The judgment emphasizes the limitations of the exclusive right conferred on a registered proprietor of a trademark and the rights of a prior user in an action for passing off. It also underscores the importance of disclosing material facts to the court and the necessity of establishing the elements of passing off in a trademark infringement case.

1. This order shall dispose of IA. No. 11702/2007 filed under Section 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 on behalf of the plaintiff as well as IA. No. 12433/2007 which has been filed on behalf of the defendant No.2 under Order 39 Rule 4 CPC. The question involved in the present suit is with regard to the use of the mark MICO in relation to petroleum products including oils, greases and lubricants for automotive vehicles and automobiles, including engine oils, gear oils, tractor oils, 2T oils, transmission and hydraulic fluids and coolants.

2. On 09.10.2007, when the suit had come up for admission and the plaintiffs application for ex parte injunction was taken up by this court, it was contended by the learned counsel for the plaintiff that the mark MICO has been used by the plaintiff since 1960 in respect of the said petroleum products and that the same stands registered in the plaintiffs name as of 12.02.1985. The plaintiff has two registrations – one in respect of the trade mark MICO and the second in respect of the label mark which includes the word MICO. It was also contended by the learned counsel for the plaintiff that the word MICO also forms a key and vital part of the plaintiffs cooperate name MICOLUBE INDIA LIMITED. It was further submitted that the plaintiff came to know in September, 2007 that the defendant No.2 had started manufacturing lubricants from Bangalore using the trademark MICO and that the defendant No.1 is the dealer of defendant No.2 though the exact connection was unknown. On the basis of these submissions, this court passed the following ex parte ad interim orders: “The defendants are restrained from using, selling, soliciting, exporting, displaying, advertising by visual, audio, print mode or by any other mode or manner or deal in or use the impugned trademark/ label “MICO” or any other identical and/ or deceptively similar word/ mark/ label in relation to lubricants, petroleum products including engine oil, gear oil. The defendants are also restrained from doing any other acts or deeds amounting to or likely to infringe the registered trademark of the plaintiff No. 433800 and 433801 in class 04 as also from passing off their goods as those of the plaintiff.”

3. The learned counsel, appearing on behalf of the defendant No.2, submitted that the plaintiff had not come to court with clean hands and has been guilty of suppression and / or concealment of material facts. It was also contended that the plaintiffs conduct has been dishonest. First of all, it was stated that the plaintiff did not disclose in the plaint that the defendant No.2 also has a trade mark registration in respect of MICO in class 4 itself. The application for such a registration was made on 06.01.2004 and was allowed on 17.10.2005. The defendants registration in class 4 is under No. 1259864. He submitted that this fact was not at all disclosed in the plaint with a view to mislead this court into passing the order that it did on 09.10.2007 and that, on this ground alone, the said order is liable to be vacated.

4. It was further contended on behalf of the learned counsel for the defendant No.2 that, in any event, apart from the question of concealment and suppression, such an injunction cannot be granted against the defendant No.2 in view of the specific provisions of Section 28(3) of the Trade Marks Act, 1999. It was contended that the plaintiff being the holder of the registered trade mark MICO could not seek exclusivity against the defendant No.2 which was also the holder of the registered trade mark MICO in the same class of goods. He submitted that both the plaintiff and the defendant No.2 could restrain the third party from using the mark MICO but they could not claim any right of exclusivity in respect of each other.

5. Faced with this situation, the learned counsel for the plaintiff submitted that the action brought by the plaintiff is not merely of infringement of a tra