Suppression of material facts and false statements by a party in obtaining an ex parte injunction may lead to the vacation of the injunction.

Jayant Nath, J.

I.A. No. 12459/2013 (u/O XXXIX R 4 CPC)

1. The above application under Order XXXIX Rule 4 CPC has been filed by the defendant for vacation of the ex parte ad interim injunction dated 29.07.2013.

2. On 29.07.2013 this court in IA No. 11760/2013 had passed an injunction order restraining the defendants, their employees, agents, etc. from offering any type of services, manufacturing, marketing, selling and offering for sale, products and/or restaurant or hospitality services bearing the mark ZARA as a trade mark, trade name, corporate name, domain name or in any other manner.

3. The plaint is filed seeking a decree of permanent injunction to restrain the defendants, their employees, agents, etc. from offering any type of services, manufacturing, marketing, selling and offering for sale, etc. any products and/or restaurant services or any allied or cognate products bearing the mark ZARA, ZARA TAPAS BAR and from using the mark ZARA as a mark, trade mark, corporate mark, etc. in any manner so as to cause infringement to the plaintiff’s registered trade mark ZARA. Other connected reliefs are also sought.

4. It is averred in the plaint that the word ZARA is coined, conceived and adopted as a trade mark in 1975. The plaintiff’s first ZARA shop is said to have opened 38 years ago in Spain. The mark ZARA was first registered in Spain on 05.06.1979 in class 25. The domain name was registered on 29.05.1997. It is stated that the plaintiff has as in the year 2013, 1763 ZARA stores and other connected stores in over 86 countries. It is averred that in India, garments and other articles bearing the plaintiff’s ZARA marks have been specially manufactured since 1986-87 by plaintiff’s Indian manufactures. In February 2009, the plaintiff is stated to have signed an agreement with Trent Limited, an enterprise of the Tata Group to develop its ZARA Stores in India. Pursuant to the said partnership the plaintiff is said to have opened 12 stores in major cities in India. In 2012, the value of the ZARA products sold in India are said to be `3,841,107,582/-. In India, the earliest registration of the trade mark is of 07.04.1993.

5. It is further averred that in or around April 2005, the plaintiff came across defendant No.1’s trade mark application for ZARA TAPAS BAR in Class 16, advertised in Trade Mark Journal dated 17.01.2005. The plaintiff is said to have filed an opposition and the same is said to be pending before the Trade Marks Registry, Chennai. It is stated that in 2012 the plaintiff also came across with other trade mark applications filed by defendant No.1 for registration of ZARA TAPAS BAR. The plaintiff is said to have opposed all trade mark applications comprising of ZARA filed by defendant No.1 which have been advertised till date. A list of five such applications is given in the plaint. Reference is also made to the communication dated 24.02.2011 which the plaintiff’s attorneys received on 25.02.2011 from defendant No.1’s trade mark attorneys proposing a settlement and co-existence. It is stated that this was the first time when the defendant admitted to be offering products and services in the restaurant and hospitality sector using the mark ZARA TAPAS BAR. It is further averred that in March 2013, the trade mark attorneys of the plaintiff received evidence in support of applications in opposition proceedings No.MAS-787475 and MAS-788957 filed on behalf of defendant No.1. It is averred that on study of these documents filed by defendant No. 1, the plaintiff was shocked to find materials which show that defendant No. 1 has been and still is using the expression ZARA per se, and not as part of ZARA TAPAS BAR or in the form of a composite label mark. It is averred that such use of the disputed mark in commerce by the defendant is totally contrary to its claims till date in the past proceedings and settlement negotiations. On the said averments, the present suit is filed.

6. IA No. 12459/2013 has been filed by t