Ansul Industries vs Shiva Tobacco Company

Bench: S Khanna

Ansul Industries vs Shiva Tobacco Company on 16/1/2007

JUDGMENT

Sanjiv Khanna, J.

1. The appellant, M/s Ansul Industries, and the respondent, M/s Shiva Tobacco
   Company, both manufacture and sell chewing tobacco. Chewing tobacco
   manufactured/sold by the appellant is marketed under the trade mark ’Udta
   Panchhi’ and the chewing tobacco manufactured/sold by the respondent is marketed
   under the brand name ’Panchhi Chaap’.
   





The respondent claims that they started using the brand name ’Panchhi
Chaap’ in 1973 and is also the registered user of the said trade mark label
under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the
Act) since in 1974. The appellant claims his lineage to the trade mark ’Udta
Panchhi’ through Mr. Krishan Bansal, father of Mr. Anand Bansal, sole proprietor
of the appellant. It is claimed that Mr. Krishan Bansal adopted the trade mark
’Udta Panchhi’ in March, 1982.






Learned trial Court by the impugned order dated 30th July, 2005 has
allowed application of the respondent under Order XXXIX, Rules 1 and 2 of the
Code of Civil Procedure, 1908 (hereinafter referred to as the Code, for short)
and restrained the appellant from using the mark "Panchhi". While doing so,
learned trial Court has held that the respondent being a prior user and a
registered owner of the mark "Panchhi" is entitled to injunction against the
appellant notwithstanding the delay in approaching the Court and in filing the
suit for permanent injunction. The respondent filed the suit for permanent
injunction against the appellant in 1997.






Number of contentions have been raised by the appellant and the
respondent. For proper appreciation, I have discussed these contentions under
different heads. (A) Whether the marks ’Udta Panchhi’ and ’Panchhi Chaap’are
deceptively similar.






In a world where consumer has bewildering choices and options to purchase
products, manufacturers and dealers have used marks to identify their products
and distinguish them from others. With passage of time manufacturers and traders
acquire goodwill associated with the marks. Common law protects invasion into
the proprietary rights of a trader/manufacturer who has acquired goodwill in a
mark. On invasion of the said proprietary right, the owner or the proprietor of
the mark has right to initiate passing off action against the infringer. This
action is based on deceit and the proprietor in order to succeed has to prove
actual passing off or that the use of the mark had actually caused confusion or
damage. He is also to prove and establish that the mark is associated and
identified with the goods of the said proprietor and the infringer is using the
said mark or a deceptively similar mark with the object of inducing customers to
buy goods that do not belong to the proprietor.






The above quasi proprietary right in common law was given statutory
recognition under the Act, On registration of a mark, the registered proprietor
is entitled to enforce his statutory right against the infringer without having
to establish and prove goodwill in the mark and its association with the
claimant. On registration of the mark certain statutory rights flow from the
statute. When a statutory right is challenged, the registered proprietor is
entitled to initiate action for infringement.






In Anglo−Dutch, Colour & Varnish Works Pvt. Ltd. v. India Trading House
this Court after referring to decisions of the Supreme Court has down the
following tests for comparing two marks:

(i) The question whether the two marks are so similar as likely to cause
confusion or deceive is one of the first impression. It is for the Court to
decide this question.






(ii) The question has to be approached by applying the doctrine of fading
memory, i.e. form the point of view of a man of average intelligence having
imperfect recollection.

(iii) Whether the overall visual and phonetic similarity of the two marks
is likely to deceive such man or cause confusion that he may mistake the goods
of the defendant for those of the plaintiff.

(iv) The other questions are:






(i) Who are the persons who are likely to be deceived, and

(ii) What rules of comparison are to be adopted in judging whether such
resemblance exists.

8. The question of infringement under Section 29 of the Act is decided
whether the mark of the defendant is likely to deceive or cause confusion’, In
Amritdhara Pharmacy v. Satya Deo Gupta Supreme Court referring to Kerly on Trade
Marks, 8th Edn. Observed:

For deceptive resemblance two important questions are:

(1) who are the persons whom the resemblance must be likely to deceive or
confuse, and (2) what rules of comparison are to be adopted in judging whether
such resemblance exists. As to confusion, it is perhaps an appropriate
description of the state of mind of a customer who, on seeing a mark thinks that
it differs from the mark on goods which he has previously bought, but is
doubtful whether that impression is not due to imperfect recollection.

9. Supreme Court also quoted Parker, J. in Pianotist Co. Application, Re, as
under−






You must take the two words. You must Judge of them, both by their look and
by their sound. You must consider the goods to which they are to be applied. You
must consider the nature and kind of customer who would be likely to buy those
goods. In fact, you must consider all the surrounding circumstances; and you
must further consider what is likely to happen if each of those trade marks is
used in a normal way as a trade mark for the goods of the respective owners of
the marks. If, considering all those circumstances, you come to the conclusion
that there will be a confusion, that is to say, not necessarily that one man
will be injured and the other will gain illcit benefit, but that there will be a
confusion in the mind of the public which will lead to confusion in the goods −
then you may refuse the registration, or rather you must refuse the registration
in that case.

Case law on the subject was examined by the Supreme Court in Cadila
Health Care Ltd. v. Cadila Pharmaceuticals Ltd. . It was held that it was
necessary to apply both the visual and phonetic or sound tests. The question
whether the two marks were likely to cause confusion and deception in the mind
of the buyers was decided on the basis of first impression. It was observed:

With respect, we are unable to agree that the principle of phonetic
similarity has to be jettisoned when the manner in which the competing words are
written is different and the conclusion so arrived at is clearly contrary to the
binding precedent of this Court in Amritdhara case , where the phonetic

similarity was applied by judging the two competing marks. Similarly, in

Durga Dutt Sharma case , it was

observed that:

In an action for infringement the plaintiff must, no doubt, make out that
the use of the defendants mark is likely to deceive, but where the similarity
between the plaintiffs and the defendants mark is so close either visually,
phonetically or otherwise and the Court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the plaintiffs
rights are violated.

Thus, it is well settled that when the question whether the mark causes
or is likely to cause deception or confusion arises before a Court, the standard
applied is not that of a vigilant consumer or a trader, but standard of an
unwary normal customer of the said product. The Court has to consider and
examine whether a consumer of the product is likely to be deceived or confused
after examining broad and dominant features of the two marks and whether there
is overall similarity that is likely to mislead a purchaser. Both the marks have
to be considered as a whole.






Question of confusion cannot be decided by keeping the two marks by each
other and noting similarities and differences between the two marks. Right in a
trade mark is with reference to trade and commerce. Question of deception and
confusion has to be examined and dealt with from commercial point of view. The
law gives protection to the proprietor of the trade mark if there is likelihood
of deception or confusion. The impression created by looking at the two marks
and the significant feature and idea behind the two marks that would be formed
in the mind of the purchaser is the relevant criteria. Similarity and affinity
in sound is also an important criteria. Ocular comparison is not decisive. Sound
test is important as customers ask for the goods by name.






Even when action for passing of under common law is initiated, the
essential features of both the marks are taken into consideration to examine
whether the alleged infringer is passing of his goods as that of the other and
causing injury to goodwill and business of the other.






14. Chewing tobacco is used by illiterate and semi literate consumers. We
have to examine the question of deception or confusion or likelihood thereof,
from the eyes of the said consumers. The word "Panchhi" in the mark ’Udta
Panchhi’ and ’Panchhi Chaap’ enjoy prominence and is the focal point of the two
marks. Colour of the packing may be different but likelihood of deception and
confusions is likely to result due to phonetic similarity and the use of the
word "Panchhi" in both the marks. The shop keepers seeling chewing tobacco in
many cases will be illiterate or semi literate. Invariably customers ask for
product of this kind by its name "Panchhi". Some consumers are also likely to
believe that the two products are from the same source Picture of the flying
bird is another essential feature of the two marks, which is common to both.
Thus, there cannot be any doubt that deception or confusion is likely to arise
in view of the similarity in the trade mark ’Udta Panchhi’ and Panchhi Chaap’.






(B) Whether injunction should be denied on the ground of delay and laches.




This was a core question on which parties had addressed arguments in
great depth and detail.






A few prima facie facts may be noticed. Partnership firm Shiva Tobacco
Company of Mr. Shiv Prasad Aggarwal, Mr. Rattan Kumar Aggarwal, Mr. Mahender
Kumar Bansal and Mr. Rajender Mohan (minor) adopted the trade mark Panchhi
Chaap’ and started marketing chewing tobacco under the said mark. They applied
for registration of the said mark, which was allowed on 13th July, 1977 with
effect from 6th July, 1974.






Mr. Krishan Bansal, father of Mr. Anand Bansal, as per the appellant
started marketing chewing tobacco under the mark ’Udta Panchhi’ on 12th March,
1982. At that time he was doing business as a sole proprietor of Bansal Tobacco
Store.






The suit for injunction was filed by the respondent on 15th May, 1997. On
this ground it was submitted by the appellant that the suit was filed after
nearly 15 years from the date the predecessor in interest of the appellant, i.e.
father of Mr. Anand Bansal, adopted the trade mark ’Udta Panchhi for selling
chewing tobacco.






However, the respondent had submitted that laches or delay was not a good
ground to deny injunction in a case of infringement. It was stated that in case
of a registered mark, question of delay and laches was not relevant as the
suit/injunction application is based upon a statutory right. Secondly, delay by
itself was not material unless there was acquiescence or consent. Lastly, the
appellant was guilty of deceitful and dishonest initial adoption or fraud and,
therefore, not withstanding allegation of acquiescence, injunction must follow.






The appellant, on the other hand, submitted that delay and laches was an
important factor, when an owner of trade mark allows and permits third parties
to market and sell their products under a similar trade mark. In these
circumstances principles of acquiescence apply. Reference was made to doctrine
of reverse confusion. It was pointed out that the sales of the appellant were
much more than the sales of the respondent.






Whether delay or laches can non−suit, a proprietor of a trade mark or
dis−entitle him from claiming interim injunction or injunction, has been subject
matter of controversy and discussion in several decided cases. These Judgments
may now be noticed.






This Court in the case of Fair Deal Corporation (P) Ltd. v. Vijay
Pharmaceuticals, 1985 (5) PTC 80 (Del), vacated the interim injunction granted
in favor of the plaintiff, after holding that by conduct the plaintiff had
allowed the defendant therein to believe that it could market its products under
the mark, which it was contended, offended the registered mark. A similar
approach has been adopted in Gillette Company and Others v. A.K. Stationery and
Ors. 2001 PTC (21) 513 (Del). In this case reference was made to earlier
decision of this Court in Shri Gopal Engineering and Chemical Works v. P.O.M.X
Laboratory AIR 1992 Delhi 302 and Peshawar Soap and Chemicals Limited v. Godrej
Soap Limited 2001 PTC (21) 1 (Del). However, while dealing with these two cases,
learned Judge noticed that in the case of Shri Gopal Engineering (supra) there
was unexplained delay coupled with concurrent use and in the case of Peshawar
Soap (supra) there was acquiescence and the rival was allowed to build up his
reputation. Acquiescence it was held gave legal legitimacy to the non−exclusive
user of the descriptive word, which if contemporaneously challenged, would have
entitled the first user to injunction. Reference was made to Judgment of the
Supreme Court in Wander Limited and Another v. Antox India Private Limited, 1991

(11) PTC 1 (SC), wherein it was held that object of interlocutory injunction was
to preserve status quo but at the same time the Court can on the basis of prima
facie case restrain the defendant from causing injury to the plaintiff. The
Court while doing so, had to weigh the need of the plaintiff and the defendant
and determine the balance of convenience. In other words, the Court had to
consider equities and prejudice which were likely to be caused by grating an
interim injunction order.

23. In the case of Standard Electricals Limited v. Rocket Electricals and
Another, (2004) 28 PTC 26, another single Judge of this Court after examining
the principles governing grant of ad interim injunction, inter alia, held that
as both the parties had been using the mark "standard" for last 20 years and
there was no constructive or visual resemblance and goods of both the parties
were advertised and prima facie had carved out market for each product and had






not caused any confusion or deception in the trade, interim injunction should
not be granted. It was held that balance of convenience was not in favor of the
plaintiff therein. However, learned Judge also noticed at delay or laches by
itself alone was not a good ground to refuse interim injunction. It was held
that common law remedy for passing off action cannot be defeated by delay or
inaction itself. In the said case, the Court also found that a number of other
parties had been using the trade mark "standard" with suffix and pre−fix in
relation to electrical, allied or cognate goods but that had not caused any
confusion and deception in the minds of the consumers/traders and, therefore,
prima facie it was held that the marks were not similar and identical so as to
cause deception.

In the case of Shri Gopal Engineering (supra), Jaspal Singh, J. invoked
the doctrine vigilantivus non−dorminentibus suppetit (If you want law to help,
you must keep awake) to deny interim relief of injunction. However, the Court
noticed decision of this Court in Hindustan Pencils Private Limited v. India
Stationery Products Co. , and held that in the said case the use of the mark was
fraudulent and on coming to know of infringement the plaintiff therein had filed
an application for cancellation of the registration of the copyright. It was
held that the defendant’s adoption of the mark in Shri Gopal case was honest and
concurrent and there was nothing to show that the presence of the defendant had
caused any prejudice.






In the case of Hindustan Pencils Private Limited and Ors. v. Universal
Trading Co. 2000 PTC (20) 561(Del) (DB), a Division Bench of this Court noticed
that both the parties had been using the same mark for nearly 20−26 years and it
was held that the goods belonging to the two parties did not belong to the same
category and, therefore, there was no question of deception or confusion. The
registration of mark in favor of one party, did not apply to the goods
manufactured and sold by the other party. The Court also came to the conclusion
that there was honest concurrent user covered by Section 12(3) of the Act.
Another ground that persuaded the Court to dismiss the appeal was that an
application for registration of trade mark was moved by the defendant therein,
to which opposition was filed but the same was abandoned by the plaintiff. The
business of the defendant thereafter had expanded and prospered and, therefore,
he would have suffered serious prejudice and hardship in case interim injunction
was granted.






In the case of Swarn Singh Trading v. Usha Industries and Anr. AIR 1986
Delhi 342 : 1986 (6) PTC 287 (Del) (DB), Division Bench of this Court held that
delay in matter of applying for injunction in some cases could be fatal.
However, while dealing with a statutory right, delay itself did not destroy the
right to apply for injunction. An exclusive right to use registered trade mark
cannot be reduced to a nullity. However, in a case of a similar mark as opposed
to the same mark, concurrent user coupled with delay could be a ground to refuse
injunction. Here again the Court carved out an exception and held where common
public could be deceived into purchasing goods belonging to the registered
proprietor, it was the duty of the Court to protect the registered mark. The
Court should not refuse injunction even if there was some delay when the mark
was the same as it would tantamount to permitting a fraud being practiced the
unwary customers.






Reliance was also placed by the appellant on the decision of the
Karnataka High Court in the case of Rangoon Chemical Works Private Limited v.
Royal Medicals 1997 (17) PTC 625. In this case the learned Judge noticed that
there was inordinate delay of at least 20 years in filing the suit, though the
products of the defendant therein had been in the market for nearly three
decades and, therefore, balance of convenience was not in favor of granting
injunction, as the party seeking injunction had remained quiet and allowed the
other side to expand and develop its business. Asking the defendant after three
decades of hard work to change and adopt a different mark would have caused a
serious hardship.






28. In the Power Control Appliances v. Sumeet Machines Private Limited , the
plea taken by the second user was that of an






implied consent or at least waiver. It was stated that the registered owner
had dis−entitled himself from grant of equitable relief by reason of unexplained
delay and suppression of facts. It was also stated that the balance of
convenience was in favor of the second user. The Supreme Court referred to
Section 30(1)(b) of the Act and held that acquiescence was one of the defenses
available. Acquiescence it was held was standing by, when another person was
evading the proprietor’s rights and was spending money on his trade mark.
Acquiescence was course of conduct inconsistent with claim for exclusive rights
on a trade mark. It implied positive act and not merely silence or want of any
action. Acquiescence was only a facet of delay and was established when the
registered owner knowingly stands by and allows the second user to build up an
important trade. Acquiescence it was held leads to an inference of grant of a
license, sufficient to create a new right in the second user. In such cases, it
was necessary to establish that the registered owner stood by and knowingly
allowed the second user to proceed and spend money in ignorance of the fact that
the registered owner had right and means to insert the said right. Distinction
was made between mere negligence and acquiescence.




In Midas Hygiene Industries (P) Limited v. Sudhir Bhatia , it was held
that in cases of infringement of trade mark, normally an injunction order must
follow and mere delay in bringing an action was not sufficient to defeat right
to injunction. Grant of injunction also follows when prima facie it was
established that adoption of mark itself dishonest. It may be relevant to state
here that in the case Midas Hygiene Industries (P) Limited, Division Bench of
this Court had held that delay and laches and dis−entitled the plaintiff to
grant of interim injunction.






This Court in the case of Hindustan Pencils Limited v. India Stationery
Products Co. and Anr. 1989 (9) PTC 61 (Del) had observed that inordinate delay
by itself was not analogous or similar to laches. Mere passage of time cannot
constitute laches but if, the alleged infringer was lulled into a false sense of
security and the alleged infringer had acted relying upon the said lapses,
question of laches can be examined and gone into as the Court always has
discretion to pass an interim injunction order. While dealing with the concept
of acquiescence, it was explained that the same was different form delay and
laches. Reference was made to the explanation given by Kerly on Trade Marks,
wherein it was observed that in a classic case of acquiescence, the proprietor
knowing his rights does nothing, that the infringer ignores them. The Proprietor
had encouraged the infringer with the result that the infringer acts upon his
mistaken belief and worsens his position. Kerly held that until and unless the
conduct of the proprietor was unconscionable, defense of acquiescence or laches
was not sufficient. Kerly, however, made a distinction between the defense based
on delay and laches and cases where a mark has become "public juric" Reference
was also made to Electrolux v. Electrix, 71 RPC 23 wherein five different pre−
requisites for establishing acquiescence in the nature of fraud were required to
be considered and satisfied before relief of injunction could be denied to the
proprietor. The Court, however, noticed that the question of acquiescence and
laches was a grey area and sometimes Courts had refused to grant interim
injunction on the said ground, though it cannot be a valid ground to deny relief
of permanent injunction. This distinction between interim injunction and
permanent injunction did not find favor with the Court.






Distinction was also made in a case of a fraudulent infringer, who has
knowingly and deliberately violated the rights of the proprietor. A person who
had deliberately infringed upon another’s mark, it was held, cannot complain and
hide behind defense of delay laches or acquiescence, as the infringement at the
very initial stage itself was fraudulent. Delay and laches by itself would not
bestow, fraud with character of legality. Reference was also made to Me CARTHY

on Trade Marks wherein it was observed that the Court must also take into
consideration necessity to protect third party interest i.e. the general public
or the buyer of the goods. It was the right of the public not to be deceived and
confused. After examining various aspects this Court held as under:

It would appear to be difficult to accept that relief of temporary
injunction should not be granted, because of the delay on the part of the
plaintiff, even though the Court feels, at that point of time, that ultimately
permanent injunction will have to be granted.






31. Even though there may be some doubt as to whether laches or
acquiescence can deny the relief of a permanent injunction, judicial opinion has
been consistent in holding that if the defendant acts fraudulently with the
knowledge that he is violating the plaintiffs rights then in that case, even if
these is an inordinate delay on the part of the plaintiff in taking action
against the defendant, the relief of injunction is not denied. The defense of
laches or inordinate delay is a defense inequity. In equity both the parties
must come to the Court with clean hands. An equitable defense can be put up by a
party who has acted fairly and honestly. A person who is guilty of violating the
law or infringing or usurping somebody else’s right cannot claim the continued
misuse of the usurped right. It was observed by Romer, J. in the matter of an
application brought by J.R. Parkington and Coy. Ltd., 63 RPC 171 at page 181
that "in my Judgment, the circumstances which attend the adoption of a trade
mark in the first instance are of considerable importance when one comes to
consider whether the use of that mark has or has not been a honest user. If the
user in its inception was tainted it would be difficult in most cases to purify
it subsequently". It was further noted by the learned Judge in that case that he
could not regard the discreditable origin of the user as cleansed by the
subsequent history. In other words, the equitable relief will be afforded only
to that party who is not guilty of a fraud and whose conduct shows that there
had been, on his part, an honest concurrent user of the mark in question. If a
party, for no apparent or a valid reason, adopts, with or without modifications,
a mark belonging to another, whether registered or not, it will be difficult for
that party to avoid an order of injunction because the Court may rightly assume
that such adoption of the mark by the party was not an honest one. The Court
would be justified in concluding that the defendant, in such an action, wanted
to cash in on the plaintiffs name and reputation and that was the sole, primary
or the real motive of the defendant adopting such a mark. Even if, in such a
case, there may be an inordinate delay on the part of the plaintiff in bringing
a suit for injunction, the application of the plaintiff for an interim
injunction cannot be dismissed on the ground that the defendant has been using
the mark for a number of years Dealing with this aspect Harry D. Nims in his
"The Law of Unfair Competition and Trade−Marks". Fourth Edition, Volume Two at
page 1282 noted as follows:






Where infringement is deliberate and willfull and the defendant acts
fraudulently with knowledge that he is violating plaintiffs rights, essential
elements of estoppel are lacking and in such a case the protection of plaintiffs
rights by injunctive relief never is properly denied. "The doctrine of estoppel
can only be invoked to promote fair dealings.




It would appear to me that where there is an honest concurrent user by
the defendant then inordinate delay or laches may defeat the claim of damages or
rendition of accounts but the relief of injunction should not be refused. This
is so because it is the, interest of the general public, which is the third
party in such cases, which has to be kept in mind. In the case of inordinate
delay of laches, as distinguished from the case of an acquiescence, the main
prejudice which may be caused to the defendant is that by reason of the
plaintiff not acting at an earlier point of time the defendant has been able to
establish his business by using the infringing mark. Inordinate delay or laches
may be there because the plaintiff may not be aware of the infringement by the
defendant or the plaintiff may consider such infringement by the defendant as

not being serious enough to hurt the plaintiffs business. Nevertheless, if the
Court comes to the conclusion that prejudice is likely to be caused to the
general public who may be misled into buying the goods manufactured by the
defendant thinking them to be the goods of the plaintiff then an injunction must
be issued. The Court may, in appropriate cases, allow some time to the
defendants to sell off their existing stock but an injunction should not be
denied.

32. Calcutta High Court in the case of Allergen Inc. v. Milment Oftho
Industries and Anr. 1999 PTC 19 examined the question of laches and delay and
held that the infringer cannot rely upon the goodwill, if any, they had built up
after receiving objection from the proprietor. Reference in this regard was made
to Judgment of the Supreme Court in the case of N.R. Dongre v. Whirlpool
Corporation .

Persistence of the infringer it was held, cannot be a factor to dent interim
relief when interest of general public required protection from deception and
confusion. In such cases delay was of no consequence. Delay it was observed
cannot defeat the proprietor’s right if the alleged infringer had expanded his
business after being put to notice.

33. This Court again in Revlon Incorporate v. Sarita Manufacturing Co. 1997

(17) PTC 394 (Del.), examined the question of delay and laches. The defendants
therein were using the trade mark Revlon openly and continuously since 1969.
They had also advertised in various media. This Court relied upon Judgment in
the case of Hindustan Pencils (supra) and Dr. Ganga Prasad Gupta and Sons v.

S.C. Gudimani AIR 1986 Delhi 329 : 1986 (6) PTC 17 (Del), and held that
injunction cannot be denied on the ground of delay. However, I may mention here
that in the said case, the considerations that weighed with the Court was that
no explanation was given by the infringer as to how they came to adopt the trade
mark Revlon. It was held that the adoption of the said trade mark was not honest
and, therefore, delay and laches were not a good ground to deny relief.
Similarly, in the case of Novartis AG v. Wanbury Limited and Anr. 2005 (31) PTC
75 [Del.] it was held where adoption of the mark itself was dishonest and
fraudulent, mere delay in bringing action for infringement for trade mark was
not a ground to deny injunction and to non−suit the proprietor if otherwise his
claim was genuine. Difference was made between mere negligence and acquiescence.
The Court also referred to the importance of honesty of user by the alleged
infringer. The second user was required to show circumstances leading to
adoption of the trade mark at the first instance.

Recently, Supreme Court again examined this issue in Ramdev Food Products
Private Limited v. Arvind Bhai Ram Bhai Patel . It was held that defense of
acquiescence could be upheld if the proprietor assents to or stands by in
relation to acts by another person. The Court felt that lapse of time, unless
accompanied by other reasons by itself, alone was not sufficient to deny grant
of interim injunction. Where the alleged infringer had built up trade with the
specific knowledge of the proprietor, the. prejudice suffered by the infringer
was a relevant factor and an additional circumstance to deny injunction.






35. In the case of Whirlpool Appliances Ltd. v. N.R. Dongre 1996 (16) PTC 415
(Del), learned single Judge and in the case of N.R. Dongre v. Whirlpool
Appliances Ltd. 1996 (16) PTC 476 (Del) (DB), the Division Bench after examining
the various provisions of the Act in depth and detail had come to the conclusion
that registration of a mark does not create a trademark. Registration exists
independently. Registration gives statutory protection to the proprietor. The
Act stipulates consequence of registration. With reference to Sections 28(3),
30(1)(b), 31 and 33 of the Act and it was held that a proprietor of a registered
mark cannot file or initiate infringement action against another registered
proprietor of an identical or similar mark. However, registered user had
exclusive right in relation to goods against third persons in respect of which
it had been registered. The Act, however, did not give protection to a






registered user against a prior user even if the prior user had not registered
his mark. A prior user was entitled to initiate passing off action even against
the registered user. The Act by itself did not destroy vested rights of the
prior user under the common law even against the registered user.




On reading the above Judgments, the following broad principles can be
culled out:






A proprietor of a registered mark is entitled to statutory rights and on
infringement of those rights, he can initiate appropriate action for injunction
and damages. The person against whom action is initiated can defend himself
against proceedings for infringement on the basis of statutory defenses
available to him under the Act, specially Section 30 as well as defenses
available to him under the common law.






38. Implied or express consent to use of a trademark under Section 30(1)(b)
of the Act is a statutory defense to a suit for infringement. Consent involves
affirmative acceptance and not merely standing by and absence of objection.
Affirmative acceptance can be in writing and can be termed as express consent.
Implied consent can be oral and by conduct. The conduct, however, must indicate
acceptance and not mere inaction or inactivity. Inaction in every case without
anything more does not lead to an inference of implied consent. However where
the plaintiff has laid by and inspite of his right by his conduct has encouraged
the defendant to alter his condition and the latter has acted upon this faith of
encouragement so held out, the plaintiff loses his claim to claim injunction.
This is clear from the decision of the Supreme Court in the case of Sumeet
Machines (supra) which has been quoted with approval in the case of Ramdev Foods
(supra). (See also P. John Chandy and Co. (P) Ltd. v. John P. Thomas ).






Where there is consent, action for infringement must fail. Consent whether
implied or express is a complete defense to action for infringement.




When infringement action is initiated on the basis of a registered mark
and prayer for interim injunction is made, Court will on the basis of common law
principles decide the application for injunction after examining:

1. Whether Prima facie case for infringement is made out.

2. Whether balance of convenience is in favor of the proprietor or the
alleged infringer and

3. Whether the proprietor is liable to suffer irreparable loss refer Wander

v. Antox (supra).

While examining question of convenience, delay in initiating action for
infringement by itself is not fatal. Delay may be fatal for claiming damages.
Difference has been made between mere delay and laches. Laches being prolonged
delay with inaction. Laches alone is not normally considered to be a ground to
reject an injunction application. There should be something in addition to and
more than laches that will tilt the balance of convenience in favor of a third
party viz a registered proprietor of a mark. Court will in these circumstances
and in addition to laches examine whether the said delay has caused prejudice to
the third party. When a proprietor allows his good will to be used by a third
party and allows him to grow and expand and thereby makes the third party
believe that he has no objection to use of the mark, then the third party who
has built up his sales will suffer prejudice, if he is suddenly asked to stop.
However, on the question of prejudice, the onus is on the defendant.






While eyimining the question of delay, Courts go into the question
whether delay is inordinate and whether there is any excuse or reason for the
delay. If the delay is inordinate from the date of knowledge and no ground,
reason or excuse for the delay is forthcoming, coupled with the prejudice which

is likely, interim or permanent injunction can be refused. While examining the
question of excuse, the Court will examine the conduct of the proprietor, when
and how the third party adopted the mark subject matter of action and after the
proprietor came to know about the said adoption, what steps and action he had
taken. Failure to immediately file a suit for injunction can always be explained
by the proprietor. Registration of a similar mark in favor of the second user or
separate proceedings between the parties relating to the mark or it’s
registration can be basis or a ground and excuse for the delay.

42 While examining the question of balance of convenience, the Courts have
also held that where initial adoption itself is fraudulent, subsequent use or
even prejudice does not tilt the balance of convenience in favor of a third
party. If the initial adoption itself is dishonest, injunction must follow.
Fraud or illegal adoption does not become valid and legal. Honesty in adoption
must, therefore, be established and proved by the defendant.

While examining the question of balance of convenience, Court is required
to take into consideration public interest i.e. interest of the buyers and the
consumers. If public interest is affected, delay is of no consequence.






In view of the entire case law discussed above, the following principles
of law emerge:

(i) Mere delay is not sufficient to defeat grant of injunction in cases of
infringement of trade mark. Delay is not a bar to enforce and claim a legal
right.






(ii) Consent in addition to other statutory defenses is a complete defense
to action for infringement.

(iii) Consent may be expressed or implied but inaction in every case
without anything more does not lead to an inference of implied consent. Implied
consent means conduct inconsistent with claim of exclusive right over the trade
mark, trade name etc. Implied consent implies standing by or allowing the
defendant to invade rights and by conduct encouraging the defendant to expend
money, expand business, alter their condition etc. in contravention of the
rights of the proprietor. In the case of Power Control Appliances v. Sumeet
Machines (P) Limited (supra), Supreme Court has held that acquiescence implies
positive act and not merely silence or inaction as is involved in laches.

(iv) defenses under the common law are also available to the defendant.

Prior user is a valid defense.

(v) Balance of convenience between the parties should be taken into
consideration by the Court, while deciding the question of grant of injunction.
Unexplained laches accompanied by prejudice and/or other reasons can be a ground
to deny injunction. However, prejudice in such cases does not mean mere
simplictor delay. Onus in this regard is on the defendant.






(vi) Where initial adoption by the defendant itself is vitiated by fraud
and/or is dishonest, delay is no a valid ground to allow misuse. If user is at
the inception is tainted by fraud and dishonesty, continuous use does not bestow
legality.

(vii) Interest of general public who are the purchasers and buyers has to
be protected. In case to protect general public/consumers, injunction order is
required to be passed, delay by itself is not un−surpassable obstacle.

45. Reading of the above paragraphs and the Judgments referred to show that
certain broad parameters have been formulated and applied by the Courts to
decide whether in a case for infringement, interim injunction should be granted.

However, at the same time facts and circumstances of each case have to be
carefully scrutinised, whether there is honest and concurrent user, implied or
express consent, fraud or tainted initial user, public interest, etc., to
determine and decide whether interim injunction should be granted.

C. Honest and concurrent user as defense to action for infringement.

46. On the basis of Section 12(3) of the Act, the appellant had submitted
that no interim injunction order should be passed in favor of the respondent.
Section 12 of the Act reads as under:

12. Prohibition of registration of identical or deceptively similar trade
marks. − (1) Save as provided in Sub−section (3) no trade mark shall be
registered in respect of any goods or description of goods which is identical
with or deceptively similar to a trade mark which is already registered in the
name of a different proprietor in respect of the same goods or description of
goods.

(2) Where separate applications are made by different persons to be
registered as proprietors respectively of trade marks which are identical or
nearly resemble each other in respect of the same goods or description of goods,
the Registrar may defer the acceptance of the application or applications
bearing a later date until after the determination of the proceedings in respect
of the earlier application, and may dispose of such application or applications
in the light of the evidence tendered in relation to earlier application and the
oppositions thereto, if any.






(3) In case of honest concurrent use or of other special circumstances
which, in the opinion of the Registrar, make it proper so to do, he may permit
the registration by more than one proprietor of trade marks which are identical
or nearly resemble each other (whether any such trade mark is already registered
or not) in respect of the same goods or description of goods subject to such
conditions and limitations, if any as the Registrar may think fit to impose.

47. Sub−section (1) of the said Section states that no trade mark in respect
of goods or description of the goods identical or deceptively similar to a trade
mark which is already registered in the name of a different proprietor shall be
again registered in name of a third person. Sub−section (3) is an exception to
the general rule and states that in cases of honest and concurrent use
registration of same trade mark can be made in favor of more than one
proprietor, subject to conditions and limitations, if any, that the Registrar
may impose. It is well settled that the power of registration under Sub−section

(3) of Section 12 is a discretionary power. It is also well settled that
requirements of Sub−section (3) of Section 12 is honest as well as concurrent
use by a third person other than the registered proprietor. The onus is on the
third person to show and establish that the conditions of said Sub−section are
satisfied. The Registrar while deciding a plea under Section 12(3) of the Act
has to take into account the following factors:






(a) The honesty of adoption and use by the third person.

(b) The concurrent user with reference to duration, area and volume of
sales of the third person.






(c) Public convenience and whether public is liable to be confused due to
resemblance of the two marks, whether there have been instances of confusion.






(d) Balance of convenience and/or inconvenience to the public if the mark
of the third party is registered.

However, it must be remembered that Section 12(3) relates to registration of
trade marks by a third person and is exception to the general rule of

registration. In the present case the respondent has benefit of registration of
various trade marks in his favor and this Court is not deciding or adjudicating
whether or not the Registrar should have granted registration in favor of the
appellant by exercising its discretionary power under Section 12(3) of the Act.

It may also be stated here that the appellant had filed objections under
the various provisions of the Act for removal of and expunging trade mark
containing the words "Panchhi Chaap". These objections have been dismissed by
the Intellectual Property Appellate Court vide order dated 16th November, 2006.
Learned tribunal has held that the registration is valid and statutory
advantages and presumptions under Section 32 of the Act have accrued in favor of
the respondent. The other grounds on which challenge to registration was made
were also dismissed.






Section 28 of the Act confers certain rights on a proprietor of the
registered trade mark like the respondent. The said proprietor has exclusive
right to use the trade mark in relation to the goods in respect of which trade
mark is registered and obtain relief in respect of infringement. Section 29
provides for consequences on infringement of the trade mark. Section 30 of the
Act is a non−obstante clause and stipulates that the acts which do not
constitute infringement of a right to use the registered trade mark. Section
30(1)(b) of the Act provides that expressed or implied consent to use a trade
mark by a third person does not amount to infringement. Section 30 does not use
the expression ’honest and concurrent user. However, Courts have allowed
defendants to set up defense on the basis of honest and concurrent user.






In the present matter, the appellant had made an application for
registration of trade mark "Udta Panchhi" through it’s predecessor in interest
Mr. Krishan Bansal, then trading as sole proprietor of "Bansal Tobacco Store".
This application was opposed by the respondent. The Registrar of trade marks
vide order dated 17th November, 1973 allowed the application of the appellant
relying upon Section 12(3) of the Act and granted registration of the mark "Udta
Panchhi" in favor of the appellant. The respondent thereafter filed a petition
under Article 227 of the Constitution of India before the Delhi High Court and
the operation of the order passed by the Registrar was stayed. This petition
under Article 227 of the Constitution of India was disposed of on 5th March,
2003 with the appellant making a statement that he was no longer interested in
pursuing his application for registration and he shall be at liberty to file an
appropriate application before the Registrar after making changes in design of
the trade mark. It was stated that the appellant had made changes in design of
the trade mark of the label, that he wanted to adopt and in respect of which he
would be filing an appropriate application. In view of the statement, the
petition under Article 227 of the Constitution of India was disposed of as
infructuous with the clarification that the said petition had not been disposed
of on merits and nothing mentioned in the impugned order passed by the Registrar
would go to the detriment of the respondent and to the benefit of the appellant
herein.






Honesty of adoption at the initial stage itself has to be established to
take benefit of concurrent registration under Section 12(3) of the Act. If the
user at the inception is dishonest, subsequent concurrent user will not purify
the dishonest intention. Commercial honesty at the initial stage of adoption is
required. What is protected is innocent use of a mark by two or more persons
unknown to each other and unaware of the mark used by the other. Adoption must
be honest, bona fide and without any knowledge on the part of the adopter. The
onus and burden is on the defendant to show that the user and adoption at the
initial stage was honest.






53. It is not the case of the appellant that the mark "Panchhi" was being
simultaneously and extensively used by number of parties. The respondent had
adopted and started using the trade mark Panchhi Chaap in 1973. From 1974 till
1989, they procured five separate registration under the Act. The word "Panchhi"






is not common to tobacco and is not a generic or descriptive word relating to
chewing tobacco.




The appellant claims to have adopted the mark "Udta Panchhi" in 1982 and
had moved an application for registration in 1990. Admittedly, therefore, the
respondent is a prior user. As per figures placed on record by the respondent
between the period 1973−74 he had sales under the trade mark/label "Panchhi
Chaap" varying between Rs. 1,43,950 to Rs. 5,71,690 per annum. The sale figures
are substantial keeping in view the purchasing power and value of Rupee during
this period. Prima facie, it appears that the appellant was aware and had
knowledge about the trade mark "Panchhi Chaap", when he adopted the trade mark
"Udta Panchhi" in 1982 in respect of chewing tobacco manufactured by him.
Admittedly, in the initial years from 1982 till 31st March, 1985, the sales of
the appellant’s predecessor varied between Rs. 2,452 to Rs. 24,735 only. Pricing
of the products is also virtually same and the users are common. No doubt get−
up, colours etc. of the wrapper of the appellant was/is different from that of
the respondent but the word "panchhi" is common and the word "panchhi" with
drawing of a flying bird is the most distinct and essential feature in both the
wrappers. Chewing tobacco as already stated above is used by semi educated and
illiterate persons in mostly cities, small towns and villages. Being persons
belonging to the same trade and dealing with same goods, it is difficult to
believe at this stage that the appellant was not aware of the mark "Panchhi" at
the time of initial adoption and use in 1982. In these circumstances, prima
facie it is not possible to hold that the initial adoption by the appellant was
honest. Prima facie it is difficult to believe that the appellant or his
predecessor in interest was not aware that the respondent was marketing and
selling chewing tobacco under the trade mark "Panchhi Chaap". However, it is
clarified that this finding is subject to evidence which will be adduced by the
parties. Observations made above are not binding and it will be for the trial
Court to’ adjudicate and decide this aspect on the basis of evidence. (The
appellant has filed a chart giving details of its turnover duly certified by a
chartered accountant. This chart was not filed before the trial Court and shall
have to be proved by evidence.) Principle of Reverse Confusion.






It was submitted on behalf of the appellant that the principle of reverse
confusion is applicable to the facts of the present case and the said doctrine
has been accepted in ALLIANZ, 2002 (24) PTC 177 (Del). The doctrine of reverse
confusion comes into operation when a third person’s goods or service enjoys a
better reputation in the market than those of the registered proprietor and the
situation is reverse in the sense that customers are likely to approach the
registered proprietor’s goods/service thinking that they are of the third
person. It is the reverse of the traditional confusion. I do not think this
situation exists in the present case. The Registered user does not want to ride
on the goodwill and mark of the subsequent user. Merely because sales of the
appellant are higher in volume or monetary terms, it does not mean that doctrine
of reverse confusion is applicable. (D) Whether the suit filed by the plaintiff
is for infringement on basis of 1974 registration is maintainable.






It is admitted by the appellant that the respondent has as many as five
separate registrations under the Act. It is, however, stated that all
registrations except Registration No. 297415 are subsequent to appellant’s
established user since 1982. Relying upon Section 33 of the Act and Section 34
of the Trade Marks Act, 1999, it was submitted that no case for infringement is
made out against the appellant except for Registration No. 297415. With regard
to the said registration it was submitted that distinctive label as a whole was
registered and the said registration would not give any exclusive right to the
respondent in respect of particular word or name mentioned in the label.
Reliance was placed upon Registrar of Companies v. Ashok Chandra . It was
further submitted that though in some cases test of "essential features" has
been prescribed but those decisions relate to cases in which words have been
registered and not the entire label. Reliance was also placed upon Section 17 of
the Trade Marks Act, 1999.






57. This question need not detain me in view of the recent decision of the
Supreme Court in the case of Ramdev Food Products (supra). The Supreme Court
referred to Sections 15 and 17 of the Act and held that deception could be in
respect of any prominent feature of the registered trade mark. While referring
to Ashok Chandra’s case (supra), Supreme Court noticed that the word ’shree’ was
not regarded as an important feature of the device so as to give exclusive
statutory right to the proprietor. It was also held that the said case was
decided on its own facts. Reading of the decision of the Ashok Chandra’s case
(supra) also shows that the issue involved was in respect of registration of
trade mark and the Registrar as a matter of practice had in several cases
refused to register "shree" as a trade mark or a disclaimer was enforced if it
was a part of the trade mark. The Court held that it would be invidious
discrimination in case the word "shree" used as a part of the trade mark label
was held to be exclusive property of the registered proprietor. Statutory right
it was held, did not exist in the word "shree". Section 13 of the Trade Marks
Act, 1940 was referred to. Reference was made to tendency on the part of some
proprietors to expand operation of their trade mark beyond legitimate four
corners. The Registrar, as a matter of fact, found that the word "shree" was not
adapted to distinguish the goods of the proprietor and, therefore, registration
without disclaimer would cause embarrassment to other traders. Contention of the
appellant therefore has to be rejected. The respondent is entitled to sue for
infringement.






(E) Whether the respondent is a registered owner of the registered mark:




On behalf of the appellant it was argued that Shiva Tobacco Company in
whose favor the trademark was registered in the year 1974 is not the same Shiva
Tobacco Company which has filed the suit for damages and injunction against the
appellant. It was stated that Shiva Tobacco Company in 1973−74 had four partners
including late Mr. Mahender Bansal and late Mr. Shiv Prasad Aggarwal had expired
in 1980 and 1982 respectively. Reference was made to Section 42 of the
Partnership Act and it was stated that on dissolution of a firm, the partners
are not entitled to appropriate it’s property including goodwill. It was claimed
that the partnership firm−Shiva Tobacco Company stood dissolved in 1982 and
thereafter the partners were entitled to the value of their share in the assets
and the registration under the Act in favor of the said firm ceased to exist.






59. It is difficult to accept the said contention of the appellant. It is
admitted by the appellant that Shiva Tobacco Company was a registered proprietor
of the label containing the word "Panchhi Chaap". There is a distinction between
reconstitution of a partnership firm and dissolution Initially, the respondent−
partnership firm consisted of the father and his three sons. Father and one son
died but two other sons have continued as partners of the firm Shiva Tobacco
Company without any objection and hindrance from any legal representative of the
partners who have expired. There is nothing on record to show that the
partnership firm−Shiva Tobacco Company consisting of two brothers is not the
registered owner of the mark containing the word "Panchhi Chhap" registered in
1974. Intellectual Property Appellate Board in its order dated 16th November,
2006 has accepted the plea of the respondent in this regard. Prima facie on the
basis of documents and pleading of the parties it cannot be said that the
respondent−Shiva Tobacco Company is not the owner of the registered trademark.






(F) Merits and prima facie facts




I have already referred to my prima facie finding on the question of
initial adoption by the appellant of the mark "Panchhi" and held that the same
is not honest. With these findings, it cannot be said that in equity the
respondent is not entitled to any relief of injunction.






61. Matter has also to be examined from the question of balance of
convenience. It was submitted that there was 23 years delay on the part of the






respondent to ask for injunction including 10 years during which the matter had
remained pending in Courts. It was submitted that sales of the appellant under
the mark "udta panchhi" exceed the sales by the respondent under the mark
"panchhi chaap". It was submitted that in view of the exceptional circumstances
and delay, it would be unjust and unfair to grant interim injunction against the
appellant. Reference was made to substantial amounts that have been spent by the
appellant on advertisements and publicity.




In order to decide this question, with reference to the legal position
explained above, some facts may be noticed. It is admitted that the respondent
had started marketing chewing tobacco from 1973 in the name and style of
"panchhi chhap". Its label containing the word "panchhi" with the image of a
flying bird were registered in 1974. The sale figures of the respondent from
1973−1982 show that the sales had varied between Rs. 1,43,950 to Rs. 5,21,645
for the year 1982−83.






The sales of the respondent as per the figures given by him was Rs.
24,735 and Rs. 2,452 in the year 1982−1983 and 1983−1984 and Rs. 11,021 in
1984−85. The sales of the appellant were in the range of Rs. 1,83,000 to Rs.
2,64,000 between the period 1985−86 and 1987−88. Thereafter, there was a jump in
the year 1988−89, when the sales reached figure of Rs. 5,22,000, with further
increase to Rs. 8,80,000 in the year 1989−90. Jump was again seen in the year
1991−92, when the appellant claims he had turn over of more than Rs. 33.50 lacs.
In the year 1992−93, the sales reached almost Rs. 59 lacs. In the year 1993−1994
sales were more than Rs. 74.59 lacs. As per the appellant his total sale is more
than Rs. 7 crores. In comparison sales of the respondent under the mark "panchhi
chhap" were about Rs. 1 crore in the year 1995−96.






The above figures show that from 1989 onwards sales of the appellant had
increased and picked up. In the year 1990, the appellant had applied for
registration of the label including the word "udta panchhi" under the Act. This
was objected to by the respondent. The objections remained pending for some time
but in 1993, the objection was overruled and registration was granted in favor
of the appellant. The respondent challenged the said direction by filing Civil
Miscellaneous Main Petition in the Delhi High Court against the registration
granted in favor of the appellant and operation of the order passed by the
Registrar was stayed. The explanation given by the respondent is tb at from 1990
onwards parties have been in litigation relating to the mark "panchhi". The
appellant had succeeded in getting registration in his favor in 1993 by relying
upon Section 12(3) of the Act. In these circumstances the respondent could not
have filed a suit for infringement against a registered owner. Therefore, there
is no question of acquiescence on the part of the respondent. The respondent was
not keeping quiet but contesting the claim of the appellant. (I) am not going
into the question whether acquiescence should be positive). In the present case,
the respondent had protested and objected to registration of the trade mark
including the name "panchhi" with the flying bird. In 1993 the matter was
decided in favor of the appellant, though operation of the order was stayed by
the High Court by an interim order. However, the respondent has explained that
an getting injunction order from a Court on the basis of infringement of trade
mark in these circumstances was impossible. It was only on 5th September, 2003
that the Civil Miscellaneous Main No. 474/1993 was disposed of with the
appellant withdrawing his request for registration of the mark. It cannot be
said that the respondent had remained quiet and silent and allowed the appellant
to knowingly use and expend money before filing the suit in 1997. The appellant
was fully conscious of the objection raised by the respondent to the use of the
word "Panchhi" with the flying bird. The appellant took risk in spite of the
objection raised by the respondent. It is unfortunate that adjudication takes
time but delay in decisions by itself cannot cause prejudice to the statutory
rights of the parties. The explanation given by the respondent at least after
1990 prima facie does not disclose acquiescence or laches coupled with estoppel.
If the appellant continued with the mark "panchhi" with the flying bird, it was
at his own risk. The appellant was fully aware of the consequences.






As far as period 1982−90 is concerned, the matter requires trial and
evidence. There is no evidence or material on record to show that during this
time the respondent had knowingly kept quiet. Till 1985−86, turn over of the
appellant was small and till 1989 there was a marginal increase in sales and
only a small amount was spent on advertisement. Another important fact, which
may be noticed is that the first newspaper advertisement placed on record with
regard to use of the mark "udta panchhi" relates to October, 1992. For the
period prior to 1992, no advertisement has been placed on record. Reference may
also be made to discussion under the heading "whether respondent is guilty of
fraud and concealment of facts".






66. However, this is merely a prima facie view and the question whether the
respondent had knowingly kept quiet till 1990 and the legal consequences thereof
will have to be decided in the light of evidence led by the parties in the
trial.






(F) Whether respondent is guilty of fraud and concealment of facts.




The appellant has highlighted that the respondent in the plaint has
failed to mention the proceedings between them and Bansal Tobacco Store, orders
passed by the Registrar of Trademarks and also made false statements about their
total expenditure on advertisements. It was also argued that the respondent has
given wrong date, March, 1997, relating to cause of action as the respondent was
aware that the mark "Udta Panchhi" was being used since 1990. Reliance was
placed upon several decisions in which it has been held that a person who
conceals or makes misrepresentation in the plaint, is not entitled to
discretionary relief of injunction.






There cannot be any quarrel with the above proposition. However, the
question is whether the respondent is guilty of concealment of facts and/or has
made any misrepresentation. The respondent has submitted that he was not aware
of any association between Ansul Industries and Bansal Tobacco Store and,
therefore, the facts relating to claim of Bansal Tobacco Store and the
proceeding between the two were not mentioned in the plaint. It was also stated
that change in name from Bansali Tobacco Store to Ansul Industries was not
informed to the Registrar of Trademarks.






Prima facie, I find merit in the submission made by the respondent. One
of the reasons for this prima facie finding is that the respondent has not
gained anything by concealling facts relating to claim made by Bansal Tobacco
Store in respect of the label "Udta Panchhi". Concealing these facts would not
have served any purpose as the history of litigation and claim of Bansal Tobacco
Store was equally well−known and in the knowledge of Bansal Tobacco Store and
Mr. Anand Bansal. On the basis of the plaint, ex−parte injunction Order dated
15th May, 1997 was passed in favor of the respondent and against the appellant
herein. Thereafter, written statement and application under Order XXXIX, Rule 4
of the Code was filed by the appellant pointing out that Ansul Industries was
successor of Bansal Tobacco Store. The respondent on 23rd May, 1997 fairly
conceded before the Trial Court that the ex−parte injunction Order may be
suspended and the matter may be fixed for arguments on merits. Thus, the
respondent acted fairly after the relevant facts relating to succession of
Bansal Tobacco Store by Ansul Industries were disclosed and came to the
knowledge of the respondent. The application for interim injunction thereafter
remained pending from 1997 till it was decided vide Order dated 30th July, 2005,
after taking into consideration respective stand of the parties.






70. Though it is claimed by the appellant that Mr. Anand Bansal changed the
name of his sole proprietorship concern from M/s Bansal Tobacco Store to M/s
Ansul Industries in or about 1994, there is no evidence and material to show
that this fact was communicated and informed to the Registrar or the respondent.
Documents filed by the appellant show that Mr. Anand Bansal was using the name






Bansal Tobacco Store as well as Ansul Industries in 1994. As per documents filed
by the appellant, Bill No. 12 dated 8th May, 1994 was issued by Ansul Industries
in favor of the Bansal Tobacco Store. There are letters written in the years
1991−94 on the letter head of Ansul Industries relating to account of Bansal
Tobacco Store. The registration with the Central Excise in the name of Ansul
Industries was done in 1995 as per certificate dated 20th March, 1995.
Similarly, the certificate issued by Central Excise in favor of Anand Kumar
Bansal, proprietor Bansal Tobacco Store is dated 1992. Prima facie therefore, it
appears that the respondent is not guilty of deliberate concealment of facts and
mis−statement.




In view of the above findings the present Appeal is dismissed. However,
the appellant is granted three months time to comply with the injunction Order
passed by the learned Trial Court and dispose of its pending stock/wrappers,
etc.






It is also clarified that the observations made in this Order are
tentative and based on prima facie view taken by this Court. Learned Trial Court
will dispose of the Suit on the basis of evidence adduced by the parties and
without being influenced by any of the observations on facts made in this Order.






In the facts and circumstances of the case, there will be no order as to
costs.