The ownership and goodwill in a trademark vest in the person who first uses the mark on the product.

V.K. Jain, J.

1. CS (OS) No. 89/2011 has been filed by Double Coin Holdings Ltd. and ZAFCO Trading LLC against Trans Tyres (India) Private Ltd. and Mr. Harish Kakkad whereas CS (OS) No. 90/2011 is the cross suit, the Defendants in CS (OS) No. 89/2011 being the Plaintiff in the suit and the Plaintiffs in CS (OS) 89/2011 being the Defendants in this suit. Double Coin Holdings Ltd. is a Chinese company which owns the trademark Double Coin in respect of tyres etc. and claims that its products are being sold worldwide in as many as 90 countries and ZAFCO Trading LLC (hereinafter referred to as "ZAFCO?) is its authorized agent. Double Coin Holdings Ltd. claims that the trademark Double Coin was adopted by it in the year 1930 and it started producing tyres in the year 1934. It claims to be manufacturing radial tyres for trucks, buses and automobiles since 1960s. It also claims to have manufacturing capacity of more than 6 million units and production of 2.7 million truck and bus tyres in a year. It is also stated that 40% of the production of the company is being exported to more than 60 countries including India. It is claimed by Double Coin Holdings Ltd that on account of continuous and widespread use of the trademark Double Coin coupled with large scale advertisements, the aforesaid mark has come to be associated exclusively with this company and this mark is registered in its name in several countries including USA, China, Dubai, Brazil and various other countries. The company claims turnover of Rs. 22 crores, 25 crores, 30 crores, 34 crores and 38 crores in the year 2005-06, 2006-07, 2007-08, 2008-09 and 2009-10 respectively in India alone. It also claims to have incurred advertisement expenses of Rs. 33 lakhs, 37.5 lakhs, 45 lakhs, 51 lakhs and 57 lakhs respectively during the aforesaid years.

2. The case of the Plaintiffs in CS (OS) No. 89/2011 is that Double Coin Holdings Ltd has been supplying tyres to various dealers in India including Trans Tyres (India) Private Ltd through ZAFCO since the year 2005. ZAFCO also claims pan world presence covering more than 85 countries with a huge distributorship database. It is alleged that ZAFCO had appointed Trans Tyres (India) Pvt. Ltd. as its authorized representative and distributor vide agreement dated 1st July, 2006, which was valid till 30th June, 2007 but was not renewed thereafter.

3. The trademark Double Coin has been registered in India in the name of Trans Tyres (India) Pvt. Ltd. in respect of tyres and tubes since 31st October, 2007. The case of the Plaintiffs in Suit No. 89/2010 is that they came to know about this registration only in January, 2010 when Plaintiff No. 2 ZAFCO started its operation in India and established a branch office at Barakhamba Road, New Delhi for sale and marketing of Double Coin Tyres being manufactured by Double Coin Holdings Ltd. The Defendants in CS (OS) No. 89/2011 have also applied for registration of trademark in Class 4, 9 and 12 in respect of all kind of industrial oils, greases and lubricants, automotive electric batteries and batteries for electric vehicles, all kinds of vehicle rims (steel & alloy wheel rims). A cease and desist notice was issued by the Plaintiffs in CS (OS) No. 89/2011 to the Defendants in that suit. In their reply, the Trans Tyres (India) Pvt. Ltd. and Mr. Harish Kakkad claimed that they had obtained registration with the consent of the Plaintiff and to its full knowledge. A petition filed by the Plaintiffs in CS (OS) No. 89/2011 for cancellation of the trademark obtained by Trans Tyres (India) Pvt. Ltd. is stated to be pending before the Intellectual Property Appellate Board (IPAB). The Plaintiffs in this suit have sought injunction restraining the Defendants in the suit from manufacturing, selling or advertising any goods or services using the trademark Double Coin or any other mark identical with or deceptively similar to the Plaintiffs? mark and holding themselves out as owners of the mark Double Coin. They hav