The appellant's prior use of the trade mark 'Shriphal' and the effect of non-renewal of trade mark registration were central to the court's decision.

JUDGMENT

1. The appellant - original plaintiff has preferred the present appeal against the order dtd. 18/06/2021 passed by the learned Ad-hoc District Judge-2, Nagpur, in application below Exh.5 under the provisions of Order 39, Rule 1 and 2 of the Code of Civil Procedure (for short, "the Code") in Trade Mark Civil Suit No.5/2019, whereby the learned Judge was pleased to reject the application.

Facts

2. The appellant - plaintiff is a registered Partnership Firm and is carrying out business of marking and exporting of all kinds of goods like Agarbati, Scent, Perfume, Camphor, Dhoop, etc. under the provisions of Trade Marks Act including trade mark "Zed Black". The appellant started using trade mark "Shriphal" for the products in respect of Agarbati, Scent, Perfume, Camphor, Dhoop, etc. falling in Class-3 since 1992. The Registered trade mark is renewed from time to time and the same has become conclusive. The appellant has also given status of all other trade marks in Para No.14 of the plaint.

3. According to the appellant - plaintiff, the defendant was purchasing the said goods from him with various Marks including "Shriphal" since 1994. In the month of September, 2014, the appellant - plaintiff came to know about the illegal activities of the defendant to the effect that the defendant has started to use impugned Marks in its impugned goods and therefore, on 03/09/2014, appellant - plaintiff served a cease and desist notice upon the respondent - defendant and asked him to stop illegal activities with impugned Marks "Zed Black" and "Shriphal". On 16/09/2014, the respondent - defendant replied the said notice and admitted the contents of the cease and desist notice. He also acknowledged the legal right of the appellant and undertook not to use any Mark "Shriphal". This being so, the appellant continued to supply the said goods to the respondent with various Marks including Mark with "Shriphal". It may be noted here that the respondent denied the claim of the appellant in respect of Mark "Shriphal" on the ground that it being public juris but without any claim of user by him. However, respondent started to object / oppose the trade marks registration application of the appellant - plaintiff.

4. According to the appellant on 21/09/2021, this Court was pleased to issue various directions by extending the period of injunction for a period of six months from the date of passing of the order. This Court was further pleased to grant the liberty to amend the pleadings to the appellant and so also to the respondent. They were also given liberty to file additional documents, if any.

5. The appellant - plaintiff alleges that not only the respondent - defendant amended the written statement but also added new pleadings specifically under the head of "Additional Pleadings" without taking permission of the Court as per the amended provisions of Order 8 Rule 9 of the Code. In additional pleadings, the respondent pleaded for the first time that ; i] "Aastha Sales" is belonging to the father of the appellant and produced new bills issued by the respondent to "Aastha Sales" between 2011 to 2019 and thus, the respondent pleaded the theory of acquiescence.

6. According to the appellant, appellant is not only a prior user of the Mark "Shriphal" but also has earned immense reputation and good-will in India as well as Abroad. There is infringement and passing of the impugned goods of the appellant at the hands of the respondent and therefore, application for temporary injunction against the defendant.

7. The defendant resisted the suit and contends that he is using the trade mark "Shriphal" prior to 2011, particularly when most of the registration of the plaintiff had expired. The defendant is a registered Proprietor of the said trade mark "Shriphal" at the time of filing of suit under Trade Mark Certificate No.21465561, which is renewed and is va