off. It is submitted that in the present case, the prior user of the Plaintiff since 1936 of the mark 'Orient' is not disputed. The second Defendant has vaguely disputed that the Plaintiff is the prior user of the mark 'Orient' in respect of mixers, grinders, etc. but has not produced any evidence to establish that the Defendants are prior users of the mark 'Orient'in respect of electrical household appliances. It is submitted that the law in respect of this is well settled. In support of this contention, the Learned Senior Counsel for the Plaintiff has relied upon the decision of the Delhi High Court in N.R. Dongre and Ors. v. Whirlpool Corporation and others 1 and the decision of the Hon'ble Supreme Court in the SLP filed there from reported in 1996 (5) SCC 714.
22. I have considered the submissions advanced by the learned Senior Advocate appearing for the Plaintiff and the submissions advanced by the learned Advocate appearing for the second Defendant. I have gone through the Plaint along 1 1996 PTC (16) 476; AIR 1995 Delhi 300 ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 17 NMS 164/2013 with its annexures, the affidavit-in-reply filed by the Defendants along with its annexures and the Plaintiff's affidavit-in-rejoinder thereto.
23. The Certificate of Incorporation of the Plaintiff dated 25 th July 1936 (Exhibit-A page 47 to the Plaint) bears out that the mark 'Orient' was the essential and prominent feature of the Corporate Name of the Plaintiff since its adoption in the year 1936. The name of the Plaintiff was changed from Orient Paper Mills Limited to the existing name on 26 th August 1978 (Certificate of Incorporation at Exh. B page 49 to the Plaint) , which again shows that the mark 'Orient' remained the essential and prominent feature of the Corporate Name of the Plaintiff. On 20 th April 1954 the Plaintiff formed its subsidiary Orient General Industries Limited, 100 per cent shareholding of which was held by the Plaintiff. From the Articles of Association of the Plaintiff, as also its subsidiary, it is clear that initially the Plaintiff was incorporated to do the business of paper and pulp etc. and from time to time the Plaintiff has added and expanded its business activities to electrical and other household appliances and cement business. The subsidiary was incorporated to do the business of electrical goods, home appliances, engineering transformers, generators, motor-parts etc. and subsequently the said subsidiary by Agreement dated 30th April 1954 took over from the Calcutta Electrical Company Limited and acquired all rights, interest and title in the business of Calcutta Electric Company Ltd. The Calcutta Electric Company Ltd. also executed an Assignment Deed dated 11th August 1954 in favour of Orient General Industries Ltd., thereby assigning all its right, title and interest in the trade marks bearing Nos. 106066 in Class 1, trade ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 18 NMS 164/2013 mark No. 106063 in Class 9 and trade mark No. 106065 in Class 11 along with the goodwill of the business concern. The subsidiary Orient General Industries Ltd. made the necessary applications after the Deed of Assignment was executed in its favour and they were filed with the Trade Mark Registry. The Trade Mark Registry has accepted the applications and has brought the name Orient General Industries Ltd.
on record. The said Orient General Industries Ltd. started its business with the manufacturing of ceiling fans bearing the mark 'Orient' in the year 1954 and thereafter extended its business activities in respect of allied and cognate goods in the sector of electric and household appliances. Pursuant to an order dated 3 rd October 1994 and 21st February 1995 passed in an Amalgamation Petition bearing No. 295 of 1994 and Petition Nos. 12 and 16 of 1994 before the Calcutta High Court and the High Court of Orissa, the subsidiary Orient General Industries Ltd.
amalgamated into the Plaintiff Company with all its rights and liabilities. Pursuant to the said orders all the properties and assets of Orient General Industries Limited including its trade marks stood vested in the Plaintiff.
24. Thus the mark of the Plaintiff is registered in Classes 7, 9, 11 and 16 in respect of various goods. The details of the registration are given in paragraph 12 of the Plaint and the certified entries of the Register in respect of the registered marks in the name of the Plaintiff are annexed as Exhibits F-1 to F-11 (Pages 160 to 184) to the Plaint. The registrations in the name of the Plaintiff of the mark 'Orient' are valid and subsisting. The Plaintiff has also produced copies of catalogues, copies of sale invoices, statement of sales and promotional expenses since 1936 to 2010-2011.
::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 19 NMS 164/2013The details of advertisements in various medias are also provided which include some of the advertisements of the year 1956 to 1970. The Plaintiff has over 50 offices /depots and more than 5000 distributors/sub-distributors and retailers and the mark 'Orient' has established its presence practically in every corner of India.
The volume of sales and advertisement expenses incurred by the Plaintiff in respect of the mark 'Orient', and produced by the Plaintiff, the awards received by the Plaintiff, the exports of its goods bearing the mark 'Orient' to 29 countries in the World clearly establishes , as submitted by the Plaintiff, that the Plaintiff is using the mark 'Orient' in respect of various goods since 1936.
25. As against this, the Defendants have not produced any evidence to show that the products of the Defendants bearing the mark 'Orient' were sold in the open market and the same were advertised in such a way that the Plaintiff gets notice of the same. On the contrary, all the documents produced by the second Defendant show that the Defendants tried to use the mark secretly so that its use is not noticed by the Plaintiff and the Defendants continue getting the benefit of the goodwill and reputation of the mark 'Orient' owned by the Plaintiff. No documents are produced on record by the Defendants to establish that even prima facie the mark has been used by the Defendant since 1989. The second Defendant has produced some invoices, the authenticity of which is being disputed by the Plaintiff, and which are annexed and marked Exhibit-D to the affidavit -in -reply of the second Defendant at pages 78 to 191. The invoices produced by the second Defendant show that the goods are allegedly sold by the second Defendant to its own concern. Most of the ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 20 NMS 164/2013 invoices show that the goods are allegedly sold by the second Defendant to one Ambica Agencies and one Kakaria Agency. The said Ambika Agencies and the Kakaria Agency are the firms owned by the first Defendant himself. There are also invoices under which the goods are allegedly sold by the second Defendant to the third Defendant. Thus the alleged transactions are between the Defendants themselves.
There are hardly 5 invoices which are produced by the second Defendant in the name of one Solar Electrical and Marudhar Appliances to show that the mark 'Orient' is allegedly used by the Defendants since 1989. The Plaintiff is correct in its submission that the alleged sale of the goods amongst the Defendants themselves is totally suspicious, does not show use of the mark and cannot be considered as 'use' of the trade mark by the Defendants. The 5 other invoices produced by the second Defendant do not establish that the Defendants have used the mark 'Orient' since 1989 as claimed. The second Defendant has relied on some advertisements of the Defendants to establish that the Defendants have used the mark 'Orient' since 1989.
The alleged advertisements (at pages 73 to76 of the affidavit- in- reply) are placed/painted on the wall. The details and particulars of the place where the same were allegedly placed/painted are not given by the Defendants. The visual impact and appearance of the said advertisements clearly reminds the viewers of the Plaintiff's mark 'Orient'. The members of the public and the traders would associate the said advertisements with the Plaintiff, particularly when the names of the Defendants are not mentioned on the same. The said advertisements merely mention 'Orient The Range of Quality Product'.
::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 21 NMS 164/201326. The learned Advocate appearing for the second Defendant had admitted before the Court that except for one advertisement in a publication named Vision World of February, 2011 (Page 77 of the affidavit -in -reply), the Defendants have not advertised any of their products bearing the mark 'Orient' in any newspapers or magazines. The said sole advertisement also establishes that the Defendants are creating confusion and deception in the market by advertising the mark 'Orient' and placing the photographs of electrical household appliances including ceiling and table fans. As submitted by the Plaintiff, the appearance and placement of material in the said advertisement clearly establishes the dishonest attempt of the Defendants to come close to the Plaintiff and trade on the reputation and goodwill of the mark 'Orient' which is owned by the Plaintiff and developed since 1936. Though the second Defendant has produced some documents which are essentially test reports of the manufacturing certificates, the said documents do not prove the use of the mark 'Orient' by the Defendants. In any case, the alleged documents do not show the use of the mark continuously and to the knowledge of the Plaintiff. The Defendant No.2 has not even stated in the affidavit- in- reply that the Plaintiff was aware of the alleged use of the mark 'Orient' since 1989. The Defendants have not produced any evidence to show that the products of the Defendants bearing the mark 'Orient' were sold in the open market and the same were advertised in such a way that the Plaintiff gets notice of the same. Therefore, the defense of the Defendants as far as the use of the mark 'Orient' since 1989 is concerned, is not made out at all. In any case, the Defendants cannot take benefit of the alleged use of the mark 'Orient' allegedly since 1989 because prima facie the Plaintiff is the prior ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 22 NMS 164/2013 user of the mark 'Orient' since 1936 in respect of the Plaintiff's business of paper and pulp, and since 1954 in respect of electrical household appliances. The Defendant No.2 has merely alleged that he has 1200 dealers in 60 cities. No details or particulars of the same are produced by the Defendants. In view of the fact that almost all the invoices produced by the second Defendant are only amongst themselves, the statement that the Defendant No.2 has 1200 dealers in 60 cities even otherwise is meaningless and has no value at all. In any case, the use of the mark by the Defendants, with the knowledge that the Plaintiff's products bearing the mark "Orient" is in existence in the market and has a strong presence, share and reputation in the market, will not come to the benefit of the Defendants, because the adoption itself is dishonest and without due cause, especially when there is no explanation given by the Defendants as to why they adopted the mark 'Orient'. The contention of the second Defendant that they are prior users of the mark 'Orient' qua electrical home appliances is therefore rejected.
27. The Defendants have registered the mark 'Orient' in their name in Class 7 and 9 in respect of only the goods covered by their registration. The second Defendant has relied on Section 28 (3) of the Trade Marks Act 1999 and has submitted that in view of their registration of the mark 'Orient' in Class 7 and Class 9, the Plaintiff has no cause of action of infringement against the Defendants. The Plaintiff has already initiated appropriate action to rectify the Register and remove the mark 'Orient' registered in the name of the Defendants. The said actions are pending before the appropriate forum. It is pertinent to note that on 13 th March ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 23 NMS 164/2013 2008 the Defendant No.1 filed an application for registration of the mark 'Orient' in Class 11. The said application was opposed by the Plaintiff and after opposition by the Plaintiff, the first Defendant abandoned the same (Exhibits-W,X and Y of the Plaint, pages 738 to 743). The mala fides of the Defendants are more clear from the fact that the Defendant No.1 has thereafter applied for the registration of the mark 'Orient' in respect of almost 17 Classes for various goods and services which the Defendants are not manufacturing or rendering nor is it their case that they intend to venture in the business pertaining to such goods and services.
28. According to the Plaintiff, the mark 'Orient' of the Plaintiff is a well-
known mark in India and known to a substantial segment of the people in India and has tremendous reputation and goodwill in India. The registration of the same in Classes 7, 9,11 and 16 is valid and subsisting.
29. The Trade Marks Act, 1999 has defined the 'well-known trade mark' in Section 2 (zg) which reads as follows:
"Well-known trade mark" in relation to any goods or services, means a mark which has become so as to the substantial segment of the people which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services"
The mark of the Plaintiff is registered in Classes 7, 9, 11 and 16 in respect of various ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 24 NMS 164/2013 goods. The details of the registrations is given in para 12 of the plaint and the certified entries of the Register in respect of the registered marks in the name of the Plaintiff are annexed as Exhibits F-1 to F-11 (pages 160 to 184) to the Plaint. The registrations in the name of the Plaintiff of the mark 'Orient' are valid and subsisting.
The Defendants have not disputed the fact that the marks are registered in the name of the Plaintiff.
30. The Plaintiff has produced substantial evidence in support of its claim that the mark 'Orient' is a well-known mark in India and falls within the ambit of Section 2 (zg) of the Trade Marks Act, 1999 and is entitled for protection accordingly. The evidence produced by the Plaintiff includes copies of the catalogues, copies of the sale invoices, statement of sales and promotional expenses since 1936 to 2010-11. Details of advertisements in various medias, advertisements of logos appearing on various television channels, advertisements issued with the Captain of the Indian Cricket Team, copies of various awards, etc. The advertisements published by the Plaintiff of the products bearing the mark 'Orient' (Exhibit N-1 to N-53 pages 437 to 518 to the Plaint) also includes some of the advertisements for the years 1956 to 1970. In paragraph 29 of the Plaint, the Plaintiff has stated that the Plaintiff has wide spread operations through out the Country with over 50 offices/depots and more than 5000 distributors/sub-
distributors and retailers and the mark 'Orient' has a presence practically in eachand every corner of India. The fact that the Plaintiff is exporting its goods to various other countries is placed on record in para 30 of the Plaint. The Plaintiff also has ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 25 NMS 164/2013 registration of the mark 'Orient' in Oman, Kenya, Malaysia, Sudan, U.A.E. and Saudi Arabia and the registration certificates are produced at Exhibits J-1 to J-16 (pages 204 to 213) of the Plaint. The volume of sales and advertisement expenses incurred by the Plaintiff in respect of the mark 'Orient'are produced by the Plaintiff in statement format at Exhibits M-1 and M-2 (Pages 434 to 436) of the Plaint which are since 1936 to 2010-2011. The Plaintiff has received many awards in respect of its product bearing the mark 'Orient' which fact is established by the Plaintiff by producing the relevant details and copies of certificates at Exhibits Q-1 to Q-12 (pages 519 to 677) to the plaint. The material on record clearly establishes that the Plaintiff is using the mark 'Orient' in respect of various goods since 1936 and the use of the same is extensive and continuous and that the mark 'Orient' especially in respect of the electrical household appliances is a household mark in India and therefore falls within the ambit of Section 2 (zg) of the Trade Marks Act, 1999. At least, prima facie, on the basis of material produced by the Plaintiff, the mark 'Orient' is a well-known mark in India and is entitled to protection under the Trade Marks Act, 1999 as a well-known mark within the meaning of S. 2(zg) of the said Act.
31. The Defendants have not given any explanation as to why they adopted the mark 'Orient'. Therefore there is no explanation whatsoever justifying the adoption. Therefore the adoption of the mark 'Orient' by the Defendants is without due cause and certainly will be detrimental to the character and reputation of the Plaintiff's mark 'Orient'. In any case, the registration of a trade mark is not a ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 26 NMS 164/2013 defense to the common law action of passing off. If the Plaintiff has established prior user of the mark and the reputation and goodwill in the same, then the registration of the mark in favour of the Defendant is not an answer to the action of passing off. In the present case the prior user of the Plaintiff since 1936 of the mark 'Orient' is not disputed. The second Defendant has only vaguely disputed that the Plaintiff is the prior user in respect of mixers, grinders, etc. but has not produced any evidence to establish that the Defendants are prior users in respect of the electrical household appliances in respect of the mark 'Orient'. It is submitted that the law in respect of this is well settled. The Delhi High Court in N.R. Dongre & others vs. Whirlpool Corp. & Ors.(supra) has considered the issue and has held thus:
"28. We now proceed to consider the question as to whether the respondents can maintain an action for passing off against the appellants who are the registered proprietors of the trade mark "WHIRLPOOL" in India. Learned counsel for the appellants submitted that the appellants have an exclusive right to use the trade mark "WHIRLPOOL" under Section 28(1) of the Act as they are the registered proprietors of the same. In order to appreciate the submission of the learned counsel, it will be necessary to set out Section 28(1) of the Act. This Section reads as under:-
"28(1) Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 27 NMS 164/2013 mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(29) According to Section 28(1) of the Act, registration of a trade mark gives to the registered proprietor thereof exclusive right to use the same in relation to the goods in respect of which it has been registered.
But from the opening words of Section 28(1) namely, "subject to other provisions" it is clear that the right conferred on a trader is not an indefeasible right as the same is expressly made subject to other provisions of the Act. This is further made clear by Section 27(2) of the Act, which' provides that " nothing in this Act shall he deemed to affect the right of action against any person for passing off the goods as goods of another person or the remedies in respect thereof." Thus it is manifest that Section 28 of the Act and all other provisions come within the overriding sway of Section 27(2) of the Act. Similarly Section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right created by Section 28(1) of the Act in favor of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely Sections 27(2), 33 etc. Neither Section 28 nor any other provision of the Act bars an action for passing off by an anterior user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defense to the proceedings for passing off as under
Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 28 NMS 164/2013 follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Besides Section 31 is not immune to the over-riding effect of Section 27(2). Placing reliance on Section 28(3) of the Act the learned counsel counsel for the appellant contended that when two registered proprietors of identical or near similar trade marks cannot be deemed to have acquired exclusive right to the use of any of those trade marks against each other, how can an unregistered user of the trade mark maintain an action for passing off against a registered user of the same mark and seek an injunction restraining him from using it. This argument of the learned counsel seems to stem from a misconception about the real purpose and intent of Section 28(3). Actually Section 28(3) protects registered proprietor of a trade mark from an infringement action by another registered proprietor of an identical or near similar trade mark. ....... .....
A reading of Section 28(3) with Section 30(l)(d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(l)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(l)(d).
Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill and reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 29 NMS 164/2013 codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33.
(30) The law of 'passing off' as it has developed, permits an action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods of or are connected with the goods of a prior user of the trade mark.............."
(38) The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favor. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off it should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of some body else.
(40) Having regard to the above discussion, the following position emerges. The Courts do not approve of any attempt by one trader to appropriate the mark of another trader, even though that trader may be a foreign trader and mostly uses his mark in respect of the goods available abroad i.e. outside the country where the appropriation of the mark has taken place. As mentioned earlier, awareness & ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 30 NMS 164/2013 knowledge of the mark in the latter country may be because of small trickle of goods in that country or through advertisement. The manner and method by which the knowledge of the mark is acquired by the public is of no consequence & will not matter. Applying this principle and the reasons already stated we have prima facie come to the conclusion that the appellants have acquired reputation & goodwill in respect of its goods bearing trade mark 'WHIRLPOOL' in this country.
Even though the appellants have no connection with the respondents, they are using the mark 'WHIRLPOOL' for their products. Prima facie it appears to us that buyers are likely to be deceived or confused as to the origin and source of the goods. They will believe that the product is manufactured by the respondents, an impression not founded in truth. The imitation will pass off as genuine. No one can be permitted to trade by deceiving or misleading the purchasers or to unauthorisedly divert to itself the reputation and goodwill of others. Under Section 27(2) an action for passing off against registered user of trade mark is maintainable at the instance of a prior user of the same, similar or identical mark. Since such a remedy is available against the registered user of a trade mark, an interim injunction restraining him to use the mark can also be granted to make the remedy effective".
The above decision of the Division Bench of the Delhi High Court was challenged before the Hon'ble Supreme Court. The Hon'ble Supreme Court has upheld the decision of the Delhi High Court in N.R.Dongre v. Whirlpool Corp. (supra) (1996) 5 SCC 714. The Hon'ble Supreme Court has recorded that:
"Shri Kapil Sibal , learned counsel for the appellants conceded fairly at the outset that a passing off action is maintainable in law even ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 31 NMS 164/2013 against a registered owner of the trade mark and, therefore, the fact that the Defendants have obtained a registration (subject to the outcome of a pending appeal) is by itself not sufficient to render the suit not maintainable"
The Hon'ble Supreme Court in para 20 of the judgment held that:
"20. On the above conclusion reached on the facts of this case, it is unnecessary to refer to the several decisions cited at the Bar to indicate the settled principles of law regulating grant or refusal of interlocutory injunctions and the scope for grant of such an injunction in a passing off action even against the proprietor of a registered trade mark. None of those decisions lays down that in a passing off action based on the right in common law distinct from the statutory right based on a registered mark, an injunction cannot be granted even against an owner of the trade mark in an appropriate case. It is for this reason, Shri Kapil Sibal fairly conceded this position at the outset and relied on the fact of registration in favour of the Defendants only for the limited purpose indicated earlier. The surviving controversy at this stage was confined only to the legality and propriety of an interlocutory injunction granted on the facts of this case."
32. Therefore, the mark 'Orient' is registered in the name of the Defendants in Classes 7 and 11 in respect of various goods is not a defense to the cause of action of passing off and the Plaintiff is entitled to interim relief in respect of the cause of action of passing off. The argument of the second Defendant that the Plaintiff is the subsequent user of the mark 'Orient' and the Defendants are prior in ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 32 NMS 164/2013 the market is an argument which is already dealt with by me and rejected for reasons set out hereinabove. The second Defendant has also attempted to contend that the certified entries of the registered mark 'Orient' in the name of the Plaintiff, with respect to some of the marks is since 2008, which is much subsequent to the use of the mark by the Defendants. The argument of the second Defendant is fallacious because the marks which are registered in the name of the Plaintiff in the year 2008 or around that time are the marks with slight variation but retaining the essential and prominent feature of the mark which is the word 'Orient'. Hence, the Defendants cannot be said to be prior users in terms of Section 34 of the Act.
33. The balance of convenience is also in favour of the Plaintiff because the Plaintiff is the registered proprietor of the mark and the mark 'Orient' is a well-
known mark. If the Defendants are allowed to use the mark 'Orient' then there will be confusion and deception in the market. Also, the use of the mark 'Orient' by the Defendants in respect of electrical household appliances will dilute the Plaintiff's well known mark registered in Classes 11 and 16. It will have to be presumed that the Defendants have adopted the mark with notice of the Plaintiff's earlier statutory and common law rights because there is no explanation as to why the Defendants adopted the mark 'Orient'. It is obvious that the Defendants adopted the mark 'Orient' to take benefit of the Plaintiff's well known mark and its strong and prominent position in the market. The conduct of the Defendants is also dishonest because the Defendants apart from using the mark 'Orient' which is a well known ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 33 NMS 164/2013 mark, are admittedly using other well known marks such as Crown, Reliance, Swift, i10, Safari, Tavera, etc. The second Defendant in his affidavit -in -reply has stated that they are using these marks and have also registered the mark "Crown" in their name. Therefore there are no equities in favour of the Defendants and the balance of convenience is heavily in favour of the Plaintiff and against the Defendants. If the Defendants are allowed to use the mark 'Orient' then there will be irreparable harm, injury and damage caused to the Plaintiff which cannot be compensated in terms of money. The confusion and deception will continue, as well as the value of the mark of the Plaintiff shall come down due to the unfair trading of the Defendants by use of the mark 'Orient'.
34. The allegations of the second Defendant that the Plaintiff has approached the Court with unclean hands are untenable and there is nothing on record to sustain such allegations. The allegations of the second Defendant are without any basis and made in a very casual manner. In any case, at the hearing of the Notice of Motion, this allegation was not at all argued and given up by the second Defendant.
35. In the circumstances, I am of the view that the Plaintiff is entitled to enforce its statutory as well as common law rights in respect of the mark 'Orient' and therefore I proceed to pass an interim order as follows :
(i) Pending the hearing and final disposal of the suit, the Defendants by themselves, ::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 34 NMS 164/2013 by its servants, agents and distributors or representatives or any person claiming through or under them and the like be restrained by a temporary order of injunction from in any manner, directly or indirectly, using the mark 'Orient' or any other deceptively similar mark thereto or identical with and/or deceptively similar to the Plaintiff's trade mark 'Orient' in any get up or packaging bearing the mark 'Orient' or any other mark similar to, deceptively similar thereto so as to pass off the goods of the Defendants as and for the goods of the Plaintiff and/or enable others to pass of the same;
(ii) The Defendants be ordered and directed to file a detailed affidavit giving details and particulars of the goods manufactured by the Defendants or caused to be manufactured by the Defendants bearing the mark 'Orient' ad/or lying in possession of the Defendants or their agents etc. on or before 7 th May, 2013 with the Prothonotary and Sr. Master of this Court.
36. It is clarified that the relief on the basis of infringement of the Plaintiff's trade mark 'Orient' is presently not pressed by the Plaintiff, in view of the first Defendant's registration of the mark 'Orient' in Classes 7 and 9. However, it will be open to the Plaintiff to seek such relief after the proceedings relating to the Defendants said registrations are disposed of and as and when the occasion therefore arises. Liberty to do so is hereby granted.
::: Downloaded on - 09/06/2013 19:38:02 ::: KPP 35 NMS 164/201337. The Notice of Motion is accordingly disposed of. The Defendants shall pay to the Plaintiff costs of this Notice of Motion.
(S. J. KATHAWALLA, J.) ::: Downloaded on - 09/06/2013 19:38:02 :::