Delhi District Court
Additional District Judge (Central) 12 ... vs Joginder Singh on 5 November, 2011
1
IN THE COURT OF SHRI MAN MOHAN SHARMA
ADDITIONAL DISTRICT JUDGE (CENTRAL) 12 TIS
HAZARI COURTS, DELHI.
TM No. 134/2011 & 135/2011
05.11.2011
Vashisht Creation
...Plaintiff
Versus
1. Joginder Singh
2. Vashist Incorportion (JG)
...Defendants/Counter Claimant
ORDER:
1. Competing claims have been set up by the plaintiff and defendants (counter claimants) as to the exclusive right to the use of the trade mark 'BAKERS FIELD' ('BAKERSFIELD') in respect of readymade garments/allied products.
2. This order is to answer three applications filed by the parties as under:
(i). An application under Order 7 Rule 11 of the Code of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 1 of 46 2 Civil Procedure filed by the defendant for rejection of plaint of plaintiff.
(ii). An application under Order 39 Rule 1 and 2 of the Code of Civil Procedure of the plaintiff seeking adinterim injunction against the defendants from using the trade mark 'BAKERSFIELD' or selling any readymade garments or similar goods under the trade name VASHISHT INCORPORATION or any other deceptively similar trade mark/trade name..
(iii). An Application under Order 39 Rule 1 and 2 of the Code of Civil Procedure of the defendants/counterclaimants seeking adinterim injunction against the plaintiff from using the trade mark 'BAKERS FIELD' or selling any readymade garments or similar goods under the trade name using the word VASHISHT or any other deceptively similar trade mark/trade name.
3. As common questions of law and facts are involved in these three applications they are being taken up together for disposal by this single order.
Plaintiff's Case
4. Briefly stated, the case of the plaintiff M/S VASHISHT T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 2 of 46 3 CREATIONS is that it is a partnership firm consisting of six partners. Originally it was created as a partnership firm by Smt. Rajesh Sandhu and Shri Joginder Singh (the defendant no. 1) vide a partnership deed dated 10.09.2008.
5. The defendant no. 1 retired from the partnership w.e.f. 10.09.2008 leaving the other partner Smt. Rajesh Sandhu to be entitled to the name and style of the firm and all its assets and liabilities. She admitted five other partners vide partnership deed dated 01.04.2010.
6. The plaintiff is the true proprietor and lawful owner of trademark 'BAKERS FIELD' in respect of the said goods. It has been used extensively, openly and uninterruptedly by the plaintiff firm till date since the year 2004; incurred extensive promotional costs and it has become distinctive of goods and business of the plaintiff. It has earned considerable goodwill.
7. The defendant no. 1 who has been the erstwhile partner in the business entity and voluntarily opted to retire out of the partnership and relinquished all interests in the business o erstwhile partnership became dishonest and within two weeks of his so retirement applied T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 3 of 46 4 for the registration of the trade mark 'BAKERSFIELD' in respect of the same goods his own name and falsely claimed its user since 05/12/2004 and claimed him to be the proprietor of DAKSH ENTERPRISES and while doing so claimed the same address as that of the plaintiff. He was successful in getting the registration of the trade mark 'BAKERSFIELD' under no. 1736572 in class 25 by suppressio veri and suggestion falsi.
8. The plaintiff on coming to know of the same has applied for rectification which proceedings are pending. In the second week of March 2001 the defendant no. 1 also approached one of the dealers of plaintiff and offered to supply readymade garments under the trade mark 'BAKERSFIELD'. It was further learnt that he has adopted the name of his concern as VASHIST INCORPORATION (JG) which is deceptively similar to the name of plaintiff. The defendants have not done any considerable business under the trade name and the entire chain of acts and omissions of defendant no. 1 is illegal, malafide and dishonest. The same is detrimental to plaintiff and the goodwill of its trademark. Hence claiming passing off the suit for permanent injunction, rendition of accounts, damages, delivery up etc. T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 4 of 46 5 Defendants'/Counter Claimants' Case
9. The defendants have not only opposed the suit but have also set up a counter claim.
10. Briefly stated, the case as set up by the defendants is that the defendant no. 1 is the registered proprietor of the trade mark 'BAKERSFIELD' which word was invented/discovered/coined by him. He has legal and open right to use the same. The suit of the plaintiff is barred under section 69 of the Partnership Act for want of registration and is liable to be rejected.
11. The defendant no. 1 has admitted the erstwhile partnership and his retirement out of the same.
12. The defendant no. 1 has propounded that he has been in the profession of manufacturing and marketing of readymade garments since 1999 as a proprietary concern. He adopted the name and style of his proprietary concern as 'VASHISHT CREATIONS' in August 2004 after the name of his nephew on his second birthday and it was continued when he took Smt. Rajesh Sandhu as his partner, who was an unsuccessful businesswoman having burnt her fingers in various business ventures. He was waylaid into this by the husband of Smt. T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 5 of 46 6 Rajesh Sandhu. No contribution by way of skills, expertise or otherwise was made by Smt. Rajesh Sandhu in the partnership business. She only shared the profits and it was the defendant who managed everything. Smt. Rajesh Sandhu and her husband acting in concert were stealing all the trade secrets, know how and copying the records with dishonest intentions to the ignorance of defendant no. 1.
13. The defendant no. 1 admits the deed of dissolution of partnership but his retirement was not voluntary. The present partnership as plaintiff concern has been only of recent origin i.e. since April 2010 and thus the use of trade mark as propounded is only a figment of imagination. The documents filed by the plaintiff have concealed more than they reveal and clever manipulations have been writ large on the facts of the case.
14. The trade mark 'BAKERSFIELD' has become synonym of the defendants' goods and has amassed enviable goodwill and reputation. The allegations of usurpation, deception and dishonesty as floated by the plaintiff are per se false. The defendant no. 1 has lawfully and rightfully obtained the registration of trade mark 'BAKERSFIELD' in his name as it has been coined and used by him as such. While getting T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 6 of 46 7 registration the defendant no. 1 has rightfully used the address of the premises of erstwhile plaintiff firm as the defendant no. 1 as taken the same on rent in his own name.
15. The dissolution deed has no reference to the trademark and the plaintiff can claim no right or lien over it.
16. The plaintiff has prayed for the dismissal of the suit and has also pressed into service his counter claim claiming infringement and passing off and has sought relief of injunction, rendition of accounts, damages and delivery up etc.
17. I have heard Shri M. K. Miglani, Ld. Counsel for the plaintiff and Shri R. P. Pahwa, Ld. Counsel for the defendant.
18. My order on various applications is as under: Application under Order 7 Rule 11 of the Code of Civil Procedure filed by the defendants
19. In this application the defendant has claimed bar to the suit of the plaintiff on two counts:
(i). Firstly the suit is barred under section 69 of the Partnership Act as the partnership is not registered;
(ii). Secondly, the bar to the suit is claimed on account of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 7 of 46 8 pendency of rectification/cancellation proceedings before the Registrar, thus Court having no jurisdiction.
(iii). The plaintiff has no cause of action.
20. The defendant has sought the return/rejection of plaint within the meaning of Order 7 Rule 11 (a) and (d) of the Code of Civil Procedure.
21. Shri Pahwa has argued that the objection as to the legal bars goes to the root of the matter. The registration of a partnership concern is the sinequanon for the initiation of a suit as laid down under section 69 of the Partnership Act. Thus the suit is nonest on this ground itself. Further, as the rectification/cancellation proceedings have been initiated by the plaintiff against the mark of the defendant the jurisdiction of the Court is ousted and it must stay the proceedings of the case, till the rectification proceedings are culminated.
22. Shri Pahwa has cited the law laid down in M.V. "Sea Success I" Vs. Liverpool and London Steamship Protection and Indemnity Association Ltd., AIR 2002 Bombay 151 to bring home the point that the Court has to find out from the allegations made in the plaint itself and not beyond it as to whether a bogus, wholly vexatious or T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 8 of 46 9 frivolous litigation has been initiated by the plaintiff or that the claim made by the plaintiff is a legally recognizable claim. What is required to be disclosed by the plaintiff is a clear right to sue and failure to do so must necessarily entail rejection of the plaint.
23. The case of Ajmer Kaur and others Vs. Punjab State and Others, AIR 1991 Punjab and Haryana 12 has been relied upon by the defendant to press that when the jurisdiction of the Court is barred and the suit could not be instituted in any Court, the proper procedure is to reject the plaint instead of returning the same. The Court cannot pass any interim order for temporary rejection.
24. Regarding the second limb of the argument, the defendant has placed reliance on ITC Limited Vs. Rakesh Behari Srivastava and others, AIR 1997 Allahabad 323 wherein it has been held that the Civil Court's jurisdiction in respect of cancelation of registration has been impliedly taken away under section 46 and 47 of Trade and Merchandise Marks Act, 1958. The Forum for relief is the High Court or the Registrar and even in a suit for infringement of trade mark when a question arises as to the validity of registration of a trade mark, the said question is to be referred to the High Court and not to T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 9 of 46 10 be taken up by the Civil Court itself. To further support his submissions ld. counsel for defendant has placed reliance upon Paras Industries Ludhiana Vs. Paras Special Machine Company, 2004 (28) PTC 124( P & H) to support his point that if rectification proceedings are pending suit is to be stayed till disposal and final orders in the rectification proceedings.
25. It is further submitted by Shri Pawha by placing reliance upon Whirlpool Corporation Vs. Registrar of Trade Marks Mumbai and others AIR 1999 SC 22 that the word tribunal as used in section 2(1) (x) of Trade & Merchandise Marks Act, 1958 shall refer either to the Registrar or to the High Court and can by no stretch of imagination mean a Civil Court and that the "Registrar" becomes "Tribunal" if proceeding is pending before him. Similarly if proceeding is pending before "High Court" then High Court is to be treated as "Tribunal". Thus the jurisdiction of Civil Courts is ousted.
26. Shri Miglani, while arguing on the first limb of defendants' arguments has submitted that the legal bar contemplated under section 69 of the Partnership Act for the partnership being not registered is not applicable in the present case as the suit is only for enforcement of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 10 of 46 11 a common law right based in tort and is not based on a contract. The law has been well settled in the celebrated case of Haldiram Bhujiawal and another Vs. Anand Kumar Deepak Kumar and another 2000(1) Arb. LR 531 (SC).
27. On the aspect of second limb of defendant's arguments it has been submitted by the plaintiff that there is no bar to the suit. There is no such provision which takes away the jurisdiction of the Civil Court. The Registrar or the IPAT operate in different spheres and there is no bar to the jurisdiction.
28. I have considered the rival submissions.
29. Relevant provision of Order 7 Rule 11 of the Code of Civil Procedure reads as under: '11. Rejection of plaint--The plain shall be rejected in the following cases:--
(a) where it does not disclose a cause of action;
......................................................
(d) where the suit appears from the statement in the plaint to be barred by any law.
......................................................."
30. The expression 'cause of action' has a dual meaning. One meaning is relevant to the jurisdiction of the court and the other to the T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 11 of 46 12 basis of claim. The scope of Order 7 Rule 11 CPC on the basis of plaint not disclosing a cause of action, is well defined in a catena of case law.
31. It is imperative to take note that rejection of plaint and dismissal of suit operate in different spheres. There is a marked difference between the suit being without any cause of action and the plaint not disclosing a cause of action. The former aspect can be established by leading evidence and cannot be judged at the threshold. The latter can be judged by a bare reading of the plaint and can be considered at the very inception even by way of demur.
32. It is settled law that while considering the plaint if it discloses a cause of action or not, the plaint and only the plaint has to be read. The averments made in the plaint are to be taken as true and at face value for this purpose deeming them to be correct. The defences set up in the written statement are not to be seen. The plaint has to be read as a whole and in a meaningful manner.
33. A bare reading of plaint discloses that the plaintiff has narrated a sequence of events which propound a cause of action. Whether the plaintiff would be ultimately able to establish his case in evidence or T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 12 of 46 13 whether the defendant would be able to nonsuit the plaintiff by establishing his defence or can only be seen after the case is put to trial by affording parties an opportunity of leading evidence. The proceedings of the case cannot be short circuited at this stage by weighing or appreciating the veracity or otherwise of the facts. In view of above consideration the defendant has failed to make out any case for rejection of plaint as not disclosing a cause of action.
34. Section 69 of the Partnership Act, 1932 reads as under: "69. Effect of nonregistration. --(1) No suit to enforce a right arising from a contract or conferred by this Act shall be instituted in any court by or on behalf of any per son suing as a partner in a firm against the firm or any person alleged to be or to have been a partner in the firm unless the firm is registered and the person suing is or has been shown in the Register of Firms as a partner in the firm.
(2) No suit to enforce a right arising form a contract shall be instituted in any court by or on behalf of a firm against any third party unless the firm is registered and the per sons suing are or have been shown in the Register of Firms as partners in the firm.
(3) The provisions of subsections (1) and (2) shall apply also to a claim of setoff or other proceeding to enforce a right arising from a contract, but shall not affect, -- T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 13 of 46 14
(a)the enforcement of any right to sue for the dissolution of a firm or for accounts of a dissolved firm, or any right or power to realise the property of a dissolved firm, or
(b)the powers of an official assignee, receiver or court under the Presidency towns Insolvency Act, 1909 (3 of 1909) or the Provincial Insolvency Act, 1920 (5 of 1920) to realise the property of an insolvent partner. (4) This section shall not apply, --
(a)to firms or to partners in firms which have no place of business in the territories to which this Act extends, or whose place of business in the said territories, are situat ed in areas to which, by notification under Section 56 this Chapter does not apply, or
(b)to any suit or claim of setoff not exceeding one hun dred rupees in value which, in the Presidencytowns, is not of a kind specified in Section 19 of the Presidency Small Cause Courts Act, 1882 (5 of 1882), or, outside the Presidencytowns, is not of a kind specified in the Sec ond Schedule to the Provincial Small Cause Courts Act, 1887 (9 of 1887), or to any proceeding in execution or other proceeding incidental to or arising from any such suit or claim."
35. The above language of statute is amply clear as to what is the scope of bar envisaged under the Act for nonregistration of the partnership concern.
T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 14 of 46 15
36. The law has been settled on this aspect in the case of Haldiram Bhujiawal and another Vs. Anand Kumar Deepak Kumar and another, 2000(1) Arb. LR 531 (SC). The relevant extracts from the case are: "9. The question whether Section 69(2) is a bar to a suit filed by an unregistered firm even if a statutory right is being enforced or even if only a Common Law right is being enforced came up directly for consideration in this Court in M/s. Raptokas Brett Co. Ltd. v. Ganesh Property, (1988) 7 SCC 184 : (1998 AIR SCW 2994 :
AIR 1998 SC 3085). In that case, Majmudar J speaking for the Bench clearly expressed the view that Section 69(2) cannot bar the enforcement by way of suit by an unregistered firm in respect of a statutory right or a common law right.....
10. The next question is as to the nature of the right that is being enforced in this suit. It is well settled that a passing off action is a common law action based on tort (vide) Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company, (1997) 1 SCC 99 : (1997 AIR SCW 1522 : AIR 1997 SC 1398). Therefore, in our opinion, a suit for perpetual injunction to restrain the defendant not to passoff the defendant's goods as those of plaintiffs by using the plaintiffs' trade mark and for damages is an action at common law and is not barred by Section 69(2)....
T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 15 of 46 16
11. Likewise, if the reliefs of permanent injunction or damages are being claimed on the basis of a registered trade mark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is, in our view, not barred by Section 69(2)..."
37. Thus the instant suit of the plaintiff based on a common law remedy of passing off which is a tort is not hit by the bar of section 69 of the Partnership Act, 1932.
38. Section 9 of the Code of Civil Procedure reads as under: "9. Courts to try all civil suits unless barred--The Courts shall (subject to the provisions herein contained) have jurisdiction to try all suits of a civil nature excepting suits of which their cognizance is either expressly or impliedly barred."
39. The above provision clearly lays down that a Civil Court shall try civil suits of all nature. It is couched in a very wide language. Now the provisions of Trade Mark Act, 1999 have to be seen if there is any express or implied bar to the jurisdiction of the Civil Courts to entertain the suit. Section 134 of the Trade Marks Act, 1999 confers the jurisdiction upon the Civil Courts in the following manner: T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 16 of 46 17 "134. Suit for infringement, etc., to be instituted before District Court (1) No suit
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiffs trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of subsection (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain.
Explanation : For the purposes of subsection (2), "person" includes the registered proprietor and the registered user."
40. There is nothing in the entire Trade Marks Act, 1999 to suggest that for the infringement of a registered trade mark; or relating to any right in a registered trade mark; or for passing off arising out of the T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 17 of 46 18 use by the defendant of any trade mark any other judicial authority has been envisaged. There is no nonobstentate clause in the Act to bar the jurisdiction of the Civil Court in The above matters.
41. Section 124 of the Trade Marks Act, 1999 envisages the stay of the suit in classified circumstances. These classified circumstances have been laid in sub section (1) which reads that where in any suit for infringement of a trade mark(a) the defendant pleads that registration of the plaintiff's trade mark is invalid; or (b) the defendant raises a defence under clause (e) of subsection (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,(i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings.
42. The suit of the plaintiff is for passing off and not for infringement. It the counterclaim of the defendant which is for infringement. It is settled law that a counter claim is an independent suit in its own right. However, none of the circumstances which are T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 18 of 46 19 condition precedent to invoke the provisions of section 124 of the Act are existent in the suits before this Court. Legislature in its wisdom under section 124(5) of the Act has provided that that the stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit.
43. In view of my above discussion no case for rejection of plaint under Order 7 Rule 11 of the Code of Civil Procedure is made out.
44. Consequently the defendants' application under for rejection of plaint under Order 7 Rule 11 of the Code of Civil Procedure is dismissed.
Applications under Order 39 Rule 1 & 2 of the Code of Civil Procedure:
45. Shri R. P. Pahwa on behalf of the defendant submitted that his case stands on a higher footing than that of the plaintiff and that merely for the reason that the defendant no. 1 stepped out of the partnership does not imply that he has relinquished his right in the T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 19 of 46 20 trade mark 'BAKERSFIELD'. He states that the terms of the dissolution deed have to be interpreted strictly and what is not there in concrete terms cannot be read by any implication. Defendant no. 1 is the registered owner of the trade mark whereas the plaintiff is relying upon his selfserving statement and thus his case is stronger than the case of the plaintiff.
46. Defendants further argued that the trade mark is a geographical name and cannot be used by the plaintiff. It is the name of a famous place. The defendant has discovered the same and adopted by his own skills and labour and he cannot be deprived of the fruits of his labour by the plaintiff who have dishonestly stolen the same. Moreover the defendant has a registration certificate to cement his claims.
47. It is also argued by the defendants' that the plaintiff filed only a part of the magazine 'Images Retail' and very conveniently did not file the relevant page which shows that the trade mark 'BAKERSFIELD' has been acknowledged by the industry as a creation of the defendant no. 1. The rent agreement is in his name; the Sales Tax and VAT registration bears his signatures. He searched for, zeroed in and engaged the model for the promotion of the trade mark T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 20 of 46 21 'BAKERSFIELD'. He cannot be deprived of the fruits of the same by plaintiff whose claim is dishonest.
48. Shri Pawha relied upon Wockhardt Limited vs. Aristo Pharmaceuticals Limited 1999 PTC (19) 540 to bring home the point that the plaintiff must not only show a prima facie case but something more than a prima facie case to rule out possibility of passing of action being struck of as frivolous or vexatious after the trial.
49. The defendant also placed reliance upon the following case law:
(i). Sacheti Vs. D.K. Electricals, titled as 179 (2011) DLT 62 (When plaintiff's claim of user is prior to that of the plaintiff grant of injunction is made out as it prima facie appears that adoption of mark by defendant itself was dishonest and the plaintiff was held entitled to injunction).
(ii). Dr. Ashis Ranjan Das Vs. Rajendra Nath Mullick, AIR 1982 Calcutta 529 (Defendant's claim of injunction arose out of plaintiff's cause of action and in any event T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 21 of 46 22 was incidental thereto. The defendant can thus ask for interlocutory relief in the suit of the plaintiff).
(iii). Giani Gurcharan Singh & Sons Vs. Madhusudhan Singh, 179 (2011) Delhi Law Times197 wherein it has been held that it is necessary for plaintiff to prove his registered Trade Mark has been used by defendant; though no such use is required in an action for passing off.
50. Shri M. K. Miglani arguing on behalf of the plaintiff relied upon Har Mohan Singh vs. Gurbax Singh AIR 2001 DELHI 507 to submit that a surrender of his rights and interests in the various assets of the partnership concern which include 'goodwill and any other rights whatsoever' would naturally include right in the trade mark of the partnership.
51. Shri Miglani also relied upon Whirlpool Co. & Anr. Vs. N. R. Dongre & Ors, 1996 PTC (16) 476 wherein it has been held that reg istration of a trade mark does not provide a defence to the proceedings for passing off as under section 27(2) of TMMA a prior user of a trade mark can maintain an action for passing off against any subsequent T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 22 of 46 23 user of an identical trade mark including a registered user thereof and that this right is not affected by section 31 of the Act, under which the only presumption that follows from registration of a trade mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one and can be displaced. Regard ing the use of name of Vashisth Creations he relied upon Prakash Roadlines Ltd. vs. Prakash Parcel Service (P) Ltd. PTC (Suppl) (2) 177 (Del) Merely because a particular name is part of name of the defendant, injunction cannot be refused in favour of the plaintiff who has been using that name much prior to the defendant and had estab lished itself by that name in the trade.
52. Reliance has also been placed by the plaintiff upon the law laid down in N. R. Dongre Vs. Whirlpool Corporation, 1996 PTC (16) 583 (SC) wherein it has been held that action against registered owner of trademark at the instance of prior user of the same or similar mark maintainable and that injunction can be granted even against an owner of the trademark in an appropriate case. On the same lines the case of Century Traders vs. Roshan Lal Duggar AIR 1978 Delhi 250 has been relied upon wherein it has been held that in an action for passing T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 23 of 46 24 off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants; the registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of mark in the register maintained registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purpose of deciding an application for interim injunction unless evidence has been led or is available of user of their registered trade mark.
53. The plaintiff also relied upon two unreported judgments of Hon'ble High Court of Delhi in Bioherbs Pharma vs. Cattle Remedies Ltd. (W. P. (C) 9639/2005 decided on 01.02.2011) arguing that the facts of the case were similar to the instant case as in that case also registration of trade mark was obtained notwithstanding the dissolution deed. Defendant challenged the same stating that an LPA has been pending but plaintiff stated that LPA has been dismissed. The other unreported judgment relied upon is Suresh Kumar Jain vs. Union of India & others (W. P. (C) 72/2007 decided on 05.03.2011) wherein it has been held that the claim of user T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 24 of 46 25 petitioner was not supported by any document and therefore IPAB held that the same was obtained by false statement and fraud and the finding was accepted. The same was challenged by Ld. Counsel for defendants that an LPA against the same was pending. This factum was not disputed by the Ld. Counsel for the plaintiff.
54. Ld. Counsel for the plaintiff also relied upon the following case law:
(i). Automatic Electric Limited Vs. R. K. Dhawan & Anr.
1999 PTC (19) 81 wherein it has been held that a person claiming exclusive right over an expression cannot chal lenge same expression as generic.
(ii). Manohar Singh Chaddha vs. Sheetal Sweets 2000 PTC 320 (DELHI) The burden would heavily lie on the retir ing partner to establish that it was clearly and specifically understood that he would be permitted to start a fresh competing business.
55. The case law relied upon by the defendant in Dr. Ashis Ranjan Das Vs. Rajendra Nath Mullick, AIR 1982 Calcutta 529 is a well settled proposition of law. The plaintiff is dominuslitus but he has no T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 25 of 46 26 dominion over the relief or interlocutory applications. Even in a suit filed by the plaintiff the defendant has every right to seek an injunction or interlocutory order notwithstanding that he has not filed any independent suit. In the present case the defendant has not only filed a counter claim (which in itself is an independent suit) but has also filed an application under Order 39 Rule 1 & 2 of the Code of Civil Procedure. The same is also being considered vide this order.
56. The moot question is what is the raison d'etre of a trade mark? Whether it is respected for its novelty or artistic quality or for some other reason.
57. In fact describing a trade mark as an intellectual property is a misnomer. The reason is not far to seek. Unlike the other IPRs which are so recognized and respected for their artistic quality, inventiveness or elements of novelty which is the result of skill and labour, a trade mark is recognized only for its ability to distinguish the goods and services of its proprietor, as flowing from that particular person. While other IPRs have a limited life span of monopoly of its proprietor and thereafter they pass into the public domain, it is just the other way round for a trademark. The trade mark remains the T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 26 of 46 27 monopolistic property of its proprietor perpetually provided its registration is kept alive (if registered) or if unregistered it is consistently used in connection with goods and service continuously. Thus it is in fact a pseudo intellectual property and stands distinguished from the other IPRs for the aforesaid reasons.
58. A trade mark is thus a pointer or a source identifier for goods and services. With the passage of time there is value addition in the trade mark commensurate with the reputation and goodwill of the business. Thus trade mark and goodwill thus become more or less synonyms of each other and the trade mark is a symbolic representation of the trade mark.
59. In the light of the above, the argument of the defendant that he coined the word 'BAKERFIELD' is misplaced. It is also contradictory to his own stand on the other hand his claim is that it is geographical word and cannot be used by the plaintiff as a trademark. The law cannot be different for plaintiff and defendant unless there is an intelligible differentia. The defendants cannot approbate and reprobate. Of course, the word Bakersfield is a geographical name and cannot be monopolized by any body. If we look at the hierarchy of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 27 of 46 28 marks from weak to strong in the spectrum of distinctiveness the following lineage appears:
1. GENERIC
2. DESCRIPTIVE
3. SURNAME
4. SUGGESTIVE
5. ARBITRARY
6. INVENTED
60. On the above criteria it can be seen that the word 'BAKERSFIELD' can be treated as an arbitrary mark. As per the usage arbitrary marks comprise those words, symbols or pictures etc. which are in common linguistic use but which, when used visàvis the particular goods or service in issue, neither suggest nor describe any ingredients, quality or characteristic of those goods or services. Thus 'Apple' for computers; 'Camel' for drawing colours; 'Teachers' for whisky are all arbitrary marks. These words of dictionary, nouns or geographical names have no connection with the ingredients, quality or characteristic of those goods but they have in the course of trade have become distinctive of the goods they represent from a particular T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 28 of 46 29 proprietor or source. They have thus in the course of use have become the source identifier.
61. Thus the claim of defendant that he coined or adopted the trade mark 'BAKERS FIELD' is misplaced cuts no ice. As the adage goes, the proof of pudding lies in the eating. Thus it is the use of the trade mark which has to be seen as to who is entitled to its use by determining the person who is prior in use. In view of the law cited, as mentioned above, the registration of a mark is immaterial in such an inquiry.
62. A look at the material on record. Both the parties have placed reliance upon the magazine 'Images Retail' while pressing their rival claims. In the magazine August, 2006 issue of the 'Images Retail' which has been relied upon by both the parties it has been reported that Shri Joginder Singh (the defendant no. 1 herein) is credited with the introduction of 'BAKERSFIELD' brand in the retail market in September, 2004. In view of the mutual reliance by both the parties the averments made in the said magazine are indelible and only needs to be appreciated visàvis the rival claims of the parties.
63. The partnership between the defendant no. 1 and Smt. Rajesh T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 29 of 46 30 Sandhu in the name and style of M/S Vashisth Creations has been commenced w.e.f. 29.09.2004. It subsisted till 10.09.2008 when defendant no. 1 retired out of the partnership. This is an admitted position of the parties.
64. The defendants have pressed the point that the partnership deed itself speaks of 'to carry on the business of manufacturing of ready made garments' which shows that Smt. Rajesh Sandhu entered into an existing and running business of the defendant no. 1. which was further carried out. Be that as it may be, the fact remains that on the execution of the partnership deed the business came under the auspices of M/S Vashisth Creations as a partnership concern. Of course, nothing prevented the defendant no. 1 to pursue his other legitimate vocations or business ventures which do not come in conflict with the business of the partnership concern.
65. In the write up in the 'Images Retail' issue of the month of August, 2006 there is no reference to the name of business concern which is being vouched for and only the word 'company' in a loose sense has been used. However the reference has been to the mark 'BAKERS FILED'. However the advertisements in two issues of this T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 30 of 46 31 magazine depict the brand 'BAKERS FILED' and the name of M/S Vashisth Creations for trade inquiries.
66. The plaintiff has not shown any material to show that he has made any sales under the brand/trade mark 'BAKERSFIELD' in his own name or under any business entity in which he has interest other than M/S Vashisth Creations.
67. The defendants' stand is that it is the defendant no.1 who took initiative to look for a model to promote the brand 'BAKERS FIELD' and negotiated and signed the agreement with Elite Model Management (India) Pvt. Ltd. etc. He also did various jobs to get the Sales Tax Registration, VAT registration, execution of Lease for the business premises at Dev Nagar, Karol Bagh, New Delhi etc.
68. It is the settled law that each and every partner is the Principal for himself and agent for others. Section 18 of the Partnership Act, 1932 states that subject to the provisions of the Act, a partner is the agent of the firm for the purpose of the business of the firm. Therefore the acts and deeds performed a partner during the currency of a partnership are for and on behalf of the firm and no personal lien can be claimed over the same, unless the person is able to show that T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 31 of 46 32 besides the partnership business he was pursuing some other vocation(s) and that such activities were directed towards achieving the goals of the said other vocation(s).
69. The agreement with Elite Model Management (India) Pvt. Ltd. etc. is dated 14.06.2007 which is during the currency of the partnership Vashisth Creations with the defendant no. 1 and Smt. Rajesh Sandhu as its partners. Others acts done or documents signed by the defendant no. 1 are also for and on behalf of the partnership firm M/S Vashisth Creations during the currency of the partnership between the defendant no. 1 and Smt. Rajesh Sandhu. There is nothing on record to prima facie show that these acts or deeds were done by the defendant no. 1 in order to pursue his personal vocations independent of the firm Vashisth Creations, as it existed then.
70. There is ample documentary evidence on record in the form of photocopies of invoices favouring M/S Vashisth Creations like purchase invoices of purchase of items like labels etc. from Atam Associate Pvt. Ltd. for the mark 'BAKERS FILED'; photocopies of sales register; sales invoices bearing the mark 'BAKERS FIELD' and otherwise; 'C' Forms under CST many of which documents pertain to T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 32 of 46 33 during the currency of the partnership M/S Vashisth Creations in its existence as a partnership between the defendant no. 1 and Smt. Rajesh Sandhu and some in its new avtar as the partnership concern of Smt. Rajesh Sandhu and five new partners, as the plaintiff. The plaintiff has also placed on record various labels, tags and buttons etc. of the mark 'BAKERS FILED'. This all goes to show that the plaintiff has been defacto using the trade mark 'BAKERS FILED' on its products and making sales whereas on the other hand the defendants/counter claimants have only the registration certificate of trade mark 'BAKERSFILED' as dejure evidence to bank their claims.
71. There is no doubt that lease deed dated 04.09.2004 of property at first floor bearing no. 6100/1 block II Dev Nagar Karol Bagh, Delhi5 with defendant no. 1 as lessee, which has been shown as the place of business of partnership was taken as such by the defendant no. 1 as the same is the only logical conclusion. Another lease deed of the above property is dated 09.04.2008, during the currency of the partnership M/S Vashisth Creations in its existence as a partnership between the defendant no. 1 and Smt. Rajesh Sandhu. There is nothing T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 33 of 46 34 on record to show that the defendant no. 1 paid its rent out of his personal funds and not from the funds of the partnership M/S Vashisth Creations in its existence as a partnership between the defendant no. 1 and Smt. Rajesh Sandhu. If the defendant no. 1 has used the said address for his personal use the same might be only incidental or due to the concession given by the other partner. The defendant no. 1 has also issued a caution notice regarding his trademark 'BAKERSFIELD' in the newspaper 'Rashtriya Sahara' New Delhi edition dated 13.03.2011, however the same is only recital of his rights being the registered proprietor and does not create any additional right.
72. The plaintiff has taken the stand that the defendant no. 1 has vested all the assets and liabilities of the firm in favour of the other partner namely Smt. Rajesh Sandhu. The defendant no. 1 has taken a contrarian stand and has submitted that he has not vested the trade mark in favour of Smt. Rajesh Sandhu or Vashisth Creations as there is no such specific mention. The dissolution deed has been read by the parties word to word. I have also considered the same in its entirely. The vesting of liabilities and assets in favour of Smt. Rajesh Sandhu T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 34 of 46 35 or Vashisth Creations is couched in very wide terms. Of course, there is no positive assertion that the trade mark 'BAKERS FILED' shall vest in Smt. Rajesh Sandhu or Vashisth Creations. On the other hand, there is no clause which shows that the trade mark 'BAKERS FILED' shall vest in the defendant no. 1. Keeping in view the wide language which is used while conferring the assets and liabilities in favour of Smt. Rajesh Sandhu or Vashisth Creations and there being no exclusion clause that the rights visàvis the trade mark 'BAKERS FILED' or its specific vesting in the defendant no. 1, the construction of the deed has to be interpreted in a reasonable manner by taking an overall assessment and in the total context of probabilities that emerge from the facts on record.
73. The defendant no. 1 had opted out of the partnership on 10.09.2008. The new partnership was formed by Smt. Rajesh Sandhu by inducting five more partners in the name of style of erstwhile firm M/S Vashisth Creations, which right has been specifically vested in her by virtue of the clause 5 of the Dissolution Deed.
74. The defendant no. 1 might have an axe to grind that it was he who adopted the mark 'BAKERS FILED; or that the other partner T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 35 of 46 36 Smt. Rajesh Sandhu did not contribute any thing worthwhile to the establishment of the brand; or that it was he who did every thing to run the business and Smt. Rajesh Sandhu enjoyed everything without contributing any thing to the development of the business or brand. But all these things were put to rest when the defendant no. 1 opted out of the partnership and left the assets and liabilities of the firm in the hands of Smt. Rajesh Sandhu. A partnership is a contract. So also, is the deed of dissolution. Thus both require consideration. Consideration is an exchange of equivalents. The decision of the parties to part ways and the terms recorded in the dissolution deed put an end to the matter as far as appreciation of case for the purposes of an injunction application is concerned.
75. The defendants has not shown any material worth the name that they have used the mark 'BAKERSFILED' in respect of ready made garments; or have carried out any sales under the said mark. Except the selfserving and omnibus statement of the defendants there is no material on record to exhibit the prima facie use of trade mark 'BAKERSFILED' by the defendants. At the most there is an attempt to use the mark by the defendants.
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76. As far as the material on record demonstrate and by taking a prima facie view of the matter, it is apparent that it is the plaintiff who has been able to demonstrate on record by virtue of documentary material that he has been using the trade mark 'BAKERS FILED' in respect of ready made garments. The defendants have been able to establish that they the defendant no. 1 is the registered proprietor of the trade mark 'BAKERSFILED' and this is the admitted position. The same is under challenge before the Registrar in cancellation proceedings set in motion by the plaintiff.
77. Visàvis the plaintiff and the defendants the case of plaintiff stands on much higher position than that of the plaintiff. The plaintiff has shown the actual use of trade mark much prior in time than the defendants. The plaintiff while seeking registration of mark has claimed its user since 01.04.2006 but has shown no independent user by some tangible evidence on record. In my view the user by defendant no. 1 while as a partner of M/S Vashisth Creations cannot be claimed has such in his own and independent right.
78. The case law as relied upon by the plaintiffs as N. R. Dongre Vs. Whirlpool Corporation, 1996 PTC (16) 583 (SC) wherein it has T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 37 of 46 38 been held that action against registered owner of trademark at the instance of prior user of the same or similar mark maintainable and that injunction can be granted even against an owner of the trademark in an appropriate case comes to the aid of the plaintiff. Similarly the plaintiff reliance upon the law pronounced in the case of Century Traders vs. Roshan Lal Duggar AIR 1978 Delhi 250 wherein it has been held that in an action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants; the registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of mark in the register maintained registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purpose of deciding an application for interim injunction unless evidence has been led or is available of user of their registered trade mark, also comes to its aid.
79. In Laxmikant V. Patel v. Chetanbhat Shah AIR 2002 SUPREME COURT 275 it has been held as under: "8. It is common in the trade and business for a T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 38 of 46 39 trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and trade Names, Twelfth Edition, para 16.49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the Courts will protect. An action for passingoff will then lie wherever the defendant company's name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
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13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 39 of 46 40 action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (Ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is wellsettled that fraud is not a necessary element of the right of action,and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p. 3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted that plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)."
80. The words 'BAKERS FIELD' or 'BAKERSFIELD' have no T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 40 of 46 41 significant difference discernible to the lay man. Thus there is a chance of confusion and deception due to the two marks being almost the same. The plaintiff is claiming its user in respect of ready made garments. The registration of the defendant's goods is also in respect of the same and similar goods.
81. In Ruston and Hornby Ltd. v. Zamindara Engineering Co. AIR 1970 SUPREME COURT 1649 it has been held: "In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passingoff actions."
82. While evaluating whether there is a possibility of deception the yardstick is necessarily to be based on the reality test--as a consumer in the market. If he is likely to be deceived or taken for a ride, then T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 41 of 46 42 there is element of deception. In view of the marks been so strikingly similar that there is an apprehension of the defendants passing off their goods as that of the plaintiff cannot be ruled out. In trade channels the goods of the plaintiff as well as the defendant are likely to be sold under one roof. Two marks may not be available to such consumers side by side for comparison. Thus a consumer of ordinary prudence and imperfect recollection is likely to taken for a ride by believing that he is buying the goods of the plaintiff and not of defendant.
83. Therefore, due to user of the impugned mark consisting of the word 'BAKERS FIELD' or 'BAKERSFIELD' by the defendant in respect of the ready made garments etc. will certainly cause confusion among the public who will purchase the same under the confusion and there is apprehension that defendants' goods will be further passed off as that of the plaintiff.
84. The above fact coupled with the fact that once upon a time the defendant no. 1 was the partner in the erstwhile plaintiff firm M/S Vashisth Creations and managed its affairs in that capacity the customers may still carry the impression of the association between T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 42 of 46 43 the plaintiff and defendant no. 1 believing that the goods of defendant are coming from the plaintiff. Having so purchased the goods sold by the defendant, if the customer is not satisfied with the quality of the goods, then the fall out of the same would on be the goodwill and reputation of the plaintiff.
85. The relief of injunction is a relief in equity. The defendants have argued that the plaintiff must have something more than a prima facie case. This axiom stands against them also. He who seeks equity must also do equity. 75. In the instant case defendant's adoption of trade mark 'BAKERSFIELD' is prima facie anything but honest.
86. The plaintiff and defendant might have a raison d'etre to grind their axe. The paramount consideration before the Court is public interest. Public interest comes before and must get precedence over the private interests. The law cannot permit a unwary consumer to be taken for a ride. In the present case, as the facts of the case suggest, there is every likelihood of the general and unwary public associating the goods of defendant with that of the plaintiff on account of the use of the same trade mark 'BAKERS FIELD' or 'BAKERSFIELD'. The public interest is paramount and cannot be permitted to whittled down T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 43 of 46 44 or sidetracked.
87. In view of the above discussion, in my considered opinion the plaintiff has been able to make a prima facie case for the grant of ad interim injunction to restrain the defendant from using the trade mark 'BAKERS FIELD' or 'BAKERSFIELD' in respect of readymade garments or allied goods till the final disposal of the suit. The balance of convenience is also in favour of the defendant as prima facie it is the prior user and carried out sales, promotional advertisements etc. in the said trademark. The plaintiff is also likely to suffer in its goodwill if the defendant is not restrained from using the trademark 'BAKERS FIELD' or 'BAKERSFIELD' as the confusion generated in consumers would make them shy away from the products of the plaintiff and there being fierce competition in the retail market the plaintiff would not be able to recover the damage by monetary compensation, as the loss of goodwill will have far reaching consequences and cannot be monetarily estimated in concrete terms. Hence the plaintiff is entitled to injunction.
88. Therefore it is ordered as under:
(i). The application under Order 39 Rule 1 and 2 of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 44 of 46 45 the Code of Civil Procedure of the plaintiff is allowed thereby restraining the defendants from using the trade mark 'BAKERSFIELD' or any other deceptively similar trade mark in respect of readymade garments or similar goods till the final disposal of this case.
(ii). The application of the defendant under Order 39 Rule 1 and 2 of the Code of Civil Procedure seeking ad interim injunction against the plaintiff from using the trade mark 'BAKERSFIELD' is dismissed.
89. As cancellation proceedings are pending in respect to the registration of defendants' trade mark, the same shall be decided by the competent authority in accordance with law uninfluenced by this order. Nothing stated herein shall tantamount to an expression of opinion on the merits of the case.
90. The application of defendant under Order 7 Rule 11 of the Code of Civil Procedure stands dismissed. Respective applications of the parties under Order 39 Rule 1 and 2 of the Code of Civil Procedure stand disposed of in the above terms.
91. A signed copy of this order be placed in the respective files of T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 45 of 46 46 suit and counter claim.
Announced in the Open Court On this 05th day of November 2011 (MAN MOHAN SHARMA) ADJ (Central)12, Delhi T.M. 134/2011 Vashisht Creations vs. Joginder Singh T.M. 135/2011 Joginder Singh vs. Vashisht Creations Page 46 of 46