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2003 Supreme(Del) 48
High Court Of Delhi
J.K.GOE - Appellant
Versus
GROW ON MARKETING LIMITED - Respondent
REGULAR FIRST APPEAL 354 of 2000
Decided On : 01/20/2003
CHETAN SHARMA, DUSHYANT SVARUP, L.G.SUJATHA, R.K.AGARWAL, T.N.TRIPATHI
Headnote:Trade mark - Appeal — Suit for infringement and passing off — Summary dismissal by trial court while considering interim stay matter — Appellants trade mark "Energic-31" and word "Energic" claimed to be a coined one and its long user disputed by respondents — Trial court dismissing the suit holding that the word not coined but was public Jurisdiction and appellant concealed material facts as the factum of dismissal of application for registration not concealed — Court not allowing parties to establish their rival claims by leading evidence — Procedure established by law not followed — Though application for registration of trade mark dismissed by Registrar, that would not lead to dismissal of suit in view of long user of impugned mark — Suit restored to trial court to be disposed of afresh.
Held :
Trial Court had dismissed the suit on finding that appellant had concealed the material facts about the dismissal of his applications for registration of the trade mark and had misused the judicial process by filing the suit which was not maintainable as word Energic was not a coined word and was publici juris.
Appellant had claimed to have coined and adopted "Energic-31" and had based his proprietorship on its long user which was of course disputed and refuted by Respondents. That being so the court had no option but to raise the issues in the suit and require the parties to establish their rival claims. But the court had, on the contrary, adopted a novel method of dismissing the Appellants suit after giving a go-by to the procedure established by law and taking away the right of the parties to lead evidence and to prove their respective claims in the process. It had on its own assumed that Energic-31 was not a coined word and was a publici Jurisdiction which finding could have been returned only after affording an opportunity and a chance to appellant to lead evidence and prove to the contrary.
Appellants suit was also dismissed for concealment of facts attributable to his failure to disclose that his two applications for registration of trade mark were dismissed by the Registrar. This, may have constituted a circumstance to refuse grant of interim relief to Appellant but could not have led to dismissal of his suit. Because even if Appellants applications for registration of the Mark were rejected, it was open to him to claim proprietorship on the basis of a long user and to maintain his infringement and passing of action.
Therefore all told, Appellants suit was given a short shrift in a summary disposal in disregard of the procedure established by law and in violation of the rights of the parties to establish their rival claims. The impugned judgment thereforee becomes unsustainable and is set aside to allow this appeal is allowed. Suit No. 304/99 shall revive and be dealt with and disposed of under law afresh. Status quo as on date shall be maintained in respect of claimed trade mark Energic-31 for one month to enable the trial court to consider appellants plea for interim injunction.
( 1 ) TRADE mark `energic-31 is at the root of controversy. Appellant s suit No. 304/99 for infringement and passing off of this trade mark has been dismissed by trial court by judgment dated 9. 3. 2000. Hence this appeal.
( 2 ) APPELLANT is carrying on the business of manufacturing and trading in Ayurvedic medicines under various trade marks and claims to be the proprietor of trade mark `energic-31 also. Appellant filed an injunction suit claiming that he had coined and adopted this Mark way back in 1980 and had used it eversince and prayed to restrain Respondents from using this and his trade name and trading style. He obtained an interim restraint also.
( 3 ) RESPONDENTS contested this suit and filed their written statement pointing out that appellant had supressed material facts and had failed to disclose that his two applications for registration of trade mark `energic-31 stood dismissed by the Registrar of Trade Marks and that his pending third application was also liable to be dismissed and that he had disclaimed exclusive use of numerical 31 which was published in the Trade Mark journal. They also alleged that he was using the word `r to give a false impression to the public that his claimed mark `energic-31 was a registered trade mark and explained that their company M/s. Moradabad Ayurved Vikas Sansthan Ltd. was duly incorporated and could not be accused of trading upon the goodwill and reputation of the appellant company s name.
( 4 ) WE are told that Trial Court dismissed Appellants suit while it was considering the interim stay matter. It is submitted by the Learned Counsel for Appellant that the court had neither framed issues, nor asked parties to lead evidence and had on the contrary dismissed the suit summarily.
( 5 ) A perusal of the impugned judgment shows that Trial Court had dismissed the suit on finding that appellant had concealed the material facts about the dismissal of his applications for registration of the trade mark and had misused the judicial process by fiing the suit which was not maintainable as word `energic was not a coined word and was publici juris. The crux of the judgment reads thus:-
"i consider that the plaintiff s suit on the ground that he was proprietor of trade mark `energic-31 is not maintainable because the word `energic is not coined word and it is publici juris. The plaintiff did not come to the court with clean hands and concealed material facts from the court about the rejection of applications of the plaintiff for registration of the trade mark twice. He has also failed to make out that he has in any way exclusive right over the word `energic or numeral `31 . "
( 6 ) APPELLANT s counsel Mr. Aggarwal, submitted that Appellant could not be accused of supression or concealment of any material facts because rejection of his applications was under Appeal before this court and in any case such rejection or his disclaimer of numeral `31 had no bearing in his action for infringement and passing of the Mark on which he was claiming proprietership on the basis of long user. He has cited several judgments of the Supreme Court including "national SEWING THREAD CO. LTD. VS. JAMES CHADWICK AND BROS LTD. ,"air 1953 SC 357, "the REGISTRAR OF TRADE MARKS VS. ASHOK CHANDRA RAKHIT LTD. " 55 SCR 252 and "m/s. PARKASH METAL WORKS. VS. M/s. SQUARE AUTOMATION (P) LTD. " 1992 PTC 29 to support this.
( 7 ) THIS apart, we are surprised at the approach adopted by the trial court in dismissing the suit. We find from the pleadings that Appellant had claimed to have coined and adopted "energic-31" and had based his proprietership on its long user which was of course disputed and refuted by Respondents. That being so the court had no option but to raise the issues in the suit and require the parties to establish their rival claims. But the court had, on the contrary, adopted a novel method of dismissing the Appellants suit after giving a go-by to the procedure established by law and taki
