The registration of a trademark does not provide a defense to the proceedings for passing off, and passing off actions can be maintained against a registered user of a trademark.

Manmohan Singh, J.

1. The Plaintiff has filed this suit for permanent injunction restraining infringement of trade mark, passing off, rendition of account, damages etc. against the Defendant. The Plaintiff is a private limited company running its business as manufacturers and dealers of the petroleum products including bitumen and also producers, refiners, stores supplies and distributors of petroleum and petroleum products. The said products of the Plaintiff are being sold throughout India and the Plaintiff is having a good marketing and selling network.

2. It is submitted by the Plaintiff, that it has established its brand "MK" with variation of many marks used as suffix with the main mark "M.K." throughout India for the last more than 22 years. The mark "M.K." is also dominent/essential and key portion of its corporate name. The Plaintiff has mentioned the statement of its net sale from the year 2006 onwards in the plaint. The Plaintiff has also produced the advertisement expenses incurred by the Plaintiff from the year 2005-06 onwards in relation to their products and for promoting the same. M/s. Rishab Petro Chemicals, which is a sister concern of the Plaintiff company, is the registered owner of trademark "MAKKOTE" under Registration No. 948233, which has been assigned in favour of the Plaintiff by virtue of the Assignment Deed.

3. In addition to that, the Plaintiff is the registered proprietor of the following trademarks in Class 19:

TRADEMARK

REGISTRATION NO.

DATE OF REGISTRATION

MAK

948239

26.04.2005

MAKFILLEX

948240

14.06.2005

MAKPLAST

948242

14.06.2005

MAKSRB

948234

14.06.2006 By Assignment

MAKPOLY MEMBRANE

960730

14.03.2005 By Assignment

MAKKOTE

948233

14.03.2005 By Assignment

MAKPOLY KOTE

948235

23.03.2005 By Assignment

MAKPOLY PLAST

948232

20.12.2004 By Assignment

MAK SILER

948238

12.03.2005

MAK PMB

960731

16.02.2005

MAKOUTERWRAP

948237

17.02.2005

MAKPOLY BITUMEN

694373

03.02.2005

MAKCRMB

960723

16.02.2005

4. By virtue of the above, the Plaintiff is selling and marketing the above-mentioned products bearing trademark "M.K." and "MAKKOTE" and the Plaintiff claims itself to be the proprietor of the said trademarks.

5. The Plaintiff alleges that Sunil Kumar Sharma, one of the partners of the Defendants, was employed with the Plaintiff company, who was looking after the entire sale and purchase of the Plaintiff company and also having contacts with the customers, dealers and distributors of the Plaintiff company. This fact was not denied by Sunil Kumar Sharma when he was present in court during the hearing of the interim application.

6. The allegation made by the Plaintiff against the Defendant is that after leaving the job, Mr. Sunil Kumar Sharma started his own firm namely M/s. M K Bitumen Products having their business activities at Ballabgarh, District Faridabad in partnership with Mr. Dinesh and Mr. Pratap.

7. It is stated by Plaintiff that the Plaintiff was informed by one of its dealers, M/s. Shiv Sons, situated at 5214, G.B. Road, New Delhi, that the Defendant had sold the products under the name of "MKKOTE" to him vide Invoice No. 031 dated 29.12.2009 for a sum of Rs. 95,013/- and also on 28.04.2010, the Plaintiff had contacted M/s. H D Gajra Brothers, one of its distributors for quotation and then the Plaintiff was informed by the said distributor that Sunil Kumar Sharma and Dinesh, partners of the Defendant company, had misrepresented him in the last month and collected the quotation on behalf of the Plaintiff.

8. Similarly M/s. Bharkra Byas Management Board, who used to issue tender forms regularly to the Plaintiff was also contacted by the Plaintiff and they also informed the Plaintiff that the tender form was collected by the said Sunil Kumar Sharma, the ex-employee of the Plaintiff company, thereby misrepresenting himself as an employee of the Plaintiff company. The Defendant also approached through EMAIL, another dealer of the Plaintiff namely M/s. Groutech Engineers Pvt. Ltd. And the Defendant also s