Registered trademark owners can seek injunctions against unauthorized use by others despite claims of prior use unless evidence of assignment and continuous goodwill is sufficiently established.

JUDGMENT :

ARIF S. DOCTOR, J.

1. The Applicant/Plaintiff has filed the present Suit, inter alia, seeking to restrain the Defendants from infringing the Plaintiff’s name and registered trade mark "Siyaram" by using the name or mark “Siyaram” or any other deceptively similar name or mark, whether as part of the corporate or trading name of Defendant No. 1 or in relation to textile piece goods, ready-made garments, and other allied goods or services. The Plaintiff also seeks to restrain the Defendants from passing off the business and products of Defendant No. 1 as the Plaintiff has additionally sought damages and other consequential relief.

The facts in brief :

2. The Plaintiff was incorporated as Siyaram Silk Mills Pvt. Ltd. on 29th June 1978 under the provisions of the Companies Act 1956 and was converted into a public limited company in the year 1980.

3. It is the Plaintiff’s case that since the year 1977, that is, even prior to its incorporation, the promoters of the Plaintiff were engaged in the textile trade under the trade mark “Siyaram” and that the Plaintiff and its promoters have, since then, openly, continuously, and extensively used the trade mark as well as the trading and corporate name “Siyaram” in relation to textile goods, including suiting and shirting. The Plaintiff has since then secured the following registrations in respect of the trade mark “Siyaram” the earliest of which dates back to the year 1984.

4. The Plaint also, inter alia, sets out that the Plaintiff is widely known across India by its name and trade mark "Siyaram" and is among the largest producers of blended suiting and shirting fabrics in the country, annually manufacturing over 30 million metres of fabric, all of which is marketed and sold under the name and trade mark "Siyaram". Over the years, the Plaintiff has actively promoted its products and business using the name "Siyaram" through various advertising methods like newspapers, magazines, TV and other media. The Plaint also sets out that the Plaintiff has organised several high-profile fashion events and contests under the said mark, including ‘Siyaram’s Star Miss India’ which have garnered wide public recognition. The substantial and sustained expenditure incurred by the Plaintiff on publicity and promotion, together with the Plaintiff’s extensive sales, establishes the Plaintiff’s immense goodwill and reputation.

5. It is the Plaintiff’s case that in or about June 2007, the Plaintiff learnt that Defendant No. 1 had been incorporated under the name and style “Stanford Siyaram Fashion Private Limited” and that Defendant No. 1 was using the trade mark “Apricott – a Product of Stanford Siyaram Fashions Pvt. Ltd.” in respect of the business and manufacturing of textiles and allied products.

6. The Plaintiff, therefore, on 26th June 2007, sent the Defendants a cease and desist notice, calling upon the Defendants to stop using the name and mark "Siyaram" in any manner whatsoever. The Defendants have, however, denied receipt of this notice and thus not replied.

7. Hence, the Plaintiff filed the present Suit.

Submissions on behalf of Applicant/Plaintiff:

8. Mr. Khandekar, the Learned Counsel appearing on behalf of the Plaintiff at the outset pointed out that the Defendants had opposed the Notice of Motion by raising the following defences: (i) that the Defendants had been using "Siyaram" since 1992 by virtue of the fact that the father of Defendant Nos. 2 and 3 was doing business under the name “Siyaram Fashion Store”; (ii) that the name and mar