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Delhi High Court

Manmohan Plastic Pvt. Ltd. vs Ganpati Plastic Industries & Anr on 8 September, 2014

Author: Rajiv Shakdher

Bench: Rajiv Shakdher

*      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                       Judgment reserved on: 08.08.2014
%                                      Judgment delivered on:08.09.2014

+                         CS(OS) 1528/2013

MANMOHAN PLASTIC PVT. LTD.                          ..... PETITIONER


                          Versus


GANPATI PLASTIC INDUSTRIES & ANR                    ..... RESPONDENTS

Advocates who appeared in this case:

For the Petitioner : Mr. Sandeep Sethi, Sr. Advocate with Mr. Kapil Wadhwa, Advocate For the Respondents: Mr. C.M. Lall, Ms. Nancy Roy and Mr. Anuj Nair, Advocates CORAM:

HON'BLE MR. JUSTICE RAJIV SHAKDHER RAJIV SHAKDHER,J IA No.12329/2013 (u/O. 39 R.1 & 2 r/w S. 151 CPC)

1. By this order, I propose to dispose of the plaintiff company's application under Order 39 Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short the CPC). Though there are corporate overtones to the dispute, it is essentially a family dispute. The plaintiff company seeks injunctive reliefs, pending the disposal of the suit against the defendants, based on the ownership rights it claims in the registered trademark "MONICA GOLD". The registration qua the said mark was obtained on 28.06.2005, which relates back to the date of its application i.e., 20.01.2003.

1.1 User is claimed by the plaintiff company since 23.11.1997. Notably, the registration has been obtained in Class 19 qua all types of rigid PVC Pipes.

2. Defendant no.1 is a proprietorship concern owned by defendant no.2.

Defendant no.2 (Mr. Rajeev Jain) is the sibling of the main protagonist in the plaintiff company, who is also its Director i.e., one Sh. Sanjeev Jain. The suit has been instituted on behalf of plaintiff company by his wife, Mona Jain.

3. The record discloses that the matter was referred for mediation which, evidently, failed.

4. It would therefore be necessary to briefly delineate the broad contours of the dispute, which have emerged from a perusal of the record :-

4.1 The patriarch of the family is one, Sh. Manmohan Jain, who is the father of Sh. Sanjeev Jain, the Director and as stated above, the main protagonist of the plaintiff company, and Sh. Rajeev Jain i.e., defendant no.2. Evidently, in 1986, the father, Sh. Manmohan Jain had set up a business enterprise for manufacturing, buying, selling, importing and exporting, etc. all types of plastic pipes including PVC pipes, under the name and style of Monika Plastic Pipes Pvt. Ltd. (in short Monika Plastic).

The promoter directors of the said company were : Sh. Manmohan Jain; his wife, Ms. Chanchal Jain and Sh. Sanjeev Jain.

4.2 Since, business expanded, Manmohan Jain's family incorporated another company, this time in the father' name i.e., Manmohan Plastics Pvt. Ltd. (in short Manmohan Plastics). This company was incorporated in 1992. In this company, the promoter directors were defendant no.2 i.e., Sh. Rajeev Jain, Sh. Rajesh Jain, yet another son of Manmohan Jain, and Ms. Mona Jain wife of Sh. Sanjeev Jain, who, as indicated above, is also a director in the CS(OS) 1528/2013 Page 2 of 23 plaintiff company. As per the version given by the defendants in the written statement, this company manufactured and sold PVC pipes used in water supply, under the trademark, 'MOHAN PIPES'.

4.3 In 2000, Sh. Manmohan Jain incorporated yet another company under the name and style of Monika Telecom Pipes Pvt. Ltd. (in short Monika Telecom). The promoter directors of this company were Sh. Manmohan Jain, Ms. Chanchal Jain, defendant no.2 i.e., Sh. Rajeev Jain and his wife, Ms. Ritu Jain. Once again, as per the version set out by the defendants in their written statement, this company, was in the business of manufacture and sale, inter alia, of : HDPE pipes, PVC pipes, and steel pipes; under the trademark, 'MONIKA'.

4.4 It may be important to note, a fact, which has come through during the course of arguments (which is not disputed before me), is that, the name 'MONIKA', which has become the subject matter of the dispute amongst the parties is, the name of the daughter of Sh. Manmohan Jain, which is how, it was adopted by him qua the two companies incorporated in 1986 and 2000. 4.5 Evidently, there was a dispute amongst the members of the family which, resulted in a family settlement being drawn up in April, 2003. Though the parties are not clear as to the number of memorandum of understanding drawn up, it is accepted by both sides that it resulted in separation of business. The result of which was that, Manmohan Plastics came to be controlled by Sh. Sanjeev Jain and his wife, Mona Jain while, the other companies Monika Plastic and Monika Telecom came under the wings of defendant no.2, Sh. Rajeev Jain and his wife, Ms. Ritu Jain. 4.6 It may be of some relevance to note that sometime in 1993, Monika Plastic had applied for registration of the mark, Monika in class 17 for PVC pipes. The said application bore the registration no.594980 and in that user CS(OS) 1528/2013 Page 3 of 23 was claimed qua the said mark since 01.01.1987. This applicantion evidently did not reach fruition as it came to be abandoned. 4.7 As indicated above, on 20.01.2003, an application was filed for registration of the mark, "MONICA GOLD", in class 19. This application bore the registration no. 1167565. The interesting part is, though in the application Form (TM-1) against the header : 'in the name of' (which is a query pertaining to proprietor(s) of marks) the names of Messrs Manmohan Jain, Sanjeev Jain, Rajesh Jain and Ms. Mona Jain are given; the header "trading as" sets out the name of the plaintiff company i.e., Manmohan Plastics Ltd.

4.8 There is on record, an additional representation filed by one, Sh. S.C. Gupta, Advocate which, shows the : "Name and Address of the Applicant"

as that of the plaintiff company i.e, Manmohan Plastics Pvt. Ltd. This document however does not bear the endorsement or stamp of the Trademarks Registry though, it is backed by a special power of attorney issued by the plaintiff company in the name of Sh. S.C. Gupta, Advocate. 4.9 There is another document on record which, is a download from the Trademarks Registry, which has the usual disclaimers, which is that it is not for legal use, and if, there are any discrepancies, the same may be brought to the notice of the Trademarks Registry. This is a download as of 01.04.2014. In this document, the proprietor's name qua the trademark MONICA GOLD is shown as, Sh. Manmohan Jain and alongside the heading : "trading as", the name of the plaintiff company i.e., Manmohan Plastics Pvt. Ltd. is adverted to. Amongst the details given of uploaded documents, there is a reference to an additional representation sheet alongside which, the date given is 20.01.2003.

5. The reason that, I am referring to these documents is that, arguments CS(OS) 1528/2013 Page 4 of 23 have been addressed by both sides based on extract contained in these documents, to which, I will be referring to in the later part of my discussion.

5.1 There is no dispute raised before me by the defendants that Monika Plastic conducted business between 1988 and 1996. The plaintiff company avers in this behalf that Monika Plastic had to stop its business because it was blacklisted.

5.2 In so far as Monika Telecom is concerned, though the plaintiff company avers that it carried on business between 2000 and 2008 and that, thereafter, it did not carry on business as, this company was also blacklisted, there are balance sheets on record which show, that it has recorded sales till 2012, though they have steadily depleted from a high of Rs.16.88 Crores (approximately) in 2006-2007 to Rs.34.92 Lakhs, in 2011-2012. 5.3 It is admitted by the plaintiff company in its pleadings that since Directors of Monika Telecom were related to the directors of the plaintiff company, the plaintiff company permitted Monika Telecom to use the mark 'MONIKA'. It is also averred by the plaintiff company that though, as already indicated above, Monika Telecom was blacklisted in 2008, it was closed by defendant no.2 in 2012, who thereafter set up defendant no.1, Ganpati Plastic Industries. (See averments made in paragraphs 18 and 19 of the plaint).

5.4 The plaintiff's case is also that pursuant to the family settlement, which is evidently recorded in the two Memorandum of Understanding (in short MOUs) of even date : i.e., 21.04.2003, the mark, MONICA / MONICA GOLD became its exclusive property. Family settlement, according to the stand taken by the plaintiff company, resulted in removal of defendant no.2 as, the director of the plaintiff company and being given charge of Monika Telecom. According to the plaintiff company, it was in CS(OS) 1528/2013 Page 5 of 23 this context that the surety given by Sh. Sanjeev Jain vis-a-vis Monika Telecom was discharged and similarly the surety given by Sh. Rajeev Jain i.e., defendant no.2 vis-a-vis the plaintiff company, stood discharged. 5.5 Interestingly though, neither Monika Plastics nor Monika Telecom or even the father, Sh. Manmohan Jain or other members of the family except Sh. Rajeev Jain are parties to the suit. The suit is directed only against Sh. Rajeev Jain and his proprietorship concern.

5.6 Though both in the plaint and the captioned interlocutory application, the reliefs prayed for are wide, in as much as injunctive relief is claimed in relation to the use of the mark, 'MONICA GOLD' or any of its deceptively similar trademarks in relation to PVC as also HDPE pipes and fittings; during the course of the arguments, Mr. Sethi confined the reliefs to PVC pipes.

5.7 I may also note that an injunctive relief in the aforesaid terms has also been sought qua use of MONICA/MONICA GOLD or its variants not only as a trademark but also as a trading style or name of the firm. 5.8 It is in the background of the aforementioned facts that the instant suit was filed when, two separate notices of even date i.e., 06.06.2013 issued to the defendants, did not elicit a favourable reply. The defendants vide their reply dated 26.06.2013, evidently, claimed prior user of the mark, 'MONIKA'.

5.9 As one would notice, mark of the defendants has the alphabet 'K' as against the mark of the plaintiff company, which uses the alphabet, 'C' in its trademark, 'MONICA GOLD'.

6. In the plaint, the usual assertions have been made that the defendants have impinged upon the rights of the plaintiff company by using the marks 'MONIKA /MONIKA PREMIUM / MONIKA GOLD / MONICA GOLD / CS(OS) 1528/2013 Page 6 of 23 MONICA' as they are an imitation of plaintiff's registered mark, MONICA GOLD. It is also asserted that the actions of the defendants constitute infringement of its registered mark.

6.1 There is also an assertion that the defendants are guilty of passing off, indulging in unfair competition and causing dilution of their trademark. 6.2 It is averred that the defendants are piggy ridding the goodwill and reputation created by the plaintiff company vis-a-vis its registered trademark.

6.3 There is a reference to the sales turnover. It is averred that the sales turnover of the plaintiff company has risen from a figure of Rs.70.78 Lakhs (approx) in 1993-1994 to Rs.9.58 Crores (approx) in 2012-2013. It may be pertinent to note here that though the sales figure for the period spanning 1993-2013 have been given, one would have to discard the figures prior to Nov. 1997 since, even as per the plaintiff's own claim made in the TM-1 Form, the registered mark, MONICA GOLD is claimed as having been used by it, only from 23.11.1997.

6.4 Similarly, in the plaint there is a reference to the expenses incurred in promoting and advertising the plaintiff's product sold under the said mark. The advertisement expenditure is also detailed out from 1993-1994 till 2012-2013. The amount spent in 1993-1994 towards advertisement is, a sum of Rs.14,700/- whereas the amount spent in 2012-2013 is, Rs.56,555/-. Between 2007-2008 and 2011-2013, no amount has been spent towards advertisement expenditure. The highest amount, which is spent, towards advertisement is in the year 2002-2003, which is an amount of Rs.2,66,077/- Like in the case of sales turnover, the advertisement expenses would become relevant only from November 1997 when, the mark was put to use.

SUBMISSIONS OF COUNSELS

7. Based on the aforementioned broad assertions in the plaint, Mr. Sethi, the learned senior counsel, who argued on behalf of the plaintiff company, made submissions which, can broadly, be paraphrased as follows :-

7.1 The plaintiff company is an owner of the registered trademark.

Therefore, the plaintiff company is inhered with statutory and common law rights in the registered trademark.

7.2 The mark, 'MONICA GOLD' has been used by the plaintiff company since 23.11.1997 and under the family settlement, both the mark as well as the business carried out by the plaintiff company has come to the share of Sh. Sanjeev Jain alongwith his wife, Ms. Mona Jain.

7.3 Monika Plastics ceased to do business after 1996, while Monika Telecom ceased to do business in 2008. Both companies ceased their respective business, as they were blacklisted.

7.4 Defendant no.1, which is a proprietorship concern of defendant no.2, had never used the trademark, 'MONIKA / MONIKA PREMIUM' or any of its variants. Therefore, the right of 'prior user', if any, vis-a-vis the owner of the registered trademark, can never vest in the defendants. Section 34 of the Trademarks Act, 1999 (in short the T.M. Act) which recognizes this right expounds the pre-requisite of continuous user. The defendants not being continuous users of the mark, 'MONIKA / MONIKA PREMIUM', cannot take this plea, as a defence, against the plaintiff's action for infringement of its registered trademark.

7.5 The law mandates that there can be only "one mark, one source and one proprietor". In other words, a trademark cannot have two origins. Where there are joint owners, the mark cannot be used in competition with one another.

7.6 The fact that the mark originated with the family company, Monika Plastics would not take away the rights of the plaintiff company which, had made use of the mark, since November, 1997 and, had thereafter, obtained a registration of the trademark, 'MONICA GOLD', which is valid w.e.f. 20.01.2003.

7.7 In support of his submissions, Mr. Sethi, relied upon the following judgments:- Power Control Appliances and Ors. Vs. Sumeet Machines Pvt. Ltd. and Ors. 1995 PTC 165; Atlas Cycles (Haryana) Ltd. Vs. Atlas Products Pvt. Ltd., 2008 ( 36) PTC 269 (Del) (DB); Amaravathi Enterprises Vs. Karaikudi Chettinadu, 2008 (36) PTC 688; and Kores (India) Ltd. Vs. Whale Stationery Products Ltd., 2008 (36) PTC 463 (Bom.).

8. On the other hand, Mr. Lall, who appeared for the defendants submitted that no case for injunction was made out. He broadly made the following submissions :-

8.1 The plaint was full of misleading assertions. In this regard, he referred to the fact that while the application for registration of the trademark clearly delineated that certain individuals, which included Sh.

Manmohan Jain, were the owners of the trademark, it had been wrongly contended that the plaintiff was the owner of the mark. 8.2 In the plaint, a declaratory and injunctive relief has been claimed with respect to goods falling in both Class 17 and 19 and with respect to the trading style and name of the firm, whereas admittedly, the trademark registration certificate clearly adverts to the fact that the registration obtained is vis-a-vis rigid PVC pipes which, fall in class 19. There is no reference to HDPE pipes. Reference in this regard was made to paragraph 11 of the plaint.

8.3 Emphasis was also placed on the obfuscation in the plaint of certain vital facts, such as, Sh. Manmohan Jain, the father of Sh. Sanjeev Jain and defendant no.2. i.e., Sh. Rajeev Jain, had used the mark, 'MONIKA', in respect of the company, Monika Plastics and, that thereafter, another company by the name of Monika Telecoms was incorporated in 2000 and, also the fact that, both these companies used the mark, 'MONIKA /MONIKA PREMIUM'.

8.4 Mr. Lall also submitted that the plaintiff company has admitted the fact that despite its claimed right in the registered mark, 'MONICA GOLD', it permitted Monika Telecom to use the mark, 'MONIKA'. 8.5 The contention, therefore, made on behalf of the defendants was that since, in the family settlement, the two companies, Monika Plastics and Monika Telecom, had come to the share of defendant no.2, the defendants were entitled to use the mark, 'MONIKA / MONIKA PREMIUM', being prior users of the said marks.

8.6 Stress was laid on the fact that, Sh. Manmohan Jain, father of defendant no.2, was the first adopter of the mark, 'MONIKA / MONIKA PREMIUM', which he had been using for both PVC pipes and HDPE pipes, since 1986. It was thus contended that there has been a seamless and continuous user of the mark, 'MONIKA / MONIKA PREMIUM' by the defendants since, 1986.

8.7 It was submitted that since the mark was unregistered, the requirement stipulated in Section 2(r) of the T.M. Act that, assignment of rights can only be by way of a written consent of the owner of the mark, was not applicable to the defendants.

8.8 The defendants in other words, questioned the title of the defendants to the mark and also asserted that they were using the mark MONIKA right CS(OS) 1528/2013 Page 10 of 23 since, 1986. In this behalf, it was pointed out by the learned counsels for the defendants that the plaintiff company on its own showing had admitted that it had permitted Monika Plastics to use the mark, 'MONIKA without any impediment.

8.9 In support of his submissions, the learned counsel for the defendants has relied upon the following judgments :- Kamal Trading Co., Bombay and Ors. Vs. Gillette U.K. Limited, Middle Sex, England, 1988 PTC 1; Ram Krishan and Sons Charitable Trust Ltd. Vs. IILM Business School, passed in CS(OS) 1308/2007 & IA No.8445/2007 decided on 30.07.2007. REASONS

9. Having heard the learned counsels for the parties and perused the record, what emerges is as follows :-

9.1 Sh. Manmohan Jain, the father of defendant no.2 (Sh. Rajeev Jain) and Sh. Sanjeev Jain, the main protagonist and Director of the plaintiff company / Manmohan Plastics, was the first adopter of the mark, MONIKA. 9.2 The counsels for the parties accepted that the genesis of the mark lay in the name of the daughter of Sh. Manmohan Jain.

9.3 Sh. Manmohan Jain, in 1986, incorporated and set up Monika Plastic followed by the incorporation of Manmohan Plastics and Monica Telecom in 1992 and 2000 respectively.

9.4 Monika Plastics manufactured and sold PVC pipes till about April, 1998 which is, the last invoice available on record presently. (See page 600 of the documents filed by the defendant).

9.5 It is, however, not disputed even by the defendants that Monika Plastic is no longer carrying on its business. Though there is nothing on record that this company has ceased to exist or that it was blacklisted as claimed by the plaintiff company, except for a bare assertion in the plaint CS(OS) 1528/2013 Page 11 of 23 which has been denied by the defendants.

9.6 Monika Telecom, as is evident from the masthead of its invoice, apparently proclaimed to the world at large that it was a manufacturer of 'PLB-HDPE pipes'. There are invoices available on record of Monika Telecom from September 2001 onwards.

9.7 In and around November 2005, Monika Telecom started dealing in PVC pipes, as well. (See invoice dated 19.11.2005 at page 642 of the documents filed by the defendants.) The masthead of the invoice of Monika Telecom from May 2006 also underwent a change in as much as it claimed that it was in the business of manufacturing not only PLB-HDPE pipes but also PVC pipes and fittings. There are on record invoices showing sales of PVC pipes in June, July, August, 2006 and January, 2007 as well. (See pages 646 and 648 of the documents filed by the defendants.) 9.8 In the replication filed, the plaintiff admits that "..After the family settlement, Monika Telecom Pipes Pvt. Ltd., had for a few months started manufacturing PVC pipes, which is when, this issue was raised within the family and Monika Telecom made to cease manufacture of PVC pipes...".

9.9 The repeated claim in the replication that the plaintiff had been using the mark, MONICA/MONICA GOLD qua PVC pipes and fitting since 1992 is belied by the fact that in the application filed for registration of trademark, the plaintiff claims user of the registered mark, MONICA GOLD since 23.11.1997.

10. The last balance sheet placed on record of Monika Telecom pertains to the financial year ending on 31.03.2012. The sales for the financial year 2011-2012 are approximately Rs.34.92 Lakhs. There is nothing on record to suggest that the said company has ceased its business either in 2008 or CS(OS) 1528/2013 Page 12 of 23 thereafter, as is contended by the plaintiff or that it stands black listed. Qua blacklisting of Monika Telecom, there is an assertion in the plaint, which is denied in the written statement filed by the defendants. 10.1 The documents by the plaintiff company inter alia comprise of invoices spanning from 2001 till March 2013 as also two newspaper advertisement of May and August 2001. The invoices of the plaintiff company show sale of PVC pipes but give no inkling that they are sold under the trademark 'MONICA / MONICA GOLD'. The two advertisement do however refer to the trademark 'MONICA GOLD'. The defendants on their part contend that the plaintiff company was selling PVC and HDPE pipes; albeit under the mark 'MOHAN PIPES', and that, Sh. Manmohan Jain did not permit opposition to be filed to the registration of the trademark 'MONICA GOLD' to maintain peace and harmony in the family. 10.2 There are two MOUs of even date i.e., 21.04.2003, which in effect show that the control and management of Manmohan Plastics alongwith its assets and liabilities was handed over to Sh. Sanjeev Jain while, the management and control over Monika Telecom was handed over to defendant no.2, i.e., Mr Rajeev Jain.

10.3 The balance sheet of defendant no.1, which is the proprietorship concern of defendant no.2, shows that against total sales of Rs.3.04 Crores, recorded for financial year 2012-2013, sales of PVC pipes is approximately Rs.1.33 Crores, which is 43% of the total sales.

10.4 There are invoices placed on record by the defendants showing sale of PVC pipes since August 2012. The present suit was instituted only on 03.08.2013 and was moved in court on 05.08.2013.

10.5 Though, the plaintiff has set up in the plaint a very wide claim, which is with regard to its right to use the registered trademark MONICA GOLD CS(OS) 1528/2013 Page 13 of 23 and its variants vis-à-vis PVC and HDPE pipes, both the pleadings on record (specially the replication) and the registration certificate would show that the right is restricted to PVC pipes.

10.6 Mr. Sethi, the learned senior counsel for the plaintiff, during the course of the argument, as indicated above, conceded that the main grievance of the plaintiff was that the defendants had ventured into the arena of manufacture and sale of PVC pipes under the trademark, 'MONIKA'. 10.7 What compounds the problem further, is the fact that the application filed for registration of the trademark, shows certain individuals as the proprietors of the trademark, 'MONICA GOLD', which includes Sh. Manmohan Jain alongwith Sh. Sanjeev Jain, his wife, Mona Jain and the other sibling, Sh. Rajesh Jain.

10.8 Though there is on record, an additional representation, which I take it, was filed on the date when the Form TM-1 was filed, i.e., 20.01.2003, that is only indicative of the name of the applicant.

10.9 The plaintiff realizing that it had allowed at least Monika Telecom to use the trademark, 'MONIKA' for several years since 2001, has not impleaded the said company as a defendant. The record is, prima facie, suggestive of the fact that PVC pipes were manufactured and sold till April of 1998 by Monika Plastic under the trademark, 'MONIKA' when this business appears to have been transferred to Manmohan Plastics. What has not emerged from the invoices filed by the plaintiff that it sold PVC pipes under the trademark MONICA / MONICA GOLD. The invoices carry a reference to the corporate name i.e., Manmohan Plastics (P) Ltd.

11. The argument of the plaintiff that the defendants could lay no right to the mark, 'MONIKA', if accepted, would result in ignoring the family settlement, which is reflected in the two MOUs of even date i.e., 21.04.2003, CS(OS) 1528/2013 Page 14 of 23 on which reliance has been placed by none other than the plaintiff. As per this MOU, Sh. Sanjeev Jain got to run and manage Manmohan Plastics while, Monika Telecom came under the control and management of defendant no.2 i.e., Sh. Rajeev Jain.

11.1 Defendant no.2, who is the proprietor of defendant no.1, has carried out a substantial part of its sales in 2012 in PVC pipes under the trademark, MONIKA/MONIKA PREMIUM. In percentage terms, turnover of PVC pipes is 43% of the total sales turnover of defendant no.2.

12. The question therefore is, should defendants be restrained from firstly using the trademark, 'MONIKA' at all and, secondly, in relation to PVC pipes.

12.1 In so far as the first question is concerned, in my view, the family settlement demonstrates that the trademark 'MONIKA', which is an unregistered mark came to be acquired; albeit through a device of a juridical entity by defendant no.2. Notably, Monika Telecom is under the management of defendant no.2. The plaintiff company permitted, on its own showing, Monika Telecom, without any written agreement, use of the unregistered trademark, 'MONIKA', even after the registration of its mark 'MONICA GOLD'. The record shows that this position obtained from the date of its incorporation till the institution of the suit. The complication caused by permissive user of the unregistered trademark 'MONIKA' from the point of view of the plaintiff company is compounded further as between 2006-2007, Monika Telecom also dealt in PVC pipes.

12.2 Therefore, had the plaintiff arrayed Monika Telecom as a defendant, it may have found it difficult, if not impossible, to seek an injunction against it as, despite registration of its mark on 28.01.2005 which relates back to its CS(OS) 1528/2013 Page 15 of 23 application dated 20.01.2003, it permitted use of the mark 'MONIKA' by it. 12.3 The argument advanced on behalf of the plaintiff that use by Monika Telecom cannot enure to the benefit of the defendants as there is no written agreement of assignment between them; an argument which is advanced based on the reading of provisions of Section 2(1)(r)(ii)(c), is, in my view, misconceived as the section pertains, inter alia, to the permitted use of a registered trademark. The mark 'MONIKA', by itself, admittedly, is an unregistered trademark and, therefore, would not come within the rigour of the said provision. The permitted user by a person other than a registered proprietor, which obviously would mean, qua a registered mark, can only be by the consent of the registered proprietor reflected in a written agreement. This condition, cannot in my view, apply to an unregistered mark. If that be so, Monika Telecom, it appears, has further allowed defendant no.2 i.e., Sh. Rajeev Jain to use the mark, 'MONIKA'. As a matter of fact, the plaintiff company, permitted Monika Telecom to use its mark MONIKA, without a written assignment agreement though today, it vociferously argues to the contrary.

12.4 The defendants between 2012 and 2013 have used the mark, MONIKA both for HDPE and PVC pipes. As indicated above, the balance sheet of defendant no.1, for the financial year 2012-2013 shows, a sales of nearly Rs.1.33 Crores against a total sale of approximately Rs.3.04 Crores of PVC pipes.

12.5 Furthermore, the defendants question the plaintiff's right and title in the mark, MONICA GOLD based on what is reflected in Form TM-1. Though, a registered mark would ordinarily put at rest any questions being raised qua the title of the mark and, upon registration logically allow such a registrant to exercise all statutory rights under the T.M. Act; the right comes CS(OS) 1528/2013 Page 16 of 23 with caveats specially of those who claim prior user of the mark. A holistic reading of the pleading would show that the defendants have claimed prior user and, therefore, in my view, cannot be deprived at this stage, the use of the mark, MONIKA or MONIKA PREMIUM. This is especially so in view of the fact that invoices filed by the plaintiff company do not show that PVC pipes sold by it were sold under the mark 'MONICA / MONICA GOLD'. Except for two stray advertisements of 2001, there is nothing on record to show sales by the plaintiff company under trade mark MONICA/MONICA GOLD. Whereas Monika Plastic was manufacturing PVC pipes till 1998 which, was resumed by Monika Telecom in 2006-2007 and now by the defendants in 2012-2013. While granting an injunctive relief, the court is required to maintain status quo which obtains amongst the parties on the date of the institution. See observations in American Cyanamid Co. vs Ethicon Ltd. 1975 (1) All ER 504 at page 511. This principle would apply even to a suit of infringement and / or passing off.

13. There is also some merit in the submission of Mr Lall that the plaintiff revealed less and if not hid, certainly obfuscated facts in the plaint. The plaintiff failed to disclose as to who first adopted the mark MONIKA. The plaintiff, contrary to its own application, asserted that it had use of the mark "MONICA", with respect to goods falling in class 17 when, its own registration, was admittedly qua class 19 goods. This aspect was given up only during the course of the argument, as noted above. The plaintiff did not disclose, that for a period of time, Monika Telecom did manufacture PVC Pipes, as well. These facts emerged only in the replication filed by the plaintiffs in response to what got revealed in the written statement. 13.1 Interim injunction is an equitable relief. Party which seeks an CS(OS) 1528/2013 Page 17 of 23 injunction must shun obfuscation. Pleadings in this case give rise to several triable issues, such as, who first adopted the trademark "MONIKA"? Did the MOUs of April, 2003 envisage a situation that the two sides [represented by Sanjeev Jain and Rajeev Jain (defendant no.2)] should allow existence of the mark "MONIKA" alongside the registered mark "MONICA"? If so, what would be its effect? Did the plaintiff company manufacture and sell PVC pipes under the trademark MONICA GOLD or, under the mark "Mohan Plastics" as contended by the defendants?

13.2 This last aspect has to be seen in the context of the fact that in past Monica Plastic and, thereafter, Monika Telecom has manufactured PVC pipes (though briefly). The masthead of Monika Telecom invoices continues to proclaim to the world at large that it is, inter alia, a manufacturer of PVC pipes. On the other hand, none of the invoices of the plaintiff company show sale of PVC pipes under the trade mark 'MONICA / MONICA GOLD'. The plaintiff company, has apparently, allowed such status quo to prevail for several years. Therefore, even if one were to hold based on the registration that the plaintiff company has a prima facie case, it fails the test of balance of convenience. I must also note here that even with respect to the registration certificate, the defendants seek to contend that the ownership of the mark 'MONICA GOLD' is that of individuals, which includes the father, Manmohan Jain and not the plaintiff company. This and other aspects most certainly raise triable issues.

14. Before I conclude though, I must deal with the judgements cited by Mr Sethi.

14.1 The first judgement cited is the judgement of the Supreme Court in the case of Power Control Appliances and Ors. Vs. Sumeet Machines Pvt. Ltd. and Ors. This was a case where a feud erupted between two warring CS(OS) 1528/2013 Page 18 of 23 parties, which belonged to one family; essentially, with regard to the trade mark 'Sumeet'. The appellants before the Supreme Court, who were the original plaintiffs, also alleged, infringement of copyright and the design by the respondents/ defendants. The two main parties to the dispute were the mother and father, who were on one side, with the son on the other side. 14.2 In this case, admittedly, the mother, Madhuri Mathur, was the person who had conceived and adopted the mark 'Sumeet'. It was the son, who had started using the registered trademark 'Sumeet' for the purposes of manufacturing and selling washing machines and vacuum cleaners, as also other electrical appliances. The courts below had denied ad interim injunction to the appellants/plaintiffs, which included the mother, primarily on the ground that they had acquiesced to the use of the trademark by the respondents/ defendants.

14.3 The Supreme Court, on facts, concluded otherwise and, in particular, repelled the plea of the respondents/ defendants, that they could assert the right of joint ownership of the trademark even while claiming to be rivals. 14.4 It is in this context, that the court elucidated the principle "one mark one source". What is required to be made note of is that, in this particular case, the respondent no.1/ defendant no.1 company came into existence only in 1984, whereas the trademark in issue was registered in April, 1970. 14.5 The judgement is clearly distinguishable, when compared to the facts arising in the present case. The defence in the instant case is essentially one of prior user and not of acquiescence. The mere fact that the disputes in the case of Power Control Appliances & Ors. Vs Sumeet Machines Pvt. Ltd. & Ors. pertained to a family, would not make it a relevant precedent for the present case.

14.6 In the instant case the person who has conceived the mark and CS(OS) 1528/2013 Page 19 of 23 adopted the mark MONIKA, in the first instance, is one, Sh. Manmohan Jain, who permitted the use of the mark "MONIKA" by two family companies, i.e., Monika Plastics and Monika Telecom. The Monika Plastics was incorporated in 1986, while Monika Telecom was incorporated in 2000. In between in 1992 Manmohan Plastics, i.e., the plaintiff company was incorporated.

14.7 The division of business in the family occurred in April, 2003. The result which obtained consequent thereto, was that, the father Manmohan Jain and other members of the family, broadly, took control of Monika Plastics and Monika Telecom, while Manmohan plastic came to the share of Mr. Sanjeev Jain. The plaintiff company filed for registration of the mark MONICA (with the alphabet 'C') only on 23.01.2003, claiming user since 23.11.1997.

14.8 The plaintiff company thus, permitted both Monika Plastics and Monika Telecom to use the mark MONIKA, which is as indicated above is an unregistered mark. The use of the mark MONIKA was made openly and concurrently without any objection by the plaintiff company. As a matter of fact, as indicated above, the plaintiff company claimed the use of the mark MONIKA only from November, 1997. While Monika Plastics appears to have ceased business from 1998, Monika Telecom continues in business as per documents presently on record.

14.9 Defendant no.2, who under the family settlement came to obtain control and management of Monika Telecom, in 2012, started his individual business through his proprietorship concern, that is, defendant no.1.

15. These facts would show, firstly, that if nothing else, defendant no.2 in one form or the other, whether through the modality of a company or proprietorship concern, has been openly using the mark MONIKA.

Therefore, the principle of "one mark one source", would not apply to the facts of the instant case; the defence of prior user being in play.

16. The judgement in the case of Atlas Cycles (Haryana) Ltd. Vs. Atlas Products Pvt. Ltd., which is a judgement of a Division Bench, once again, primarily re-emphasises the rights of a registered proprietor of the mark. The discussion of the Division bench veered around the issue as to whether the right in the registered mark entitled proprietor to restrain the opposite party from using the registered trademark as a part of their corporate/ trade name. The important fact, on which, the case turned against the defendant was that the mark in issue was registered in favour of the appellant/ plaintiff, since 1952, while the respondent no.1/ defendant had started using the registered mark 'Atlas' only in February, 2002, in respect of bicycles. This again not a case of prior user. The case is distinguishable on facts.

17. In the case of Amaravathi Enterprises Vs. Karaikudi Chettinadu, Amrawati the Division Bench of the Madras High Court overruled the Single Judge of its court on the ground that continuous prior user of the registered mark had not been made out by the respondent/ defendant. The judgement recognized that Section 34 of the T.M. Act is a shield against an action for infringement, upon establishment of continuous user in respect of goods manufactured and marketed by the registered proprietor of the mark. The Division Bench came to the conclusion, based on facts, obtaining in that case, that defence of continuous user was not established. The Court also recognized that in establishing the continuous use of the mark, the volume of sales etc. assumes significance.

17.1 In the facts of this case, as indicated hereinabove, the two legal entities, Monika Plastics and Monika Telecom, used the unregistered mark MONIKA and, thereafter, in 2012-2013 was used by defendant No.2 CS(OS) 1528/2013 Page 21 of 23 individually via its proprietary concern, i.e., defendant no.1. There have been substantial sales made by the two companies and the proprietorship concern. The proprietorship concern in 2012-2013 alone, has carried out sale of proximately 3.04 crores, out of which 1.33 crores relates to PVC pipes. The ratio of the Division Bench judgement, in fact, advances the case of the defendant herein.

18. In the case of Kores (India) Ltd. Vs. Whale Stationery Products Ltd., In this case a Single Judge of the Bombay High Court granted injunction to the plaintiff which had obtained registration of the mark 'Kores' and the device of a lady typist sitting before a typewriter. The second defendant company, which claimed it had been set up in 1887, by the very person, i.e., Mr. Wilhelm Koreska, after whose name the mark as conceived, claimed rights and title in the wordmark 'Kores'. The court recognized the principle that the rights of a registered proprietor contained in Section 28 and 29 of the T.M. Act, were subject to rights of a prior user as indicated in Section 34 of the very same Act. In the facts of the case, the Court, came to the conclusion that the defendant had been unable to establish that they had made continuous user of the trademark in issue from a date, prior to the use of the registered trademark by the plaintiff.

18.1 In the instant case, as indicated above, the mark Monika has been used by the Monika Plastics since 1986 till about 1998 and thereafter, between from 2000 onwards, by Monika Telecom. In 2012-2013 the mark "MONIKA" continues to be used by defendant no.2 via his proprietorship concern, i.e., defendant no.1. The plaintiff, on the other hand, admittedly, claimed use of the registered mark 'MONICA', only from 23.11.1997. The juridical entities, Monika Plastics and Monika Telecom are nothing but the alter egos of Manmohan Jain and defendant no.2 respectively. The latter is CS(OS) 1528/2013 Page 22 of 23 clearly apparent from a bare perusal of the two MOUs of April, 2003, to which the plaintiff company and its director Sanjeev Jain, are parties.

19. Having regard to the foregoing discussion, I am not inclined to grant an injunction as prayed. The only direction to which the defendants can be ordered to adhere to, is to maintain accounts of sales made under the trademark, MONIKA or its various variants in respect of all its products, which would include PVC and HDPE pipes. The accounts will be maintained product wise and will be tendered in court every quarter with a copy to the plaintiffs.

20. The interlocutory application is disposed of in the aforesaid terms. Needless to say, anything said hereinabove will not come in the way of parties at the stage of final adjudication of the suit. CS(OS) 1528/2013

21. Parties will file their original documents, if not already filed, within four weeks from today. The parties will also adopt the modality of an affidavit to admit / deny each other's documents.

22. List before the Joint Registrar for the aforesaid purpose on 05.12.2014.

RAJIV SHAKDHER, J SEPTEMBER 08, 2014 yg/kk CS(OS) 1528/2013 Page 23 of 23