Delhi High Court
M/S Maja Health Care Division vs M/S Trance International & Anr on 14 November, 2014
Author: G.S.Sistani
Bench: G.S.Sistani
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 99/2013
% Judgment reserved on 16.7.2014
Judgment pronounced on November 14, 2014
M/S MAJA HEALTH CARE DIVISION ..... Plaintiff
Through : Mr.Neeraj Grover and Ms.Meghna
Chandra, Advs.
versus
M/S TRANCE INTERNATIONAL & ANR ..... Defendants
Through : Mr.H.P. Singh and Mr.Navroop Singh
Advs.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J
I.A.907/2013
1. Plaintiff has filed the present suit for permanent injunction restraining
infringement of registered trade mark, passing off, delivery up and
rendition of accounts of profits.
2. Summons in the suit and notice in I.A.907/2013 filed under Order
XXXIX Rules 1 and 2 CPC were directed to be issued on 21.1.2013.
While issuing summons in the suit on 21.1.2013, the Court passed a
partial ex parte ad interim injunction order restraining the defendants
from selling perfumes, deodorants, cosmetics, etc. under the mark „Velvet
COBRA‟. It may be noticed that on 21.1.2013 counsel for the plaintiff
had made a statement that he was not pressing for any ex parte relief in
CS(OS)99/2013 Page 1 of 35
respect of defendants‟ mark „Diamond COBRA‟ as at that stage
representation for cancellation of the registration of the said trade mark in
favour of the defendants was pending.
3. Learned counsel for the plaintiff submits that as of today the
representation of the plaintiff stands accepted and the registration of the
defendants with respect to the trade mark „Diamond Cobra‟ stands
cancelled vide Order dated 18.12.2013 and, thus, he not only seeks
confirmation of the injunction Order dated 21.1.2013 but also prays that
the order dated 21.1.2013 be extended to the trade mark „Diamond Cobra‟
as a whole or any other similarly deceptive mark being used by the
defendants.
4. As per the plaint, plaintiff claims itself to be a large business house
manufacturing and selling cosmetics, hair oils, personal care products
including perfumes and deodorants under a distinctive and well-known
housemark(s) VI-JOHN and ST-JOHN and other trademarks for different
products, which are sold throughout India. It is further averred in the
plaint that in the early Seventies the trade mark COBRA was adopted by
the plaintiff in respect of perfume spray, hanky perfumes and scents by
M/s Maja Cosmetics, the parent firm of VI-John Group of Firms, which
was a proprietorship firm of Sh.Suchet Singh, father of Sh.Bhupinder
Singh and grandfather of Sh.Harshit Kochar and Sh.Achin Kochar, who
are the present partners of the plaintiff firm. The said trade mark was
continuously used till about 1979, when on account of death of Sh.Suchet
Singh the business of M/s Maja Cosmetics was temporarily restricted.
Subsequently, the perfumes, spray, hanky perfumes under the aforesaid
trade mark COBRA were once again launched in the year 1999 under
another family/group firm, M/s Vi-John Beauty Tech, which was a sole
proprietorship of Mrs.Satinder Kaur. The aforesaid firm continuously and
CS(OS)99/2013 Page 2 of 35
extensively used the trade mark COBRA till 2006 when the group firm
was re-aligned and a state of the art manufacturing facility was set up in
the year 2005 in Himachal Pradesh as a license user and assignee of M/s
Vi-John Beauty Tech by virtue of Assignment Deed dated 3.7.2007.
5. It is the case of the plaintiff that since the year 2006 through itself and
since early Seventies, through its predecessor and group firms, the
plaintiff has continuously and extensively been using the trade mark
COBRA.
6. The plaintiff also claims to have spent tremendous time, effort and money
in promoting, publicizing and popularizing the trade mark COBRA. It is
also the case of the plaintiff that on account of the quality of the product
the trademark has acquired tremendous, enviable and unreachable
reputation and goodwill amongst the public at large. In these
circumstances, in addition to the common law rights acquired in the
aforesaid trademark by virtue of prior user, adoption, continuous and
extensive use, the trademark St.John Cobra by virtue of registration
granted under no.1581353 in Class 3 of the said trade mark granted under
the Trade Marks Act, 1999, and also other registrations in some foreign
countries, the plaintiff is entitled to statutory protection of its trademark.
7. Learned counsel for the plaintiff points out that in the month of June,
2012, the plaintiff joined hands with M/s S.H. Kelkar and Company
Private Limited, Mumbai, who are the owners of several registrations of
numerous COBRA label marks in Class 3, details of which have been
extracted in the plaint.
8. As per the arrangement with M/s S.H. Kelkar and Company Private
Limited, Mumbai, the plaintiff has been authorised to take action against
all the infringers even on behalf of M/s S.H. Kelkar and Company Private
Limited. Further the plaintiff has been granted exclusive right to use the
CS(OS)99/2013 Page 3 of 35
registered trademarks of M/s S.H. Kelkar and Company Private Limited.
The plaintiff and M/s S.H. Kelkar and Company Private Limited,
Mumbai, have further agreed to co-exist in their respective business. It
has been agreed that M/s S.H. Kelker would be entitled to continue its
activities in the industrial segment. The plaintiff has been granted
exclusive right to exploit the retail segment i.e. perfumes, deodorants,
hanky perfumes, etc. In terms of the aforesaid MOU, a power of attorney
has also been executed in favour of Sh.Harshit Kochar, partner of the
plaintiff empowering him to take legal action against third party
infringers.
9. The plaintiff claims its trade mark to be a well-known mark in India, a
mark which the plaintiff adopted forty years ago and the products being
sold extensively in all corners of India for the past thirteen years.
10. It is also the case of the plaintiff that the goods are sold in the open market
as also through defence canteen stores all over India. The plaintiff claims
a huge turnover and also claims to have spent large sums of money on
advertisement. The plaintiff claims to have spent over Rs.32 crores during
the past four years over the publicity of its trade mark. The sale figures
have been extracted in the plaint and the same are reproduced below:
Year Sales Turnover (in Rs.)
2006-07 53,12,98,836/- (Over 53 crores)
2007-08 72,03,53,353/- (Over 72 Crores)
2008-09 96,09,54,500/- (Over 96 Crores)
2009-10 111,41,18,912/- (Over 111 Crores)
2010-11 132,03,49,282/- (Over 132 Crores)
2011-12 149,35,82,124/- (Over 149 Crores)
2012-13 (till 31st 118,66,02,586/- (Over 118 Crores)
CS(OS)99/2013 Page 4 of 35
December)
11. Plaintiff also claims registration of the trade mark St.John Cobra.
12. It is also the case of the plaintiff that the plaintiff has been extremely
vigilant about violation of its intellectual property rights by any
unscrupulous traders and have been constantly taking action to defend
their marks.
13. The complaint of the plaintiff is that the defendants are also engaged in
the manufacturing and marketing of identical goods as those of the
plaintiff. Defendant no.2 is the distributor of defendant no.1
14. Plaintiff learnt in the third week of July, 2012, during a market survey
conducted by the plaintiff‟s representative that the defendants were
marketing goods under the name of Diamond Cobra. It was also learnt
that defendant no.1 claim „Diamond Cobra, to be registered under
no.1467220. The plaintiff made enquiries and learnt that an application
had been made by defendant no.1 in the year 2006 as a proposed user and
the mark was advertised in the Trade Mark Journal no.1425 dated
1.10.2009.
15. It is the case of the plaintiff that the registration of defendant no.1 was
illegal as no mandatory notice to the public at large was issued and the
application was not advertised in the Journal much less in a proper and
decipherable manner and, thus, the registration of defendant no.1 was
unlawful and illegal and did not have any force of law.
16. The plaintiff issued a cease and desist notice to defendant no.1 and also
requested defendant no.1 to furnish a copy of the Trade Mark Journal in
which the application of defendant no.1 had been advertised and also to
surrender the illegal registration obtained by it. Although a reply was sent
yet the defendants did not cease or desist from using the trade mark
CS(OS)99/2013 Page 5 of 35
„Diamond Cobra‟. The plaintiff thereafter approached Trade Mark
Registry and also filed an application under Right to Information Act and
in response thereto the plaintiff learnt from the Trade Mark Registry in the
month of October, 2012 that the application no.1467220 had not even
been advertised and, thus, the same was in contravention to the provisions
of Sections 20 and 21 of Trade Marks Act, 1999, which according to the
plaintiff is a mandatory provision which cannot be dispensed with under
any circumstances.
17. It is also the case of the plaintiff that the plaintiff was assured by the trade
Mark Registry that suo moto action will be taken under Section 57(4) of
the Trade Marks Act, 1999, for cancellation of the registration. Another
ground raised in the plaint with regard to the registration of the trade mark
„Diamond Cobra‟ in favour of the defendants being ex facie illegal and
unlawful was that the plaintiff had never been given an opportunity to
oppose the impugned mark as the same had not been advertised in the
Trade Mark Journal.
18. In the first week of January, 2013, the plaintiff came across another
packaging under the mark Velvet Cobra manufactured by defendant no.1
and marketed by defendant no.2, which according to the plaintiff was yet
another attempt on the part of defendants to expand the use of the mark
Cobra by introducing another variant.
19. It is also the case of the plaintiff that adoption and use of the infringing
marks Diamond Cobra and Velvet Cobra on the part of the defendants is
malafide and the use is dishonest on the face of the record. The defendants
have not only infringed the registered trade mark of the plaintiff but are
also passing of their goods as that of the plaintiff to unwary class of
purchasers, who are bound to be deceived and cheated into buying inferior
quality goods of the defendants considering the same to be the quality
CS(OS)99/2013 Page 6 of 35
products of the plaintiff.
20. It is also the contention of counsel for the plaintiff that the trade mark
COBRA of the defendants is identical/deceptively similar to the trade
mark COBRA of the plaintiff and the use thereof amounts to passing off
in respect thereto as the confusion and deception is inevitable, which in
turn is likely to cause immense damage to the high reputation of the
plaintiff with the purchasing public and members of the trade at large and
the reputation earned by the plaintiff on account of sincere hardwork, high
quality of the product and on account of the extensive marketing and
publicity. It is also submitted that keeping in view the price range of the
products, the product in question is purchased by a class of consumers
including semi-literate, literate, children, housewives. It is, thus,
contended that persons having average intelligence and imperfect
recollection are bound to be misled.
21. It is also the case of the plaintiff that the plaintiff is the prior user of the
trade mark COBRA, which is evident from the fact that this mark was
initially adopted in the Seventies. Invoices of the years during the period
1970-1979 have been filed and thereafter invoices from the year 1999
onwards have been filed on record.
22. Learned counsel for the plaintiff has relied upon invoices for the period
1996 to 2006 and 2006 to 2013 of Vi John Beauty Tech, copies of which
have been placed on record. Reliance has also been placed on invoices
with respect to goods supplied to Canteen Store Department. Counsel has
also placed reliance on documents with respect to Celebrity Endorsement
Agreement to show that the goods were advertised and endorsed by
celebrities. Counsel has also placed reliance on documents filed with
respect to print advertisements.
23. It is also the case of the plaintiff that the trade mark of the plaintiff,
CS(OS)99/2013 Page 7 of 35
St.John Cobra stands duly registered. To the contrary the mark of the
defendant, which was initially registered, stands duly cancelled.
24. Learned counsel for the plaintiff relies on Ruston & Hornsby v/s The
Zamindara Engineering Co., reported at [1970] 2 SCR 222 in support of
his submission that mere addition of prefix or suffix can not make the
mark distinct. For the same argument, reliance is placed on Amar Singh
Chawal Wala vs. Shree Vardhman Rice and General Mills, reported at
2009 (40) PTC 417 (Del) (DB), more particularly paras 15, 16, 17, 20, 21,
22 and 23, wherein it was held by the Division Bench of this Court that
the mark HARA QILLA was similar to LAL QILLA, GOLDEN QILLA
of the plaintiff. This judgment was also relied upon by counsel for the
plaintiff in support of his argument that delay is not fatal for grant of an
injunction.
25. Paras 15, 16, 17, 20, 21, 22 and 23 read as under:
15. The submissions of the parties have been considered. It is not in
dispute that the Plaintiff has in its favour registration of the four
marks and devices as noticed hereinbefore. The suit filed by the
Plaintiff is essentially one for infringement in respect of the
Plaintiff‟s trade mark on the ground that the use by the Defendants
of the mark and device HARA QILLA and QILLA respectively
would cause confusion and deception among the users and the trade
in general. The distinction between a suit based on infringement
and that based on passing off was explained by the Supreme Court
in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories AIR 1965 SC 980. It was explained that "while action
for passing off is a common law remedy being in substance an
action for deceit, that is, a passing off by a person of his own goods
as those of another, that is not the gist of an action for infringement.
The action for infringement is a statutory remedy conferred on the
registered proprietor of a registered trade mark for the vindication
of the „exclusive right to the use of the trade mark in relation to
those goods.‟ The use by the Defendant of the trade mark of the
Plaintiff is not essential in an action for passing off, but is the sine
qua non in the case of an action for infringement." It was further
CS(OS)99/2013 Page 8 of 35
noticed that "where the evidence in respect of passing off consists
merely of the colourable use of a registered trade mark, the
essential features of both the actions might coincide, in an action
for infringement, the Plaintiff must, no doubt, make out that the
defendant's mark is so close either visually, phonetically or
otherwise and the Court should reach the conclusion that there is an
imitation" in which event it would be established that the Plaintiff‟s
rights are violated. The Supreme Court went on to further explain
that "if the essential features of a trade mark of the Plaintiff have
been adopted by the defendant, the fact that the get up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sales show marked differences, or indicate
clearly a trade origin different from that of the registered proprietor
of the mark would be immaterial; whereas in the case of passing
off, the defendant may escape liability if he can show that the added
matter is sufficient to distinguish his goods from those of the
Plaintiff." (emphasis supplied)
16. In Amritdhara Pharmacy v. Satya Deo the question of phonetic
similarity between Amritdhara and Lakshmandhara was considered.
It was said that "an unwary purchaser of average intelligence and
imperfect recollection would not split the name into its component
parts and consider the etymological meaning thereof or even
consider the meaning of the composite words as "current of nectar"
or "current of Lakshman". Where the trade relates to goods largely
sold to illiterate or badly educated persons, it is no answer to say
that a person educated in the Hindi language would go by the
etymological or ideological meaning and see the difference
between "current of nectar" and "current of Lakshman". It was
emphasized that the whole word had to be considered. It was held
that "the overall similarity between the two names in respect of the
same description of the goods would likely to cause confusion
within the meaning of Section 10(1) of the Trade Marks Act,
1940."
17. In the instant case as far as the registered marks in favour of the
Plaintiff are concerned, applying the test laid down in Kaviraj
Pandit it is seen that the essential feature of the mark is the word
"QILLA‟. Whether the word is spelt as QILLA or KILLA, or even
written in a different style or colour combination. To the customer
who seeks to purchase the QILLA brand rice both names would
sound phonetically similar. The customer is likely to ask the
CS(OS)99/2013 Page 9 of 35
retailer: "Can I have the QILLA brand rice?" In the considered
view of this Court, it is this essential feature of the Plaintiff‟s mark,
i.e the word QILLA, which has been adopted by the Defendant
No.1. That the defendants have also used a pictorial representation
of the device in the form of a fort also indicates that the Defendants
too intended the same meaning to be assigned to the word, which is
an Urdu one meaning "fort". Therefore, though the device QILLA
is depicted in a slightly different way by the defendant, it is
deceptively similar to the device used by the Plaintiff. Further the
use is in respect of the same commodity, rice. Therefore there is
every possibility of there being a confusion created in the mind of
the purchaser of rice that the product being sold by the Defendant is
in fact a product that has emanated from or has been manufactured
by the Plaintiff.
20. In the considered view of this Court, the defendants have not
been able to demonstrate prima facie honest use of the mark. They
have also not been able to show concurrent user of the mark or
device. The Plaintiff is right in pointing out that no invoices or bills
since 1978 have been placed on record by the defendants to
substantiate this plea. Whatever has been placed on record does not
prima facie satisfy this requirement.
21. The next issue to be considered is whether the Plaintiff can be
said to be guilty of laches in not approaching the court earlier
particularly when the Defendants have been using the marks since
1978. In Hindustan Pencils Private Limited v. India Stationery
Products Co. 1989 PTC 61 the complainant was the registered
proprietor of trade mark "NATARAJ" and the device of
"NATARAJ‟ on its pencils. The said marks have been adopted by
the Plaintiff in the year 1961. In the middle of 1985 the Plaintiff got
to know that the Defendants had got registered a copy right in
respect of a label similar to that of the Plaintiff in respect of pins.
The copy right in respect of pins was under the name „NATARAJ‟
using also the device of the dancing Nataraj. The Court also
considered the defence raised by the Defendant in that case that the
Plaintiff had acquiesced in the use by the Defendant of the
impugned mark. The Court then referred to the observation of
Court in Whitman v. Disney Productions 263 F2d 229 and held that
"delay by itself is not a sufficient defence to an action of interim
injunction but inordinate delay would amount to laches." It was
CS(OS)99/2013 Page 10 of 35
further observed as under by the learned Single Judge in paras 28
and 29 of the said judgment:
"28. If an action is taken by the registered owner and no
interim injunction is granted, the effect is that goods bearing
the infringing mark or spurious goods would continue to be
sold in the market. After a number of years when the case is
finally disposed of, after trial, and the plaintiff succeeds and
gets a permanent injunction then, possibly, the plaintiff may
also be compensated by his being awarded damages or an
account of profits, that sense of the non-grant of the interim
injunction would not ultimately, prejudice the plaintiff for he
may be compensated with payment of money but during this
period when the defendant is allowed to continue to infringe
the intellectual property it is the consumer or the purchaser
who alone suffers and who ultimately cannot be
compensated. Therefore, in order to curb the menace of
manufacture, production and sale of spurious goods and the
blatant violation of intellectual property it will be proper for
the court to take into consideration the interest of the general
public. In this regard reference may usefully be made to the
following observations of McCARTHY at page 346, para
30.21 which deals with the protection of third parties;
"Some courts also consider the necessity of protecting
third parties trade mark infringement cases, "third
parties" means the buying public. If the equities are
closely balanced, the right of the public not to be
deceived or confused may turn the scales in favour of a
preliminary injunction."
29. It would appear to be difficult to accept that relief of
temporary injunction should not be granted, because of the
delay on the part of the plaintiff, even though the court feels,
at that point of time, that ultimately permanent injunction
will have to be granted."
22. It was further held that acquiescence cannot be inferred merely
by the reason of the fact that the Plaintiff had not taken any action
earlier against the infringement of its rights. Acquiescence had to
mean something more than mere silence on the part of the Plaintiff.
The Court did not accept the contention that the delay and
CS(OS)99/2013 Page 11 of 35
acquiescence in the said case would defeat the right of the Plaintiff
to seek interim injunction. The Court on comparison of the marks
registered in the name of the Plaintiff and that used by the
Defendant came to the conclusion that prima facie the adoption of
the mark "NATARAJ" by the Defendant was clearly fraudulent."
The injunction was accordingly granted to the Plaintiff.
23. In the instant case, the Plaintiff has explained the sequence of
events preceding the filing of the suit. It first noticed the
infringement in 1986 and immediately sent a legal notice.
Thereafter when the defendants applied for registration, the plaintiff
immediately filed an opposition before the statutory authority and
prevented registration being granted in favour of the defendant.
This can hardly be termed as acquiescence by the Plaintiff. Further,
the suit was filed in 1989 itself, simultaneous with the opposition
being filed to the grant of registration in favour of the defendant.
Therefore there is no merit in this contention of the defendants that
the Plaintiff either acquiesced in the defendants‟ use of the
infringing mark and device or that there was delay in the plaintiff
seeking protection of its registered marks from infringement.
26. Reliance is also placed on Ansul Industries v/s Shiva Tobbacco
Company, reported at 2007(34) PTC 392 (Del), more particularly paras
11 to 14, 29 to 31, 40 and 44, wherein it was held that Udta Panchhi was
found to be similar to Panchhi. This judgment has also been relied upon
by counsel for the plaintiff for the submission that the delay is not
sufficient to defeat grant of injunction in cases of infringement of trade
marks and also delay is not a bar to enforce a legal right.
27. Paras 11 to 14, 29 to 31, 40 and 44 read as under:
"11. Thus, it is well settled that when the question whether the
mark causes or is likely to cause deception or confusion arises
before a Court, the standard applied is not that of a vigilant
consumer or a trader, but standard of an unwary normal customer
of the said product. The Court has to consider and examine whether
a consumer of the product is likely to be deceived or confused after
examining broad and dominant features of the two marks and
CS(OS)99/2013 Page 12 of 35
whether there is overall similarity that is likely to mislead a
purchaser. Both the marks have to be considered as a whole.
12. Question of confusion cannot be decided by keeping the two
marks by each other and noting similarities and differences between
the two marks. Right in a trade mark is with reference to trade and
commerce. Question of deception and confusion has to be
examined and dealt with from commercial point of view. The law
gives protection to the proprietor of the trade mark if there is
likelihood of deception or confusion. The impression created by
looking at the two marks and the significant feature and idea behind
the two marks that would be formed in the mind of the purchaser is
the relevant criteria. Similarity and affinity in sound is also an
important criteria. Ocular comparison is not decisive. Sound test is
important as customers ask for the goods by name.
13. Even when action for passing of under common law is initiated,
the essential features of both the marks are taken into consideration
to examine whether the alleged infringer is passing of his goods as
that of the other and causing injury to goodwill and business of the
other.
14. Chewing tobacco is used by illiterate and semi literate
consumers. We have to examine the question of deception or
confusion or likelihood thereof, from the eyes of the said
consumers. The word "Panchhi" in the mark 'Udta Panchhi' and
'Panchhi Chaap' enjoy prominence and is the focal point of the two
marks. Colour of the packing may be different but likelihood of
deception and confusions is likely to result due to phonetic
similarity and the use of the word "Panchhi" in both the marks. The
shop keepers selling chewing tobacco in many cases will be
illiterate or semi literate. Invariably customers ask for product of
this kind by its name "Panchhi". Some consumers are also likely to
believe that the two products are from the same source. Picture of
the flying bird is another essential feature of the two marks, which
is common to both. Thus, there cannot be any doubt that deception
or confusion is likely to arise in view of the similarity in the trade
mark 'Udta Panchhi' and Panchhi Chaap'.
(B) Whether injunction should be denied on the ground of delay
and laches.
29. In Midas Hygiene Industries (P) Limited v. Sudhir Bhatia , it
was held that in cases of infringement of trade mark, normally an
CS(OS)99/2013 Page 13 of 35
injunction order must follow and mere delay in bringing an action
was not sufficient to defeat right to injunction. Grant of injunction
also follows when prima facie it was established that adoption of
mark itself dishonest. It may be relevant to state here that in the
case Midas Hygiene Industries (P) Limited, Division Bench of this
Court had held that delay and laches and dis-entitled the plaintiff to
grant of interim injunction.
30. This Court in the case of Hindustan Pencils Limited v. India
Stationery Products Co. and Anr. 1989 (9) PTC 61 (Del) had
observed that inordinate delay by itself was not analogous or
similar to laches. Mere passage of time cannot constitute laches but
if, the alleged infringer was lulled into a false sense of security and
the alleged infringer had acted relying upon the said lapses,
question of laches can be examined and gone into as the Court
always has discretion to pass an interim injunction order. While
dealing with the concept of acquiescence, it was explained that the
same was different form delay and laches. Reference was made to
the explanation given by Kerly on Trade Marks, wherein it was
observed that in a classic case of acquiescence, the proprietor
knowing his rights does nothing, that the infringer ignores them.
The Proprietor had encouraged the infringer with the result that the
infringer acts upon his mistaken belief and worsens his position.
Kerly held that until and unless the conduct of the proprietor was
unconscionable, defense of acquiescence or laches was not
sufficient. Kerly, however, made a distinction between the defense
based on delay and laches and cases where a mark has become
"public juric" Reference was also made to Electrolux v. Electrix, 71
RPC 23 wherein five different pre-requisites for establishing
acquiescence in the nature of fraud were required to be considered
and satisfied before relief of injunction could be denied to the
proprietor. The Court, however, noticed that the question of
acquiescence and laches was a grey area and sometimes Courts had
refused to grant interim injunction on the said ground, though it
cannot be a valid ground to deny relief of permanent injunction.
This distinction between interim injunction and permanent
injunction did not find favor with the Court.
31. Distinction was also made in a case of a fraudulent infringer,
who has knowingly and deliberately violated the rights of the
proprietor. A person who had deliberately infringed upon another's
mark, it was held, cannot complain and hide behind defense of
delay laches or acquiescence, as the infringement at the very initial
CS(OS)99/2013 Page 14 of 35
stage itself was fraudulent. Delay and laches by itself would not
bestow, fraud with character of legality. Reference was also made
to McCARTHY on Trade Marks wherein it was observed that the
Court must also take into consideration necessity to protect third
party interest i.e. the general public or the buyer of the goods. It
was the right of the public not to be deceived and confused. After
examining various aspects this Court held as under:
30. It would appear to be difficult to accept that relief of temporary
injunction should not be granted, because of the delay on the part of
the plaintiff, even though the Court feels, at that point of time, that
ultimately permanent injunction will have to be granted.
31. Even though there may be some doubt as to whether laches or
acquiescence can deny the relief of a permanent injunction, judicial
opinion has been consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating the plaintiffs
rights then in that case, even if these is an inordinate delay on the
part of the plaintiff in taking action against the defendant, the relief
of injunction is not denied. The defense of laches or inordinate
delay is a defense inequity. In equity both the parties must come to
the Court with clean hands. An equitable defense can be put up by a
party who has acted fairly and honestly. A person who is guilty of
violating the law or infringing or usurping somebody else's right
cannot claim the continued misuse of the usurped right. It was
observed by Romer, J. in the matter of an application brought by
J.R. Parkington and Coy. Ltd., 63 RPC 171 at page 181 that "in my
Judgment, the circumstances which attend the adoption of a trade
mark in the first instance are of considerable importance when one
comes to consider whether the use of that mark has or has not been
a honest user. If the user in its inception was tainted it would be
difficult in most cases to purify it subsequently". It was further
noted by the learned Judge in that case that he could not regard the
discreditable origin of the user as cleansed by the subsequent
history. In other words, the equitable relief will be afforded only to
that party who is not guilty of a fraud and whose conduct shows
that there had been, on his part, an honest concurrent user of the
mark in question. If a party, for no apparent or a valid reason,
adopts, with or without modifications, a mark belonging to another,
whether registered or not, it will be difficult for that party to avoid
an order of injunction because the Court may rightly assume that
such adoption of the mark by the party was not an honest one. The
Court would be justified in concluding that the defendant, in such
CS(OS)99/2013 Page 15 of 35
an action, wanted to cash in on the plaintiffs name and reputation
and that was the sole, primary or the real motive of the defendant
adopting such a mark. Even if, in such a case, there may be an
inordinate delay on the part of the plaintiff in bringing a suit for
injunction, the application of the plaintiff for an interim injunction
cannot be dismissed on the ground that the defendant has been
using the mark for a number of years. Dealing with this aspect
Harry D. Nims in his "The Law of Unfair Competition and Trade-
Marks". Fourth Edition, Volume Two at page 1282 noted as
follows: Where infringement is deliberate and willfull and the
defendant acts fraudulently with knowledge that he is violating
plaintiffs rights, essential elements of estoppel are lacking and in
such a case the protection of plaintiffs rights by injunctive relief
never is properly denied. "The doctrine of estoppel can only be
invoked to promote fair dealings.
40. While examining question of convenience, delay in initiating
action for infringement by itself is not fatal. Delay may be fatal for
claiming damages. Difference has been made between mere delay
and laches. Laches being prolonged delay with inaction. Laches
alone is not normally considered to be a ground to reject an
injunction application. There should be something in addition to
and more than laches that will tilt the balance of convenience in
favor of a third party viz a registered proprietor of a mark. Court
will in these circumstances and in addition to laches examine
whether the said delay has caused prejudice to the third party.
When a proprietor allows his good will to be used by a third party
and allows him to grow and expand and thereby makes the third
party believe that he has no objection to use of the mark, then the
third party who has built up his sales will suffer prejudice, if he is
suddenly asked to stop. However, on the question of prejudice, the
onus is on the defendant.
44. In view of the entire case law discussed above, the following
principles of law emerge:
(i) Mere delay is not sufficient to defeat grant of injunction in
cases of infringement of trade mark. Delay is not a bar to
enforce and claim a legal right.
(ii) Consent in addition to other statutory defenses is a
complete defense to action for infringement.
CS(OS)99/2013 Page 16 of 35
(iii) Consent may be expressed or implied but inaction in
every case without anything more does not lead to an
inference of implied consent. Implied consent means conduct
inconsistent with claim of exclusive right over the trade
mark, trade name etc. Implied consent implies standing by or
allowing the defendant to invade rights and by conduct
encouraging the defendant to expend money, expand
business, alter their condition etc. in contravention of the
rights of the proprietor. In the case of Power Control
Appliances v. Sumeet Machines (P) Limited (supra),
Supreme Court has held that acquiescence implies positive
act and not merely silence or inaction as is involved in
laches.
(iv) defenses under the common law are also available to the
defendant.
Prior user is a valid defense.
(v) Balance of convenience between the parties should be
taken into consideration by the Court, while deciding the
question of grant of injunction. Unexplained laches
accompanied by prejudice and/or other reasons can be a
ground to deny injunction. However, prejudice in such cases
does not mean mere simplictor delay. Onus in this regard is
on the defendant.
(vi) Where initial adoption by the defendant itself is vitiated
by fraud and/or is dishonest, delay is no a valid ground to
allow misuse. If user is at the inception is tainted by fraud
and dishonesty, continuous use does not bestow legality.
(vii) Interest of general public who are the purchasers and
buyers has to be protected. In case to protect general
public/consumers, injunction order is required to be passed,
delay by itself is not un-surpassable obstacle."
28. Reliance has also been placed by counsel for the plaintiff on the case of
Midas Hygiene Industries Pvt. Ltd. v/s Sudhir Bhatia, reported at 2004
(28) PTC 121 (SC), wherein it has been held that in cases of infringement
of trade mark or copyright normally injunction must follow and mere
CS(OS)99/2013 Page 17 of 35
delay in bringing an action is not sufficient to defeat the grant of
injunction in such cases. It has also been argued on the basis of aforesaid
judgment that grant of injunction also becomes necessary after prima
facie it appears that adoption of the mark is itself dishonest. Para 5 of the
judgment reads as under:
"5. The law on the subject is well settled. In cases of
infringement either of Trade Mark or of Copyright normally
an injunction must follow. Mere delay in bringing action is
not sufficient to defeat grant of injunction in such cases. The
grant of injunction also becomes necessary if it prima facie
appears that the adoption of the Mark was itself dishonest."
29. On the question of delay, reliance is also placed by counsel for the
plaintiff on the case of Hindustan Pencils (P) Ltd. v/s India Stationery
Products Co. and Anr., reported at AIR 1990 DELHI 19, wherein it has
been held that if the defendant acts fraudulently with the knowledge that
he is violating the Plaintiff‟s rights then in that case even if there is
inordinate delay on the part of the plaintiff the relief of injunction is not
denied. Paras 30 to 32 read as under:
"(30) It would appear to be difficult to accept that relief of
temporary injunction should not be granted, because of the delay on
the part of the plaintiff, even though the court feels, at that point of
time, that ultimately permanent injunction will have to be granted.
(31) Even though there may be some doubt as to whether laches or
acquiescence can deny the relief of a permanent injunction, judicial
opinion has been consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating the plaintiff's
rights then in that case, even if there is an inordinate delay on the
part of the plaintiff in taking action against the defendant, the relief
of injunction is not denied. The defense of laches or inordinate
delay is a defense in equity. In equity both the parties must come to
the Court with clean hands. An equitable defense can be put up by a
CS(OS)99/2013 Page 18 of 35
party who has acted fairly and honestly. A person who is guilty of
violating the law or infringing or usurping somebody else's right
cannot claim the continued misuse of the usurped right It was
observed by Romer, J. in the matter of an application brought by
J.R Parkington and Coy. Ld" 63 R.P.C. 171 at page 181 that "in my
judgment, the circumstances which attend the adoption of a trade
mark in the first instance are of considerable importance when one
comes to consider whether the use of that mark has or has not been
a honest user. If the user in its inception was tainted it would be
difficult in most cases to purify it subsequently". It was further
noted by the learned Judge in that case that he could not regard the
discreditable origin of the user as cleansed by the subsequent
history. In other words, the equitable relief will be afforded only to
that party who is not guilty of a fraud and whose conduct shows
that there had been, on his part, an honest concurrent user of the
mark in question. If a party, for no apparent or a valid reason,
adopts, with or without modifications, a mark belonging to another,
whether registered or not, it will be difficult for that party to avoid
an order of injunction because the Court may rightly assume that
such adoption of the mark by the party was not an honest one. The
Court would be justified in concluding that the defendant, in such
an action, wanted to cash in on the plaintiff's name and reputation
and that was the sole, primary or the real motive of the defendant
adopting such a mark. Even if, in such a case, there may be an
inordinate delay on the part of the plaintiff in bringing a suit for
injunction, the application of the plaintiff for an interim injunction
cannot be dismissed on the ground that the defendant has been
using the mark for a number of years. Dealing with this aspect
Harry D. Nims in his "The Law of Unfair Competition and Trade-
Marks". Fourth Edition, Volume Two at page 1282 noted as
follows:
"WHERE infringement is deliberate and willfull and the
defendant acts fraudulently with knowledge that he is
violating plaintiff's rights, essential elements of estoppel are
lacking and in such a case the protection of plaintiff's rights
by injunctive relief never is properly denied. "The doctrine of
estoppel can only be invoked to promote fair dealings".
(32) It would appear to me that where there is an honest concurrent
user by the defendant then inordinate delay or laches may defeat the
claim of damages or rendition of accounts but the relief of
CS(OS)99/2013 Page 19 of 35
injunction should not be refused. This is so because it is the,
interest of the general public, which is the third party in such cases,
which has to be kept in mind. In the case of inordinate delay or
laches, as distinguished from the case of an acquiescence, the main
prejudice which may be caused to the defendant is that by reason of
the plaintiff not acting at an earlier point of time the defendant 'has
been able to establish his business by using the infringing mark.
Inordinate delay or laches may be there because the plaintiff may
not be aware of the infringement by the defendant or the plaintiff
may consider such infringement by the defendant as not being
serious enough to hurt the plaintiff's business. Nevertheless, if the
Court comes to the conclusion that prejudice is likely to be caused
to the general public who may be misled into buying the goods
manufactured by the defendant thinking them to be the goods of the
plaintiff then an injunction must be issued. The Court may, in
appropriate cases, allow some time to the defendants to sell off
their existing stock but an injunction should not be denied."
30. Reliance is also placed by counsel for the plaintiff on Laxmikant V.
Patel Vs. Chetanbhat Shah & Anr., reported at 2002 (24) PTC 1 (SC),
in support of his argument that honesty and fair play are the basic policies
in the world of business. Para 10 reads as under:
"10. A person may sell his goods or deliver his services such as in
case of a profession under a trading name or style. With the lapse of
time such business or services associated with a person acquire a
reputation or goodwill which becomes a property which is
protected by courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in
injury to the business of one who has the property in that name. The
law does not permit any one to carry on his business in such a way
as would persuade the customers or clients in believing that the
goods or services belonging to someone else are his or are
associated therewith. It does not matter whether the latter person
does so fraudulently or otherwise. The reasons are two. Firstly,
honesty and fair play are, and ought to be, the basic policies in the
world of business. Secondly, when a person adopts or intends to
adopt a name in connection with his business or services which
already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of someone else to
CS(OS)99/2013 Page 20 of 35
himself and thereby resulting in injury."
31. While relying on Kaviraj Durga Dutt Sharma vs Navaratna
Pharmceutical Labs, reported at PTC (SUPPL) (2) 680 (SC), learned
counsel for the plaintiff has been able to establish beyond any element of
doubt that the defendants‟ mark is likely to deceive and further similarity
between the two marks is so close visually, phonetically or otherwise and,
thus, it is a fit case for grant of injunction.
32. It is also the case of the plaintiff that the customer base of the plaintiff and
defendants are the same, the mark is phonetically similar and the nature of
goods are such that they are purchased mainly by all classes of consumers
including semi-literate, illiterate, children, house wives & other persons
having average intelligence & imperfect recollection and thus not only the
plaintiff will suffer, the customers shall also be misled.
33. In support of his argument that once the defendant himself claims
exclusivity in the mark it cannot claim that the mark is not distinctive or
common to trade, counsel for the plaintiff has relied upon Automatic
Electric Ltd. Vs. R.K. Dhawan & Anr., reported at 1999 PTC (19) 81,
more particularly para 16, which reads as under:
"16. The defendants got their trade mark "DIMMER DOT"
registered in Australia. The fact that the defendant itself has sought
to claim trade proprietary right and monopoly in „DIMMER DOT",
it does not lie in their mouth to say that the word "DIMMER‟ is a
generic expression. User of the word "DIMMER" by others cannot
be a defence available to the defendants, if it could be shown that
the same is being used in violation of the statutory right of the
plaintiff. In this connection, reference may be made to the decision
of this Court in Prakash Roadline Ltd. vs. Prakash Parcel Service
(P) Ltd.; reported in 1992 (2) Arbitration Law page 174. Reference
may also be made to the decision in P.M. Diesels Ltd. Vs. S.M.
Diesels; reported in 53 (1994) Delhi Law Times 742. It was held in
CS(OS)99/2013 Page 21 of 35
those decision that if the plaintiff is a proprietor of the registered
trade mark, the same gives the proprietor of the registered trade
mark the exclusive right to use the trade mark with relation to
goods in respect of which the trade mark is registered under the
provisions of Section 28 of the Trade and Merchandise Marks Act.
It was also held that such statutory right cannot be lost merely on
the question of principles of delay, laches or acquiescence. It was
also held that in general mere delay after knowledge of
infringement does not deprive the registered proprietor of a trade
mark of his statutory rights or of the appropriate remedy for the
enforcement of those rights so long as the said delay is not an
inordinate delay. In my considered opinion, the ratio of the
aforesaid decisions are squarely applicable to the facts of the
present case."
34. The present application has been opposed by counsel for the defendants. It
is submitted by Mr.H.P. Singh, learned counsel for the defendants that
Defendant no.1, M/s Trance International, is a partnership firm consisting
of various partners including M/s Hertz Chemicals as its partner and claim
user for the trademark COBRA since 1.1.1986.
35. It is submitted by Mr.H.P. Singh, counsel for the defendants that the the
Defendants have been honestly and bonafidely selling perfumes and
cosmetic preparations in Class 3 of the Schedule IV of the Trade Marks
Act, 1999 under the trademarks DIAMOND COBRA, VELVET COBRA
and GREEN COBRA for the last 27 years and thus claim protection under
Section 12(3) of the Trade Mark Act, 1999.
36. It is further contended that the Defendants have a huge sales turnover of
its products. A chart showing its turnover for the period 1998-2012 has
been filed. A product-wise chart has also been filed.
37. The Defendants has also filed on record details of excise duty paid by it
from 2006 till 2013 as the said goods are excisable goods which the
plaintiff in the present case has failed to produce.
38. It is further contended that the defendants entered into a partnership
CS(OS)99/2013 Page 22 of 35
agreement with M/s Hertz Chemicals Pvt. Ltd on 01.03.1993 copy of
which has been placed on record.
39. Learned counsel for the defendants further submits that the defendants
have been using the trade mark COBRA since the year 1986. Reliance is
placed on the application filed by M/s Hertz Chemicals before the
Registrar of Trade Marks, Mumbai, for registration of the trade mark
COBRA in Class 3. Reliance is also placed on the license to manufacture
goods including COBRA of M/s Hertz Chemicals dated 3.5.1994 along
with declaration, which have been filed on record to show user since
1986.
40. Learned counsel next contends that M/s Hertz Chemicals being the
partner of the defendants assigned the mark COBRA under no.554078 in
Class 3 to the defendants by a deed of assignment dated 6.5.1997. A
notarised photocopy of the said deed of assignment has been placed on
record.
41. In support of his arguments that the defendants have been manufacturing
and selling goods under the trade mark COBRA since the year 1997
reliance is placed on drug licenses granted in favour of the defendants
since the year 1997. The defendants have also relied upon various sales
invoices placed on record from the year 2006 to the year 2012 showing
sale of its product. Reliance is also placed on photocopies of printouts to
show that the defendants have been advertising its products as well. It is
also the case of the defendants that they are exporting their products under
the mark COBRA to Saudi Arabia. Supporting documents have been
placed on record.
42. I have heard learned counsel for the parties and considered their rival
submissions.
43. Submission of learned counsel for the plaintiff can be summarised as
CS(OS)99/2013 Page 23 of 35
under:
(i) The plaintiff is the prior user of the trade mark COBRA,
which was adopted as far back as in the year 1970;
(ii) The mark was initially used from the year 1970 to 1979 and
thereafter from the year 1999 onwards continuously and
uninterruptedly. Copies of invoices in support of above
submission have been placed on record;
(iii) Plaintiff, in addition to common law rights, holds a
registration of the mark, St.John Cobra in No.1581353 in
Class 3;
(iv) Plaintiff has been extensively advertising its goods under the
mark COBRA. Various endorsements have been made by the
celebrities. Huge amount has been spent by the plaintiff on
print advertisement, TV channels, etc.;
(v) Plaintiff joined hands with M/s S.H. Kelkar and Company
Private Limited, Mumbai, who are the owners of several
registrations of numerous COBRA label marks in Class 3 for
perfumery related goods and MOU was executed;
(vi) Power of attorney in favour of the plaintiff granted by
Sh.S.H. Kelkar empowering plaintiff to take action against
third parties. Copy of Special Power of Attorney has been
placed on record;
(vii) It is also the case of the plaintiff that the defendant has failed
to place a single document on record that defendant or its
purchaser was selling goods under the trade mark COBRA
upto the year 2007;
(viii) It is further the case of the plaintiff that reliance of the
defendant on the application for the mark COBRA applied to
CS(OS)99/2013 Page 24 of 35
M/s Hertz Chemicals under 55078 can be of no help to the
defendant as the said application was withdrawn by the
attorney of M/s Hertz Chemicals on 27.10.2001. The same
was not even filed with respect to perfumery goods. Further
the applicant was required by the Registrar to submit
function of M/s Hertz Chemicals, which was not submitted
till the hearing, which would show that the mark was never
used by the M/s Hertz Chemicals.
(ix) Reliance by the defendant for the drug licenses obtained
cannot be relied upon as it is undated and further mere
license by itself and without proof that the goods were sold
by the trade mark COBRA and further mere license is by
itself no proof that the goods were sold by the trade mark
COBRA.
(x) Reliance by the defendant on assignment deed dated
6.5.1997 between M/s Hertz Chemicals and defendant no.1 is
misplaced as the said document is ante-dated and inspires no
confidence as it is shown to have been originally notarised in
the year 1997 and the photocopy of the same is claimed to
have been attested in the year 2013 by the same notary.
Further even the said assignment does not claim that the
mark COBRA was ever used and it only assigns the pending
application under no.554078 but the defendant never got the
application assigned to itself before the Registrar of Trade
Mark by filing an amendment request while the application
was listed for hearing on at least 5 dates in the year 2000.
(xi) The fire in the factory of defendant is also of no relevance as
there is nothing on record to show what was burnt in the
CS(OS)99/2013 Page 25 of 35
factory whereas punchnama only talks about finished and
unfishined goods.
44. Arguments of Mr.H.P. Singh, learned counsel for the defendants, is
summarised as under:
(i) Defendants are the prior user of the trade mark COBRA;
(ii) One of the partners of the defendants M/s Hurtz Chemicals
are prior user of the trade mark and an application for
registration was made in the year 1986, which is prior,
whereas in the case of the plaintiff the application was made
in the year 2007 and there are no reliable documents to show
that the goods were sold prior thereto.
(iii) It is also the case of the defendants that the defendants have
honestly and bonafidely sold perfumes and cosmetics under
the trade mark DIAMOND COBRA, VELVET COBRA,
GREEN COBRA and, thus, claim protection under Section
12(3) of the Trade Marks Act. Defendants have also paid
excise duty from the year 2006 to 2014.
(iv) Prior user is also established on the basis of photocopy of the
license;
(v) Mark was assigned by M/s Hurtz Chemicals to the
defendants by deed of assignment dated 6.5.1997;
(vi) It is also the case of the defendant that the plaintiff itself has
admitted that there was a gap of 20 years between the first
alleged user;
(vii) It is further the case of the defendant that the plaintiff has
admitted that the mark was not used for a period of 20 years
and it is during this period that the defendants was able to
establish themselves, which fact is disputed by counsel for
CS(OS)99/2013 Page 26 of 35
the plaintiff, who submits that the defendants only started
using the mark in the year 2007 as per the documents placed
on record by the defendant and, thus, the gap in use of the
trade mark COBRA is not vital to the case of the plaintiff.
45. Learned counsel for the defendant has placed reliance on Century Traders
vs Roshan Lal Duggar & Co, reported at AIR 1978 Delhi 250 (DB), in
support of his submission with regard to prior user.
46. In support of his argument on honest concurrent use, counsel for the
defendants has relied upon Procter & Gamble vs Satish Patel, reported at
1996 PTC (16) (Del.)
47. In support of his argument on the delay reliance is placed by counsel for
the defendants on Pfizer vs B.L. & Co., reported at 2002 (25) PTC 262
(Del); Intel vs Anil Hada, reported at 2006 (33) PTC 553 (Del.).
48. The plaintiff has also filed the present suit for protection of its registered
trade mark COBRA. An order of restraint was also sought on the
defendants from using deceptively similar trade marks Diamond Cobra
and Velvet Cobra in respect of identical goods that is perfumes. While
issuing summons in the suit and notice in the application the defendants
were restrained from using the trade mark Velvet Cobra. The plaintiff did
not press an ex parte relief against the defendants with respect to the mark
Diamond Cobra as the said mark stood registered in favour of the
defendants, however, during the pendency of the suit the registration in
favour of the defendants stand cancelled. As noticed hereinabove, the
plaintiff has prayed that the interim order be confirmed and also be
extended with respect to the Velvet Cobra.
49. The first submission of learned counsel for the plaintiff is that the trade
mark COBRA was initially adopted by the plaintiff in the early 1970s.
The said mark was adopted by M/s Maja Cosmetics, which was a
CS(OS)99/2013 Page 27 of 35
proprietorship firm of Sh.Suchet Singh, who was none else but the father
of Sh.Bhupinder Singh and grandfather of Sh.Harshit Kochar and
Sh.Achin Kochar, who are present partners of the plaintiff firm.
50. The trade mark was used continuously till the year 1979. The mark was
again launched in the year 1999 under another family group firm M/s Vi
John Beauty Tech. which firm used the mark until the year 2006
whereafter the business was consolidated in the plaintiff firm and M/s Vi
John Beauty Tech. assigned the rights in the mark COBRA to the plaintiff
firm vide assignment deed dated 3.7.2007.
51. In addition to the common law rights the plaintiff holds registration of the
mark St.John Cobra under no.1581353. The plaintiff has placed copies of
invoices on record for the period 1974-75 and 1999 to 2006 of M/s. Vi-
John Beauty Tech. and copies of invoices of the plaintiff firm from the
years 2006 to 2013 including copies of some purchase orders from the
defence canteen store department. Based on the abovesaid invoices the
plaintiff claims prior user to the trade mark COBRA, Diamond Cobra and
Velvet Cobra. Reliance is also placed by the plaintiff on a MOU executed
between M/s S.H. Kelkar and Company and the plaintiff.
52. According to the plaintiff M/s S.H. Kelkar and Company are owners of
several COBRA registrations in Class 3 for perfumery related goods. The
plaintiff and M/s S.H. Kelkar and Company agreed to co-exists. The
plaintiff was to sell goods in retail perfumery segment and M/s S.H.
Kelkar and Company in industrial perfumery segment. The plaintiff has
also been granted the rights to utilise the registrations of M/s S.H. Kelkar
and Company. M/s S.H. Kelkar and Company has also executed a Special
Power of Attorney in favour of the plaintiff to the partner of the plaintiff
empowering him to take action against their party in retail segments on
the basis of M/s S.H. Kelkar and Company registrations.
CS(OS)99/2013 Page 28 of 35
53. Learned counsel for the defendants on the other hand has argued that the
defendants are prior user of the trade mark COBRA claiming user since
the year 1991. It is also the case of the defendants that the user claimed by
the plaintiff since the year 1970 is based on forged and fabricated
documents. An objection has also been raised by the defendants with
regard to non-joinder of the parties as according to the defendants merely
filing of MOU with M/s S.H. Kelkar and Company was not enough and
M/s S.H. Kelkar and Company should have been made a party to the
present suit.
54. The defendants claim prior user since the year 1991 and also claim selling
their products with the mark COBRA since the year 1986 through their
partner M/s Hertz Chemicals Limited. In support of this contentions,
defendants have relied upon an application for the mark COBRA applied
by M/s Hertz Chemicals Limited under no.554078. Reliance is also placed
by the counsel for the defendants upon drug licenses granted to the
defendants. The third document, sought to be relied upon by the
defendants, is a deed of assignment dated 6.5.1997 between M/s Hertz
Chemicals Limited and defendant no.1. Thus, the first question, which
comes up for consideration before this Court is as to who is the prior user
of the trade mark COBRA. Plaintiff has placed on record invoices dated
25.7.1974, 9.11.1974, 2.9.1975, 11.1.1975 and 8.10.1975. Large number
of invoices for the period 1999 onwards have also been placed on record.
Invoices on record would establish that this mark was adopted by M/s
Maza Cosmetics but the mark was continuously used only till 1979.
Thereafter, it is the case of the plaintiff that this mark was re-launched
from the year 1999. According to the defendants they have been using the
mark COBRA since the year 1986 through their partners M/s Hertz
Chemicals. Reliance has been placed on three documents i.e. (1)
CS(OS)99/2013 Page 29 of 35
application for registration of the mark COBRA applied for by M/s Hertz
Chemicals; (2) drug licenses; and (3) deed of assignment dated 6.5.1997.
55. A copy of the application for registration of the mark COBRA applied by
M/s Hertz Chemicals under no.554078 has been placed on record.
Documents placed on record by the defendants also show that the
application was withdrawn on 27.10.2001. What is more important is that
the applicant was called upon to submit evidence of use by the Registrar
Trade Mark which was not submitted and which could have been the
reason for withdrawal of the application. Since no proof was submitted by
M/s Hertz Chemicals with the Registrar and mere application which was
subsequently withdrawn on 27.10.2001 would not pass any right in favour
of the defendants and neither can it be considered to show that the mark
was used by the defendants. The drug license sought to be relied upon by
the defendants, a copy of which has been placed on record can also be of
no benefit to the defendants as drug licenses was granted with respect to
as many as 32 marks and no supporting document has been filed along
with this undated license with regard to use of the trade mark COBRA by
the defendants. The third document relied upon by the defendant is a deed
of assignment dated 6.5.1997 entered into between M/s Hertz Chemicals
and defendant no.1. This deed of assignment is also suspicious for the
reason as the document shows that it was originally notarised in the year
1997, photocopy of the same has been attested in the year 2013 and also
by the same notary. To my mind, this is a strong coincidence but surely
casts a doubt on this document. Moreover, this document also does not
suggest in any manner that the mark COBRA was ever used. The
document assigns the pending application but there is nothing on record to
suggest that the defendant got the application assigned to itself before the
Registrar of Trade Mark by filing a request for amendment when on the
CS(OS)99/2013 Page 30 of 35
own showing of the defendant the application was listed on at least five
dates in the year 2000. In case, the marks stood assigned and the
defendant was using the mark, logically the defendant would have made
such a request for assignment.
56. The documents placed on record by the plaintiff show that the predecessor
of the plaintiff, which was a proprietorship firm of the father and grand-
father of the present partners of the plaintiff firm was selling goods from
the year 1974-79 onwards. As per the plaintiff, the business was carried
out only till 1979 and re-launched in the year 1999. In contrast except for
a bald statement that the defendants have been using the mark COBRA
since the year 1986 through their partners, Hertz Chemicals Private
Limited, is unacceptable. The application made by the defendants, M/s
Hertz Chemicals Private Limited to the Trade Mark Registry is also of no
use and benefit to the defendants as the defendants have failed to establish
actual sale of the product.
57. In the case of Corn Products refining Co, vs. Shangrila Food Products
Ltd., reported at AIR 1960 SC 142, it has been held that, firstly, presence
of mark in the register does not prove its user, thus, it is relevant as it is
the case of the plaintiff that the defendants‟ application for registration
had stated „proposed to be used‟ and, secondly, the search report relied
upon by the defendant can be of no help as there is nothing on record to
show that the mark has actually been used by the third party. Relevant
portion of the judgment reads as under:
"17. The series of marks containing the common element or
elements therefore only assist the applicant when those marks are in
extensive use in the market. The onus of proving such user is of
course on the applicant, who wants to rely on those marks. Now in
the present case the applicant, the respondent before us, led no
evidence as to the user of marks with the common element. What CS(OS)99/2013 Page 31 of 35 had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it."
58. Since the plaintiff has been able to establish prior user, I am of the view that it creates proprietary rights in the trade mark in favour of the plaintiff and advertisements without any proof of use is not enough to sell goods.
59. Prior use alone is relevant for creation of proprietary rights in a trade mark and use of the mark in advertising media by itself is not enough unless and until goods are offered for sale concurrently with such advertisement [Usha Intercontinental Ltd. and Ors. v/s Usha Television Ltd., reported at 1987 PTC 240 A, more particularly para 18. Also see Pioneer Nuts and Bolts Pvt. Ltd v/s Goodwill Enterprises; 2009 (41) PTC 362 (DEL) (DB)].
60. Learned counsel for the plaintiff has submitted that the deed of assignment relied upon by the defendants is most unreliable and the same is anti-dated as this document was originally notarised in the year 1997 and a photocopy thereof has been attested again in the year 2013 by the same notary public, M.H. Chaudhary. The photocopy reflects both the stamps of 1997 and 4.3.2013, which in my view is an extremely strange coincidence if the defendants are to be believed. Moreover, this deed of assignment does not show that the mark COBRA was ever used. Thus, in my view, the defendants have failed to establish user of the mark COBRA since the year 1986 as claimed by them. It may also be noticed that in response to seize and desist notice dated 30.7.2012 the defendant relied upon the registration and claimed that it had been using the marks since the year 2006. Thus, in my view, the stand taken by the defendant in these proceedings that they are using the marks since the year 1986 is an afterthought. The only argument raised for absence of any document CS(OS)99/2013 Page 32 of 35 placed on record is that a fire had broken out in the factory of the defendants in the year 2004. Newspaper report and panchnama written by the fire department is relied upon. The documents placed on record simply shows that finished and raw goods were gutted. Thus, the argument with regard to absence of supporting documents i.e. invoices, etc. for the year 2004 on account of fire in the factory is not convincing. Even the sale figures, sought to be relied upon by the defendants, pertaining to the year 2006 and the invoices showing the trade mark COBRA are filed for the year 2007 onwards and not for the year 1986. Based on the documents placed on record by the plaintiff and in the absence of convincing documents placed on record by the defendants prima facie I am of the view that the plaintiff is the prior user of the trade mark COBRA. The plaintiff also holds registration of the mark St.John Cobra since the year 2007.
61. There is no force in the submission made by counsel for the defendants that since M/s S.H. Kelkar and company, who owned the trade mark COBRA, having not been made a party, the present suit should be dismissed as the present suit has been filed by the plaintiff on the basis of prior user and adaptation and even otherwise the documents including Special Power of Attorney has been placed on record.
62. The defendant has further argued that as M/s Maja Cosmetics which used the mark till 1979 was a proprietorship concern of Mr.Suchet Singh, the benefit of use cannot be claimed after his death in the absence of assignment deed. The said argument is misconceived as immediately upon the death of Suchet Singh on 24th January, 1979, his legal heirs being his wife and two sons became partners in M/s Maja Cosmetics and in case of rights by the use of the mark COBRA devolved upon them. The business of M/s Maja Cosmetics was continued and the same is reflected CS(OS)99/2013 Page 33 of 35 from partnership deed dated 3rd February 1979 and various trade mark registrations of M/s Maja Cosmetics filed in 1979 itself showing the wife and sons of Suchet Singh as partners of M/s Maja Cosmetics.
63. The defendant further relied on a search report taken from the record of the Registrar of Trademarks showing existence of various entities who have filed for registration of the mark COBRA and thus claiming that the mark has become common to trade. Such a search report reveals that most of the registrations are of SH Kelkar, who have already acknowledged the rights of the plaintiff. Further most of the applications have been withdrawn and/or opposed on the behest of the plaintiff. Many of the applicants have already executed undertakings in favour of the plaintiff. Further it is a settled principle of law that mere presence of the mark on register does not prove its use and thus there is nothing on record to prove that the mark shown as registered in the search report are used by the applicants.
64. The defendants have further claimed that Hertz Chemicals Private Limited is a partner with the defendant but the said contention is proved wrong by their own document i.e. a deed of partnership dated June 2007 filed at pages 363 to 365 of the defendants documents which does not show the name of Hertz Chemicals P. Ltd. as a partner. Further even the application for registration of the mark DIAMOND COBRA filed by the defendant in the year 2006 does not mention the name of Hertz Chemicals P. Ltd. as its partner.
65. In view of the settled position of law mere delay is not sufficient to defeat the grant of injunction in case of infringement of trade mark as held in Amar Singh Chawal Wala (supra), Ansul Industries (supra) and Hindustan Pencils (P) Ltd. (supra), this argument of learned counsel for the defendants must also fail.
CS(OS)99/2013 Page 34 of 3566. In the absence of cogent documents on record, I am of the view that the defendants have failed to establish that they are the prior user of the marks „DIAMOND COBRA‟ and „VELVET COBRA‟. On the contrary, the plaintiff has been able to make out a strong prima facie case, balance of convenience is also in favour of the plaintiff and in case the defendants are allowed to continue to use the impugned marks, the plaintiff shall suffer irreparable loss.
67. Accordingly, present application filed under Order XXXIX Rules 1 and 2 is allowed. Defendant is also restrained from using the marks „DIAMOND COBRA‟ and „VELVET COBRA‟ till the disposal of the suit.
68. Application stands disposed of.
CS(OS) 99/2013
69. List this matter before Court for framing of issues on 11.2.2015, when parties shall bring suggested issues to Court.
G.S.SISTANI, J NOVEMBER 14, 2014 msr CS(OS)99/2013 Page 35 of 35