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III. Defendants' case:

13. The 2nd defendant filed written statement, inter alia, denying the plaintiffs' case, in particular, that the grandfather of the 1st plaintiff carried on coffee café business in Madras city in or about 1978-79. It was also denied that the 1st plaintiff joined the business and the trade name/mark and also earned goodwill. It was submitted that the plaintiffs had no right whatsoever through any firm by long usage or registration of trademark or copyright pertaining to the Madras Filter Coffee. It was denied that the plaintiffs' business was started long ago. No valid or legal material was submitted by the plaintiffs, except the self-serving statement. If really the business was commenced by the plaintiffs long ago, they would have submitted the relevant public documents to substantiate the said fact. It was pleaded that the plaintiffs ought to have submitted the sales tax returns, service tax, VAT documents, GST returns, Income tax returns, Food license, Trade licence and Labour licence etc. Non-furnishing of the said documents and furnishing the GST returns from the year 2020 clearly proved the falsity of the case about the plaintiffs commencement of the business long ago. The plaintiffs' case of long user of the logo or caption was specifically denied.

18. It was further submitted that the claims of the plaintiffs that the grandfather of the 1st plaintiff started coffee shops in or around 1978 was nothing but a figment of their imagination and a narrative that has been used by the plaintiffs to mislead the Court while not disclosing the fact that they have no established legal right over the said trademark/name and logo and that the application filed by the 1st plaintiff was pending with the Registrar of Trademarks who had asked him to provide proof to attest and buttress their claim that they were long users since 1978, which they had not done till that date. Further, the plaintiffs, despite claiming that they had invested monies to expand the goodwill and build the brand, have not produced even a shared of evidence in the form of statutory tax payments or any other filings like income tax returns and others documents to testify their supposed long use going back to 1978. Further, the GST receipts filed by the plaintiffs were of more recent origin shedding ample light on their false claim of long usage and enjoyment.

19. With respect to the application of the trademark filed by the plaintiffs, it was submitted by the 3rd defendant that the objection was raised under the Trademarks Act, on which, the Registrar of Trademark, Chennai issued a report to the effect that the said application was liable to be refused. The defendant had also applied for the trademark on 21.03.2023 and that was pending registration, so no one was the registered user. The 2nd defendant further stated that the plaintiffs had no prima facie case and there was no RNT, J & CGR, J balance of convenience in their favour, since the claim only went back to about 3-4 years, whereas it was stated that the defendant had been a long user of the trademark. The trademark, name, logo were created by the defendant and his personnel in the year 2004 itself. So, the plaintiffs were not entitled to claim any relief against the defendants. The suit was filed only for permanent injunction, but not for declaration, though the plaintiffs were required to establish their right by seeking for declaration over the property and also for injunction. The defendants had not infringed any registered trademark. The alleged long user of the trademark was not substantiated by any material valid paper, except self-serving statement and self-created documents.

"13. The next question is, would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off" itself suggests, is to restrain the defendant from passingoff its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the (2004) 6 SCC 145 RNT, J & CGR, J public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing-off action. It would depend upon the volume of sales and extent of advertisement.