IMPORTANT POINT
The court emphasized the importance of disclosing material facts and prior use of trademarks in obtaining injunction orders.

JUDGMENT :

Krishna Rao, J.

1. The defendant has filed the present application being G.A No. 4 of 2022 in C.S No. 211 of 2012 praying for vacating the injunction order passed by this Court dated 26.06.2012 and 19.07.2012. The plaintiffs have filed a suit being C.S No. 211 of 2012 against the defendant for permanent injunction restraining the defendants, its men, assigns, servants, agents, distributors, representatives or any of them from any manner infringing and passing off the plaintiff’s registered label of “MAZDOOR BIDI” and ancillary prayers.

2. The plaintiffs have also filed an application in the said suit for grant of injunction against the defendant and on 26.06.2012, this Court has passed an ad-interim injunction till 04.07.2012. In the said order, this Court specified that the limited order of injunction is to enable this Court to hear the defendant and fixed the matter on 02.07.2012. On 02.07.2012, this Court extended the returnable date till 09.07.2012 and ad-interim order was extended till 13.07.2012 or until further order whichever is earlier. On 13.07.2012, the ad-interim order was extended till 23.07.2012 or until further order whichever is earlier.

3. On 17.07.2012, the plaintiff has filed affidavit-of-service and this Court being satisfied with the service upon the defendant but none appeared on behalf of the defendant had confirmed the ad-interim order on 19.07.2012.

4. Mr. Manish Biala, Learned Advocate representing the defendant submitted that the defendant came to know about the proceedings of C.S. No. 211 of 2012 only in the month of February, 2019 when objection was raised in the defendant’s trade mark application No. 4001083 filed before the Trade Marks Registry. Thereafter, the defendant had contacted the Learned Advocate at Kolkata to enquire about the status of the proceeding and the defendant came to know that the plaintiffs have not taken any steps for issuance of writ of summons for the last seven years after filing of the suit.

5. The defendant has filed an application being G.A No. 2638 of 2019 (new G.A 3 of 2019) in C.S No. 211 of 2012 for dismissal of the suit for not taking steps for issuance of writ of summons. The plaintiffs have also filed an application being G.A No. 864 of 2019 (New G.A No. 2 of 2019) seeking extension of time to lodge writ of summons. This Court by an order dated 05.02.2020 has disposed of both the applications by allowing the plaintiffs to lodge the writ of summons and to proceed with the suit, subject to payment of cost of Rs. 50,000/-which is to be paid to the West Bengal Legal Aid Services, Kolkata.

6. Mr. Manish Biala submitted that the plaintiffs have intentionally concealed and suppressed material facts and have made false and misleading statement in the injunction application and played fraud upon the Court. He submits that the trade mark of the plaintiff “MAZDOOR BIDI” was granted to the plaintiff with the condition that “Registration of this trade mark shall give no right the exclusive use of descriptive matters.” He submits that in trade mark application No. 862656 of the plaintiff it is mentioned that “Biri included in Class 34, for sale in the State of West Bengal”.

7. Mr. Biala submitted that plaintiffs were granted registration of their trade mark ‘BIDI’ to be sold only in the State of West Bengal. He submits that plaintiffs were not granted any right in the descriptive matters within their label and the plaintiffs have a right only in the label as a whole, and not in part of the said label. He submits that the plaintiff has no right to seek injunction against any person including the defendant outside the State of West Bengal.

8. Mr. Biala submitted that the plaintiff has no right to obstruct the defendant from using his trademark in different area i.e. in Uttar Pradesh and Uttarakhand. He submits that the plaintiffs have made a false claim that the defendant’s product being offered for sale in Kolkata but the defendant sells its goods only in Uttar Pradesh and U