Delhi High Court
Future Bath Products Private Limited vs Corza International & Ors. on 4 November, 2022
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number: 2022/DHC/004700
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 02.09.2022
Date of decision: 04.11.2022
+ CS(COMM) 461/2020
FUTURE BATH PRODUCTS PRIVATE LIMITED ..... Plaintiff
Through: Mr.Umesh Mishra & Mr.Vishal
Patel, Advs.
versus
CORZA INTERNATIONAL & ORS. ..... Defendants
Through: Mr. PPA Sageer, Adv.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 9580/2020
1. The present application has been filed by the plaintiff under Order
XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil
Procedure, 1908 (in short, „CPC‟) praying for grant of an ad interim
injunction restraining the defendants, their proprietors, partners, agents,
assigns, representatives, heirs, servants, dealers, distributors,
manufacturers, franchisees and/or anyone acting for and on their behalf
from selling, marketing, offering for sale, advertising directly or
indirectly the goods under the trade mark or any other
mark/name which is identical or deceptively similar to the plaintiff‟s
mark or for „apparatus for lighting, heating, steam
generating, cooling, cooking, refrigerating, drying, ventilating, water
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supply and sanitary purposes, etc.‟ included in Class 11 or other similar
goods in any manner whatsoever, so as to result in the infringement as
also passing off the said registered trade mark and artistic work of the
plaintiff.
FACTUAL BACKGROUND
PLAINTIFF:
2. It is the case of the plaintiff that in the year 1996, Mr. Naeem
Ahmed and Mr. Wasim Ahmed had entered into a partnership and started
a firm, namely „M/s. M.T. Engineering Works‟, engaged in the business
of manufacture and sale/supply of a complete range of bath fittings. On
01.04.1998, Mr. Naeem Ahmed and Mr. Wasim Ahmed conceived and
adopted the trade mark and have been using it ever since. They
applied for the registration of the trade mark , bearing
application no. 1099195 in Class 11, on 26.04.2002. The said application
was, however, treated as „abandoned‟ on 30.09.2015 as they failed to file
a reply to the opposition filed by one M/s Anchor Kenwood Electricals,
under Form TM-6, within the prescribed period of time.
3. It is the further case of the plaintiff that in the year 2004, Mr.
Naeem Ahmed and Mr. Wasim Ahmed entered into another partnership
and established another firm, namely „M/s. M. Sons Engg. Works‟, and
filed a fresh application on 23.09.0211 bearing no. 2210199 for the
registration of the trade mark for goods falling in Class 11 with
respect to „apparatus for lighting, heating, steam generating, cooling,
cooking, refrigerating, drying, ventilating, water supply and sanitary
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purposes, etc.‟, claiming user since 01.04.1998. The said trade mark was
registered in the name of the said partnership firm vide Certificate of
Registration no. 1873221 in Class 11.
4. The plaintiff asserts that, thereafter, Mr. Wasim Ahmed executed
an Assignment Deed dated 21.03.2013, assigning several registered trade
marks, including the trade mark , in favour of Mr. Naeem
Ahmed, who by then had started a proprietorship-firm under the name
and style of „M/s Future Bath Products‟. Mr. Naeem Ahmed filed an
application, under Form TM-16, before the Trade Marks Registry and
accordingly, became the registered proprietor of the trade mark
claiming user since 01.04.1998.
5. On 17.08.2017, the plaintiff-company was incorporated and by
virtue of an Assignment Deed dated 09.08.2018, the plaintiff-company
acquired the proprietorship of the said trade mark from
Mr.Naeem Ahmed. The plaintiff filed Form TM-P in this regard before
the Trade Marks Registry on 09.08.2018, which was allowed and as such
the plaintiff became the registered proprietor of the trade mark .
6. The plaintiff further submits that through its predecessor-in-
interest, it is engaged in the business of manufacturing, marketing and
selling of „apparatus for Lighting, Heating, Steam Generating, Cooling,
Cooking, Refrigerating, Drying, Ventilating, Water Supply and Sanitary
purposes etc.‟, included in Class 11 (hereinafter referred to as „the said
goods‟) and other classes as detailed in the Fourth Schedule to the Trade
Marks Rules, 2002 since 01.04.1998.
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7. The plaintiff further asserts that the predecessor-in-interest of the
plaintiff had also applied for the registration of the mark and
other trade marks/labels in other classes as well for the better protection
of the said mark under the provisions of the Trade Marks Act, 1999 (in
short, „the Act‟). The details of the registered trade marks of the plaintiff
are provided herein below:
S. No. Trade Mark Class Status Appl. No.
1. 6 Registered 2210196
2. 7 Registered 2210197
3. 8 Registered 2210198
4. 14 Registered 2210200
5. 21 Registered 2210202
6. 35 Registered 2210203
7. 6 Registered 2379101
8. 17 Registered 2210201
9. 11 Registered 2210199
8. The plaintiff submits that it is the original adopter and user of the
artistic work , which has been continuously, extensively, and
openly used by the plaintiff. The plaintiff further states that the aforesaid
mark has a unique colour combination, layout and lettering style in
relation to the said goods and has been in use since the year 1998 through
its predecessor-in-interest. The said artistic work falls within the
meaning of an „original artistic work‟ under Section 2(c) of the
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Copyright Act, 1957 (in short, „the Copyright Act‟). The plaintiff further
submits that the plaintiff is the registered proprietor of the artistic work in
under the Copyright Act vide Certificate bearing no. A-
106740/2013.
9. The plaintiff submits that it maintains high standards in the field of
marketing and sale of the said goods. Due to the high quality and
efficiency of the said goods sold by the plaintiff under the said trade
marks/label/artistic works, it has acquired enviable goodwill and
reputation among the consumers, the general public and the members of
the trade.
10. The plaintiff is running its individual website
https://www.corsabath.in, which comprises of information about the
business of the plaintiff and the same is accessible to the consumers and
the general public at large. The plaintiff is also promoting and selling its
products under the aforementioned marks through different interactive
websites such as Amazon India, Facebook, IndiaMart, YouTube and
LinkedIn.
11. The predecessor-in-interest of the plaintiff as well as the plaintiff
has made substantial investment towards the publicity and advertisement
of its mark through different modes, including print and electronic media.
The details of the expenditure incurred on advertising goods bearing the
mark by the plaintiff as also its sales figures have been
provided in paragraph 16 of the plaint.
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12. The plaintiff further submits that based on the aforementioned
facts, it is sufficiently clear that the plaintiff is the original as well as the
prior adopter and user of the trade mark(s)/label(s)/artistic work(s)
and .
13. The plaintiff submits that in the third week of September 2020, the
sales team of the plaintiff informed one of the directors of the plaintiff
that an advertisement was displayed/uploaded on the Facebook page of
the defendant no. 1, that is, https://www.facebook.com/corzainternational
which stated that the goods of the defendant no.1, falling in Class 11 such
as bath fittings, etc., are coming soon in the market under the trade mark
Upon further inquiry, it came to the knowledge of the plaintiff
that the defendant no.1 is engaged in the business of manufacturing,
marketing and sale of a wide range of sanitary ware products. It also
came to the knowledge of the plaintiff that the defendant no.1 is
promoting and selling its products bearing the mark through
several websites as also social media platforms, including but not limited
to Instagram, JustDial, Facebook and IndiaMart; targeting customers of
the plaintiff as well as the general public within the territorial jurisdiction
of Delhi.
14. Upon conducting a web search on the website of the Controller
General of Patents, Trade Marks and Designs, that is,
https://ipindiaonline.gov.in, it was brought to the notice of the plaintiff
that on 16.12.2014, the defendant no.1 herein, through its partner, that is,
the defendant no.2, applied for the registration of the mark vide
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application bearing number 2863414 with respect to goods such as
„Hollow Bricks, Inter Lock, Floor, Pavement, Roofing, Ceramic Cement,
etc.‟ included in Class 19 and claiming user since 01.11.2014. The same
was granted registration vide Certificate of Registration bearing no.
1445104 dated 18.01.2017.
15. The plaintiff asserts that on further inquiries it was revealed that
the defendant nos. 2 and 3, may be partners in another firm, namely „M/s
Pan India Tiles and Ceramics‟, which had filed an application seeking
registration of the trade mark in Class 11. The same had been
published in the Trade Marks Journal No. 1806-0 dated 17.07.2017 and
the plaintiff has opposed the same. The plaintiff did not take any action
against the said firm as goods under the trade mark were not
found to be sold in the open market. In the present suit also, „M/s Pan
India Tiles and Ceramics‟ has not been impleaded as no goods bearing
the mark from the said partnership-firm are available in the
open market, and in fact, the said partnership-firm does not appear to
exist.
16. The plaintiff asserts that the adoption of the mark
amounts to infringment of the plaintiff‟s registered trade mark .
The defendants are also guilty of passing off their goods as that of the
plaintiff‟s.
DEFENDANT NOS. 1, 2 AND 4:
17. In the Written Statement filed with the Suit, it is asserted that the
defendant no. 1 is a partnership-firm, with the defendant nos. 2 and 4
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being partners thereof. The defendant no. 3 is not a partner in the
defendant no. 1.
18. It is asserted that the defendant no. 2 created the mark
along with Mr. K. Hamza and Mr. C.K. Abdul Jabbar and constituted a
partnership firm, namely „M/s Pan India Tiles Gallery‟. The explanation
given for adoption of the mark is in paragraph 3 of the „Preliminary
Submissions‟ of the Written Statement to the suit and is reproduced as
under:-
"3..... They conceived and adopted the
trademark CORZA from the grouping of
Partner‟s names of M/s Pan India Tiles.
They formed the word KARZA choosing K
from Defendant No.2's father's name
Kunchalan, last two letters of K.Abdul
JabbAR and the last letters of K. HamZA
the then Partner and evolved it as CORZA to
give a corporate aspect and it is no way
connected to the Plaintiffs trademark as
alleged."
19. It is asserted by the defendant nos. 1, 2 and 4 that the marks of the
plaintiff and the defendants are not similar. The mark of the defendants
has been openly, continuously and extensively used since 28.09.1999 by
the "predecessor firm of Defendant No. 1 herein" and has become a
leader in the South Indian market with regards to its goods- water closets
and allied goods. It is asserted that the defendant no. 1 was formed by the
defendant no. 2 as a sister concern of „M/s Pan India Tiles‟, which is the
applicant for the trade mark in Class 11. The defendant no. 1 is
the registered proprietor of the mark . It is further asserted as
under:-
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"5.... Thus, the Defendant No. 1 firm is the
registered proprietor of the trademark
CORZA.As mentioned supra, the
predecessor or the earlier user M/s Pan
India Tiles (earlier known as M/s pan India
Tiles and Gallery) originally designed the
trademark CORZA on 28.09 1999 and upon
the consent of the same the successor firm
Defendant No.1 has started using the mark
CORZA as thereon since its formation."
20. It is asserted that the defendant no. 1 and its predecessor sister
concern, „M/s Pan India Tiles and Ceramics‟, together are engaged in the
field of manufacture and sale of „water closets, flushing and bath
installations, wash basins pedestals, European Indian water closets,
urinals closets, cisterns bidets, sinks urinals, bath room accessories,
toilet bowls, toilet tanks lavatories for sanitary purpose‟ since the year
1999.
21. The defendants state the defendant no. 1 has a huge sales turnover,
the details whereof are given in paragraph 8 of the „Preliminary
Submissions‟ to the Written Statement filed in the Suit and has a good
market share in its goods and services especially in the State of Kerala.
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
PLAINTIFF
22. The learned counsel for the plaintiff, while reasserting the
submissions as reproduced hereinabove, further submits that the plaintiff
being the registered proprietor of the mark , the adoption of a
deceptively similar mark by the defendants for the same and allied goods
is liable to be restrained.
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23. He submits that the plaintiff is also the prior adopter of the mark as
the plaintiff, through its predecessor-in-interest, had adopted the same
since 01.04.1998. He submits that on the other hand, the defendant no. 1
claims user of its mark only with effect from 01.11.2014, as
would be evident from its application no. 2863413 seeking registration of
its mark in Class 19. He submits that the attempt of the defendants to
claim an earlier user of the mark through „M/s Pan India Tiles Gallery‟
(hereinafter referred to as „M/s Pan India Tiles‟) cannot be accepted
inasmuch as the defendant no.1 is a separate partnership-firm and the
defendant no. 1 has not produced any document of assignment or licence
of the mark from „M/s Pan India Tiles‟ in its favour. He submits that, in
fact, „M/s Pan India Tiles‟, as late as 17.02.2018, filed its response to the
objection filed by the plaintiff to its application seeking registration of the
mark, wherein no reference was made to the use of the mark by the
defendant no. 1. The defendant no. 1 in its own application seeking
registration of the mark, claimed user only since 01.11.2014.
24. The learned counsel for the plaintiff submits that, in summation,
the plaintiff is entitled to an order of ad interim injunction as the marks in
question are deceptively similar to each other; the plaintiff is the
registered proprietor of the mark for the goods in question; and the
plaintiff is also the prior adopter and user of the mark.
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
DEFENDANT NOS. 1,2 AND 4
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25. On the other hand, the learned counsel for the defendant nos. 1, 2
and 4 submits that the defendant no.1, through its predecessor-in-interest-
„M/s Pan India Tiles‟, is the prior adopter and user of the mark ,
and has been using the mark since 28.09.1999. He submits that a
substantial amount has been spent by the defendants for the promotion
and expansion of its trade mark, due to which it has generated
tremendous goodwill and reputation in South India, especially in the
State of Kerala. He submits that on the other hand, the plaintiff has failed
to produce any document in support of its alleged claim of user of the
mark and . prior to the year 2009. The plaintiff has
also failed to implead „M/s Pan India Tiles‟ as a defendant in the Suit.
26. He further submits that as the defendant no. 2 was the Managing
Partner of „M/s Pan India Tiles‟ and is also the Managing Partner of the
defendant no. 1, he is, therefore, entitled to avail the benefit of the user of
the mark by „M/s Pan India Tiles‟.
27. The learned counsel for the defendants further submits that the
present Suit has not been properly instituted inasmuch as there is no valid
authorization in favour of the signatory on behalf of the plaintiff-
company. In this regard, he submits that the purported certified copy of
the Board Resolution, though it claims itself to be passed unanimously, is
signed by only two of the four Directors of the plaintiff-company. He
submits that, therefore, the signatory to the Suit has not been authorized
by the plaintiff-company.
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28. He further submits that the plaintiff has also intentionally not filed
the Legal Proceeding Certificates in support of its registration. The claim
of registration of the marks in favour of the plaintiff is, therefore, liable to
be rejected as the entry in the Registrar of Trade Marks may change due
to assignment, transfer or rectification, etc. He submits that „M/s Pan
India Tiles‟ has filed an application seeking rectification of the
registration granted to the plaintiff‟s trade mark.
29. He submits that the plaintiff has itself disclosed the filing of an
application by „M/s Pan India Tiles‟ seeking registration of its mark on
01.08.2014. Objections thereto were filed by the plaintiff on 17.11.2017.
The present Suit was filed by the plaintiff in or around October 2020, that
is, with a delay of more than six/three years, on which ground itself the
plaintiff is not entitled to any relief. He submits that the plaintiff is also
estopped from laying any claim to injunction against the defendants in
terms of Section 33 of the Act.
30. The learned counsel for the defendants further submits that the
defendants are operating only in South India, while the plaintiff is
operating in Delhi-NCR. The goods of the plaintiff are bath fittings,
while those of the defendants are water closets and allied products. He
submits that, therefore, the geographical area of operation and the goods
being different, no case of an ad interim injunction is made out by the
plaintiff. He submits that the plaintiff cannot be permitted to monopolize
the mark for goods in which it is not dealing and for which it has no bona
fide intention of using the mark. In support, he places reliance on the
judgments of the Supreme Court in Vishnu Trading as Vishnudas
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Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad & Anr., 1996
SCALE (5) 267 and in Nandhini Deluxe v. Karnataka Co-operative
Milk Producers Federation Ltd., AIR 2018 SC 3516.
31. He submits that the defendants, being the registered proprietor of
the mark, and that there being no proceedings in challenge to the
registration of the defendants filed by the plaintiff till date, an injunction
against the registered proprietor of the marks cannot be granted.
32. He submits that even otherwise, the mark(s) of the plaintiff and the
defendants, when compared as a whole, are not similar. In support, he
places reliance on the judgment of the High of Bombay in International
Foodstuff Co. LLC. v. Parle Products Pvt. Ltd. and Ors., 2016 SCC
OnLine Bom 2038.
33. He submits that the plaintiff itself has valued its trade mark at only
Rs. 4,000/- (Rupees Four Thousand only) in the Assignment Deed dated
21.03.2013. Therefore, it is not entitled to any order of injunction.
ANALYSIS AND FINDINGS:
34. I have considered the submissions made by the learned counsels
for the parties.
35. At the outset, I shall first consider the submission of the learned
counsel for the defendants that the present suit has not been properly
instituted by the plaintiff. As noted hereinabove, this submission is based
on the plea that the authorisation in favour of the signatory to the plaint
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has been signed by only two Directors, one of which is the signatory
himself.
36. I do not find any merit in the said submission inasmuch as, as in
terms of Section 174 of the Companies Act, 2013, for a Board Meeting,
the quorum required is of only two Directors and the extract of the Board
Resolution filed on record meets the said requirement.
37. The learned counsel for the defendants has also stated that there is
a difference between the address of the plaintiff-company as shown in the
Memo of Parties and the Board Resolution, however, I do not find any
such difference in the two addresses.
38. The submission of the learned counsel for the defendants that the
plaintiff has not filed the Legal Use Certificates of its registrations, can
also be of no assistance to the defendants at this stage. I find that the
factum of registrations of the mark of the plaintiffs is not contested by the
defendants. Merely because „M/s Pan India Tiles‟ has filed an application
seeking rectification of such registration, in my prima facie view, cannot
come to the defence of the defendant nos. 1, 2 and 4 herein. The
defendants herein do not claim to have filed any such rectification
petition nor have urged grounds on which they may intend to challenge
the registration of the plaintiff. The registration granted to the plaintiff, at
least for the present application, therefore, has to be presumed to be valid
in terms of Section 31 of the Act.
39. The submission of the learned counsel for the defendants that mere
phonetic similarity in the two trade marks is not sufficient, also does not
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hold much force. The two trade marks in question, that is, and
are phonetically and visually similar. As held by the Supreme
Court in Corn Products Refining Co.v. Shangrila Food Products Ltd.,
(1960)1 SCR 968, the test to be applied is of a man of „average
intelligence and of imperfect recollection‟. To such a man, the overall
structural and phonetic similarity and the similarity of the idea in the two
marks is reasonably likely to cause a confusion between them.
40. The submission of the learned counsel for the defendants that the
plaintiff-company, having valued its trade mark at Rs.4000/- only in the
Assignment Deed dated 21.03.2013, is not entitled to any relief of
injunction, is also liable to be rejected. The statutory and common law
right in a trade mark are not dependent on the value ascribed thereto by a
party. If the plaintiff is able to make out a case based on the registration
of its mark as also a common law right based on the prior adoption and
use of the mark, it shall be entitled to an injunction against the third party
misusing its mark irrespective of the value ascribed to such mark in an
Assignment Deed.
41. The claim of user of the mark since 1999 made by the defendant
nos.1,2 and 4 based on the alleged user of the mark by „M/s
Pan India Tiles, cannot be accepted in absence of any assignment or
license to use the said mark from „M/s Pan India Tiles‟ being produced
by the defendants on record. The defendant no.1 is a separate partnership-
firm. The defendant no.2, though a partner in „M/s Pan India Tiles and
Ceramics‟ cannot, while such partnership is in existence and without any
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contract to the contrary, claim rights over the trade mark of the fim to its
exclusion.
42. Having said the above, it is also to be noted that the defendants are
the registered proprietor of the mark in Class 19. The said
registration is not only subsisting but has not been opposed by the
plaintiff. The defendants have also filed documents in support of their
user of the mark since at least the year 2014. This is ignoring the earlier
use claimed by them on basis of their association with „M/s Pan India
Tiles and Ceramics‟. It has also been contended that the defendants have
their business in South India, especially in the State of Kerala, where the
plaintiff has no presence. This has not been disputed by the learned
counsel for the plaintiff during his submissions. In fact, the learned
counsel for the plaintiff has submitted that the cause of action has arisen
when the defendants sought to expand their business to sanitary ware and
in which regard, he refers to the Facebook page of the defendants.
43. In a nutshell, what is evident from the submissions of the parties
and the documents filed is as under:-
(i) The plaintiff is a registered proprietor of the mark ,
which it claims to be using for the manufacture and sale of
complete range of bath fittings since 01.04.1998, through its
predecessor in interest, namely, „M/s. M.T. Engineering Works‟.
However, as far as documents are concerned, the first document
produced is of the year 2009. The plaintiff claims that the
documents prior thereto have been destroyed in fire. This claim,
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however, will have to be tested on evidence being led by the
parties;
(ii) The defendants are the registered proprietor of the mark
in Class 19 and claim to be using the same for
manufacture and sale of water closets and its allied products since
the year 1999 (on basis of claim of „M/s Pan India Tiles‟) and on
its own since the year 2014;
(iii) The present suit has been filed in or about October 2020 by
the plaintiff, when, according to the plaintiff, the defendants
expanded their business into sanitary ware;
(iv) The defendants claim to have their business primarily in
South India, especially in the State of Kerala, where the plaintiff
has no presence.
44. As the mark of the plaintiff, that is, is registered for
goods in Class 11, the use of a deceptively similar mark thereto by the
defendants in relation to the same or similar goods would amount to
infringement of the registered trade mark of the plaintiff. Section 29 of
the Act spells out the circumstances whereby a registered trade mark is
infringed. Section 29(1) and (2) are reproduced herein under:-
"Section 29. Infringement of registered trade
marks.---- (1) A registered trade mark is infringed
by a person who, not being a registered proprietor
or a person using by way of permitted use, uses in
the course of trade, a mark which is identical
with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which
the trade mark is registered and in such manner
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as to render the use of the mark likely to be taken
as being used as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which because of--
(a) its identity with the registered trade
mark and the similarity of the goods or
services covered by such registered trade
mark; or
(b) its similarity to the registered trade
mark and the identity or similarity of the
goods or services covered by such
registered trade mark; or
(c) its identity with the registered trade
mark and the identity of the goods or
services covered by such registered trade
mark, is likely to cause confusion on the
part of the public, or which is likely to have
an association with the registered trade
mark."
45. To avail the benefit of the exception to an action of infringement,
the defendants have to show "acquiescence" for a continuous period of
five years, wherein the registered proprietor was aware of the use of such
mark, Section 33 of the Act reads as under:-
"Section 33. Effect of acquiescence. (1) Where
the proprietor of an earlier trade mark has
acquiesced for a continuous period of five years in
the use of a registered trade mark, being aware of
that use, he shall no longer be entitled on the
basis of that earlier trade mark--
(a) to apply for a declaration that the
registration of the later trade mark is
invalid, or
(b) to oppose the use of the later trade mark
in relation to the goods or services in
relation to which it has been so used, unless
the registration of the later trade mark was
not applied in good faith.
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(2) Where sub-section (1) applies, the proprietor
of the later trade mark is not entitled to oppose the
use of the earlier trade mark, or as the case may
be, the exploitation of the earlier right,
notwithstanding that the earlier trade mark may
no longer be invoked against his later trade
mark."
46. In the present case, the plaintiff has asserted that as far as „M/s Pan
India Tiles and Ceramics‟ is concerned, on the advertisement of its
application in Class 11, the same was opposed by the plaintiff and to the
knowledge of the plaintiff, the said partnership firm has not been using
the mark " ". The plaintiff has further asserted that it gained
knowledge of the use of the mark " " by the defendants only in
the third week of September, 2020. It is submitted by the plaintiff that it
was not aware of the adoption/registration of the mark of the defendants
as such registration was applied by the defendants for the goods in Class
19, that is, for a different class of goods.
47. In view of this stand of the plaintiff, atleast at this stage, it cannot
be said that the plaintiff has acquiescence in the use of the mark
by the defendants for the goods covered in Class 11, that is,
sanitary ware and bathroom fittings. In M/s Power Control Appliances
and Others v. Sumeet Machines Pvt. Ltd, (1994) 2 SCC 448, the
Supreme Court has held as under:
"26. Acquiescence is sitting by, when another is
invading the rights and spending money on it. It is
a course of conduct inconsistent with the claim for
exclusive rights in a trade mark, trade name etc. It
implies positive acts; not merely silence or
inaction such as is involved in laches. In Harcourt
v. White, (1860) 28 Beav 303: 54 ER 382, Sr.John
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Romilly said: "It is important to distinguish mere
negligence and acquiescence." Therefore,
acquiescence is one facet of delay. If the plaintiff
stood by knowingly and let the defendants build up
an important trade until it had become necessary
to crush it, then the plaintiffs would be stopped by
their acquiescence. If the acquiescence in the
infringement amounts to consent, it will be a
complete defence as was laid down in Mouson
(J.G.) & Co. v. Boehm, (1884) 26 Ch D 406. The
acquiescence must be such as to lead to the
inference of a license sufficient to create a new
right in the defendant as was laid down in
Rodgers v. Nowill. (1847) 2 De GM&G 614 : 22
LJ KCH 404."
48. Equally, the claim of the plaintiff cannot be said to be hit by delay
or laches. As noted herein above, the plaintiff has asserted knowledge of
the defendants adopting the impugned mark for sanitary goods and
bathroom fittings only in September, 2020. The plaintiff filed the present
suit in October 2020. In view of the above, therefore, no delay or latches
can be alleged against the plaintiff.
49. In view of the above, the defendants are liable to be restrained by
way of an ad interim order from using the deceptively similar mark
for the goods of the defendants falling under Class 11, that is,
bath fittings and other sanitary ware.
50. At the same time, the defendants are admittedly the registered
proprietor of the mark for the goods covered in Class 19. The
said registration is also valid and subsisting. As highlighted by the
learned counsel for the defendants, the plaintiff has not challenged the
said registration till date. The defendants have also filed documents on
record to show user of the mark for the said goods, especially
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water closets. Section 28 of the Act vests a right in a registered proprietor
to use of the registered mark in relation to the goods or services in respect
of which the same is registered. The said mark has been allegedly in use
by the defendants atleast from the year 2014.
51. In view of the above, in my opinion, the defendants cannot, at this
stage, be restrained from use of the mark for the goods covered
in Class 19, for which its marks stand duly registered. The balance of
convenience and the test of irreparable damage would warrant any such
injunction to be refused to the plaintiff at this stage for such goods.
52. Accordingly, the present application is disposed of restraining the
defendants, their proprietors, partners, agents, assigns, representatives,
heirs, servants, dealers, distributors, manufacturers, franchisees and/or
anyone acting for and on their behalf from selling goods under the trade
mark or any other mark/name, which is identical or
deceptively/confusingly similar to the plaintiff's registered trade mark
or for bath fittings or other sanitary ware or other
similar goods in any manner whatsoever, so as to result in infringement
of the said registered trade mark of the plaintiff or its passing off, during
the pendency of the present suit. The defendants shall, however, be free
to use the mark for the goods covered in Class 19. As the
defendants‟ own case is that they are confined to the southern states of
India, especially in State of Kerala, they shall not expand their area of
operation to other parts of the country during the pendency of the present
Suit.
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53. It is clarified that the above ad interim arrangement is based on the
prima facie findings of the Court, which shall not influence the Court at
the final hearing of the Suit on the parties leading their respective
evidence.
CS(COMM) 461/2020
List the matter before the Joint Registrar (Judicial) for further
proceedings on 16th December, 2022.
NAVIN CHAWLA, J.
NOVEMBER 04, 2022/ab/ais Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:05.11.2022CS(COMM) 461/2020 Page 22 of 22 17:40:33