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2. There would be a confusion in the minds of the public that the goods of the defendants with trade mark 'FLEXGRIP' are that of the plaintiffs and the defendants are thereby trying to pass of its goods as that of the plaintiffs.
3. The plaintiffs have filed case of infringement of trade mark against the defendants in Germany on the same ground. The defendants in that case gave statement that the defendants would not use the trade mark 'FLEXGRIP' in respect of these very goods and thereby accepting the exclusive right of the plaintiffs to use the trade mark 'FLEXGRIP'. In view of this stand of the defendants in a competent Court of law in Germany it was not permissible for the defendants to take contrary stand when the case is filed in India.

5. It may be mentioned at this stage that in an action brought by the plaintiffs against the defendants before the Original Court at Frankfurt (Case no.3/12 O 138/97), the defendants had sent the fax message dated 29th May, 1998 to the said Court, inter alia, stating as under:-

We have received the judgment passed by your honour dated 20.4.98, in our office on 27.4.98.

6. We, the defendant above named state as follows:

1. The defendant does not wish to defend the action in the above matter as they have not sold and do not intend to sell in future, in Germany, any products on which, ore relating to which, the terms 0, "Replay" and/or "Jotter" or "Jotter Refill" is used. The defendant gives its sole undertaking to this Hon'ble Court to that effect.
1. There was material concealment of fact by the plaintiff while obtaining the ex-parte injunction. It was submitted that the defendant had adopted the mark FLEXGRIP in 1993 and was using the same since then in association with his mark EKCO. Therefore, it was a case of PAPER MATE FLEXGRIP versus EKCO FLEXGRIP and not FLEXGRIP alone as projected by the plaintiff. It was further submitted that the defendant had given an undertaking before the German Court in a case filed by the plaintiff against the defendant, that it has never sold pens under the mark FLEXGRIP in Germany. This shows that the plaintiff was well aware since then that the defendant has been using the mark FLEXGRIP but has concealed this fact before this Court. In support of the submission that there is material misrepresentation and concealment of material facts, learned counsel quoted the following averment from the plaint:

I am also convinced that the explanation given by the defendant no.2 in so far as action brought by the plaintiffs in German Court is concerned. The undertaking given by the defendant no.2 in German Court was that the defendant had never sold the products in Germany and there was no intention to sell the product in Germany. The defendant no.2 had therefore, specifically made its intention clear by not selling the product with the mark 'FLEXGRIP' in Germany. There was no omnibus statement to the effect that it would not sell product at all in any part of the world including India. On the contrary, the plaintiffs knew that the defendant no.2 was marketing it s product with the mark 'FLEXGRIP' in India. Therefore such a statement given by the defendant no.2 in German Court to avoid high cost of litigation when the injunction was not harming the defendant no.2 Germany, as it has not intention to sell its product in Germany, would not be of help to the plaintiff while reexamining the present case filed in India.