A plaintiff is not entitled to an interim injunction for trademark infringement if the defendant has a prima facie case for rectification of the trademark register and the balance of convenience favors the defendant.

( 1 ) THIS application under Order 39 Rules 1 and 2 of the Codeof Civil Procedure has been filed by the plaitniff-company for the grant ofinterim injunction in a suit for perpetual injunction against the respondent torestrain it from infringing the applicant s registered trade mark "now" andfrom passing of its goods as those of the applicants as well as for rendition of accounts.

( 2 ) THE plaintiff is an American Company and is the registered proprietorof trade mark "now" in nearly 80 countries of the world including India. Itis alleged in the plaint as also in the application that the trade mark is usedby the plaintiff in relation to cigarettes made by it and sold in a large numberof the countries in the world. As far as the manufacture and sale of cigaretteis concerned, it is sold in various countries but not in India. The plaintiff hasgiven details of its sales and publicity expenses in the plaint. According to thefigures mentioned, the sales are worth millions of dollars and the expenses ofadvertisement also run into lacs of dollars. It is further stated that in January,1986, the plaintiff learnt through their Hong Kong Office that the defendant badintroduced in India cigarettes under the trade mark "now". Thereafter theplaintiff made enquiries and learnt that now" cigarettes had been introducedand were being sold not only in Delhi but in many parts of the country by thedefendant. According to the plaintiff, the defendant was taking advantage ofthe ban on the import of cigarettes which prevented the plaintiff from sellingin India. It is further alleged that the defendant s trade mark "now" isdeceptively similar to the plaintiff s registered trade mark and in fact the markis exactly the same i. e. "now". It is stated that the applicant s trade mark"now" represents high quality fine tobacco and is associated with the cigarettesoriginated exclusively from the applicant s house. The respondent s use ofthe mark is clearly intended to establish a nexus between its own goodsand the applicant s. Since the applicant s trade inarks is registered, hehas a good prima facie case and the balance of convenience is in favourof the applicant. In case the interim injunction, as prayed for, is not granted. the applicant will suffer an irreparable injury whereas the respondent wasmarketing goods of much lesser and as a result the respondent will not sufferany irreparable harm or injury.

( 3 ) THE application has been seriously contested by the defendant-company. In the affidavit in reply, it is stated that the defendant has filedform TM-26 dated 7/01/1986, being an application for rectification toremove the registered trade mark "now" of the plaintiff from the Register oftrade Mark as specifically on the ground that the said trade mark was registered without any bona fide intention, on the part of the plaintiff that it should beused in relation to the goods of the plaintiff and that there has in fact beenno bona fide use of the said trade mark in relation to the said goods by theplaintiff and that the said trade mark does not qualify for registration. It isfurther stated that the registration of the trademark "now" is invalid andcould not in law have been registered and is, therefore, liable to be struck off theregister of Trade Marks. On merits, it is pleaded that the defendant-companyhas been in the cigarette manufacturing trade since 1910 and from time to timehas developed and Marketed a wide range of cigarettes of different types andflavours under a large number of trade marks, and the defendant has neverbeen accused of much less have any proceedings filed against it alleginginfringement of a registered mark. It is further stated that the cigarette industryis a highly competitive industry and the manufacturers are constantly strivingto improve their market and have been marketing cigarettes of different brandnames to meet the changing tastes of consumers. Over the years, the defendantbad to compete and has effectively done so