Apollo Tyres Ltd. vs Pioneer Trading Corporation & Anr. on 17 August, 2017
On consideration of the materials on record at this interim
stage, I am of the view that the plaintiff has been able to make
out a strong prima facie case for an order of injunction. The
plaintiff has been able to show nexus between Prime Gold
International Ltd. and the Defendant in the suit. Even prior to
the institution of the suit at Delhi, ceased and desist notice was
issued to the defendant. The defendant was aware that the suit has
been instituted against Prime Gold International Ltd. and another
for passing off its product as that of the plaintiff by applying
the same surface pattern over which the plaintiff has claimed a
superior right by long, extensive and continuous use. The learned
Single Judge of the Delhi High Court on consideration of similar
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objections has passed an interim order as recorded earlier. The
revocation of the registered design on the ground of prior
publication in the instant case does not defeat the right of the
plaintiff to seek an order of injunction on the strength of trade
dress and passing off as the considerations under the two Acts are
different. In fact, the registered design of the plaintiff was
revoked on the ground the plaintiff prior to the application for
registration of its design had published such design by way of
advertisements and sold its products prior to the date of the
application for registration of the design. The ground for
revocation was not that some other entities have published the
same and/or similar design prior to the plaintiff's claim of
novelty of such design. Moreover, as held in Apollo Tyres [supra],
the non-registration of the design contained in the trade pattern
does not take away the rights of the person who uses the said
design contained in the trade pattern as a trademark to sue for
passing off. The document at page 58 of the petition discloses
that the defendant was selling the TMT Bar of Prime Gold
International Ltd. which prima facie establishes that they were
franchisee of Prime Gold International Ltd.. In view of the prima
facie finding that X-Ribs marks on the TNT bar of the defendant
are ex facie identical and slavish imitation of the plaintiff's
trade dress and pattern, there shall be an order of injunction
restraining the defendant from manufacturing, marketing, using
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and/or selling TMT bars and/or rods by applying the pattern of X-
Ribs upon and/or in relation to the TMT bars and rods as depicted
in Annexure-A to the plaint. This interim order shall continue for
a period of eight weeks or until further order whichever is
earlier.