A party seeking discretionary relief must approach the court with clean hands, and active concealment of material facts may disentitle a party from such relief. The court must weigh the legal rights of both parties and consider the balance of convenience in trademark infringement cases.

INDERMEET KAUR, J.

I.A. No. 16583/2014 (under Order XXXIX Rules 1 & 2 of the Code) & I.A. No. 23361/2014 (under Order XXXIX Rule 4 of the Code)

1. The plaintiff is the Columbia Sportswear Company registered under the laws of United States of America. In the year 1938, it had conceived and adopted the mark COLUMBIA as its trade name and trade mark. It continues to be a global leader in the design, sourcing, marketing and distribution of active outdoor apparel and footwear. It has developed an international reputation for its quality, performance and value. Its reputation is unparalleled and the value of its produce under the trade mark COLUMBIA is well known. Its packaging and trade dress has also acquired an enormous goodwill and reputation in the market; it has a secondary meaning with respect to the plaintiffs products. The plaintiff has employed more than 4500 employees and distributors around the world to sell its products throughout the globe including India. The plaintiff has been a recipient of various industry awards for its high level performance. It has a strong association with the Indian territory and a variety of its goods bearing the plaintiffs trade mark COLUMBIA having been manufactured for export purpose in India; this was from the year 1996. The plaintiff has applied for and obtained registration of its trade mark COLUMBIA in India details of which finds mention in para 16 of the plaint. They are six such registrations. It is stated that these registrations are valid and subsisting as on date. Copies of the registration certificates have also been filed. The annual turnover of the plaintiff under the trade mark COLUMBIA w.e.f. 2004 to 2013 has also been filed; the figure is in millions of US Dollars. Their goods are available in the Indian market which are the infringing good. The plaintiff also has a subsidiary M/s Columbia Sportswear India Sourcing Pvt. Ltd. having its office at Bangalore who distributes the goods of the plaintiff.

2. The plaintiff has reason to believe that his consumers which include mountaineers travelling to India, would be staggered to see identical/similar goods available in the Indian market which are the infringing goods. In April, 2013, the plaintiff was made aware of these cheap quality shoes under the trade mark COLUMBIA (impugned goods) flooding the markets in Delhi and other neighbouring states. Alarmed with the situation, a criminal complaint has been lodged at the Bahadurgarh Police Chowki. It was learnt that these goods under the trade mark COLUMBIA were being manufactured by defendant No. 2 i.e. Galaxy Footwear Pvt. Ltd. Bahadurgagh. It was agreed by the police that the office of defendant No. 2 would be raided. A raid was carried out at the office of defendant No. 2 and the concerned Police Officer was able to seize certain counterfeit goods but this raid had thereafter to be aborted as an unknown source gave a call to the said Police Officer not to continue with the proceedings. A complaint was lodged with the S.P. but no formal registration was made by the concerned S.P. The plaintiff was frustrated with the lack of response from the police. A criminal complaint was also registered against defendant No. 2 that defendant No. 2 is using the trade mark COLUMBIA which is registered with the plaintiff; defendant No. 2 is passing of the impugned goods making the customer believe that they are the plaintiffs goods and thereby diluting the plaintiffs proprietary rights. This use of trade mark by defendant No. 2 is dishonest and fraudulent which has caused the huge loss to the plaintiff. In para 40, it is stated that on the plea of disclaimer on some of the plaintiffs registrations, an opinion was sought from the Registrar of Trade Marks which opinion was in favour of the plaintiff. Present suit seeking permanent injunction against the defendants, its directors/agents restraining them from dealing with the registered trade mark COLUMBIA/passing of the goods of the plaintif