In cases of passing off of an unregistered trade mark, delay and laches assume greater importance, and the balance of convenience is a crucial factor in granting injunctions.

SANJEEV SACHDEVA, J

1. The appellant impugns order dated 20.03.2015 whereby the application of the appellant under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure (CPC) has been dismissed.

2. The appellant, who is the plaintiff, filed the suit for permanent injunction, restraining, infringement, passing off of the appellant’s mark “India Gate” by the respondent (defendant in the suit), who is using the mark “Church Gate”. The appellant in the suit claimed a decree of permanent injunction restraining the respondent from using the word/mark/label with the device of “Gate” alleging it to be deceptively similar to the word/mark/label of the appellant’s mark “India Gate” or the device of “India Gate” in relation to goods and processing of rice and allied/cognate goods.

3. As per the appellant, the predecessor of the appellant M/s Khushi Ram Bihari Lal adopted the mark “India Gate” with the device of “India Gate” and has been exporting rice to foreign countries since 1993 and has built up its reputation and goodwill over the years. The appellant applied for registration of its trade mark/label in class 30 on 19.03.1999 and the application is still pending. Various other applications for registration of the mark have been filed by the appellant. The appellant also claims to be the owner of the original art work of the device “India Gate” and the copyright involved in the same. The appellant claims to have spent a huge amount on the advertisement and, marketing and promotion of its mark “India Gate”.

4. As per the appellant, the respondents have adopted a deceptively similar mark/label “Church Gate” with the device of “Gate” in relation to its goods, i.e., sale of rice, which amounts to infringement of the trade mark/label of the appellant. As per the plaint, the appellant learnt about the respondent’s mark in the first week of January, 2014 when the appellant came across the impugned goods of the respondents in the Delhi market. In the plaint, it is averred that the appellant learnt about respondent No.2’s adoption of the mark “Church Gate” through the advertisement dated 28.07.2005 and the plaintiff filed the notice of opposition dated 12.08.2005 and the said opposition is pending. It is contended that the plaintiff, on filing the opposition, made enquiries and did not come across any of the vendible goods/articles of the defendant under the trade mark “Church Gate” and it was only in the first week of January, 2014, for the first time, that the appellant laid its hands on the impugned product under the impugned trade mark/label in the markets at Delhi. It is contended that the cause of action arose in first week of January, 2014 when the appellant, for the first time, came across the goods of respondents in the market. The appellant accordingly filed the present suit.

5. The respondent (the defendant in the subject suit), in the written statement, has raised several defences. It is contended that the two marks are not deceptively similar and the mark/label of the respondents is completely different from that of the appellant and there is no likelihood of any deception or confusion. It is further contended that the respondents are the prior adopters of the mark “Church Gate”, having adopted the same in 1991, prior to the alleged adoption by the appellant of the mark “India Gate” in 1993. It is further contended that the appellant in proceedings filed by the proprietor of a mark “Delhi Gate” had contended that the mark “India Gate” was not deceptively similar to the mark “Delhi Gate” and as such, the appellant is estopped from contending that the mark “India Gate” is deceptively similar to the mark “Church Gate”. It is further contended that the suit filed by the plaintiff is barred on the ground of delay and laches inasmuch as the appellant became aware of the mark of the defendant as far back as in year 2005 and even filed a notice of opposition to the application of the respondent seeking registration of its mark “