The prior use of a trademark can override subsequent registration, and the rights of prior users are recognized as superior under the Trade and Merchandise Marks Act, 1958.

S.P.GARG, J.

1. Present suit CS(OS) 900/2002 has been preferred by Rajeev Kumar, proprietor trading under the name and style of M/s. R.J.Components & Shafts (hereinafter referred to as ‘the plaintiff’) against M/s.Deepak Industries Limited (hereinafter referred to as ‘first defendant’) and M/s.Gear Components & Shafts (India) Pvt.Ltd. (hereinafter referred to as ‘second defendant’) to restrain them from selling, offering, exposing of advertising for sale or procuring to be sold any such products which might be similar in nature and description of goods of the plaintiff under the trademark NAW or any other trademark identical with and / or deceptively similar to the plaintiff’s registered trademark NAW.

2. It is averred by the plaintiff in the plaint that he is the sole proprietor of its concern M/s.R.J.Components & Shafts carrying on well established and well-reputed business of manufacturing and marketing of interlia ‘gears’ being tractor parts included in class 12. Initially, Ramji Das -his grandfather was the sole proprietor of M/s.R.J.Enterprises. By a deed of assignment dated 14.01.2000, Ramji Das assigned all rights, title and interest in the assignor of well-known trademark NAW along with its goodwill. The trademark NAW was registered in the name of Ramji Das as proprietor of M/s.R.J.Enterprises being registration mark No.407439 dated 01.07.1983. After the assignment dated 14.01.2000, the plaintiff became the registered proprietor of the mark NAW. The necessary application for transfer has already been made to the concerned authorities. It is further averred that Ramji Das had been using trademark NAW in relation to his products since 1983 and after his death in April, 2000, the said trademark NAW is being used by the plaintiff. The trademark registered in the plaintiff’s name gives exclusive right to him. It is renewed from time to time and is still valid up to 30.06.2004. During the past many years, the plaintiff has established large extensive sale of its products under the registered trademark NAW throughout the country and he has also spent substantial amount on its publicity and advertisement through various modes of advertisement and publicity; it has acquired great reputation and goodwill amongst the minds of public and the trade. The trademark NAW has come to be exclusively identified and associated with the plaintiff alone in the public and the trade.

3. It is averred that the first defendant is engaged in the business of manufacturing and marketing of gears and selling its products through its distributor i.e. second defendant. The first defendant who has recently started manufacturing gears has adopted an exactly similar trademark NAW and has copied, imitated and pirated the registered trademark NAW of the plaintiff. The defendant’s trademark NAW is total identical and/or deceptively similar to the registered trademark NAW; the products manufactured by both the plaintiff and the defendants are the same. Adoption and use of the said trademark on the part of the defendants amounts to infringement of the plaintiff’s aforesaid registered and reputed trademark NAW. The infringement has been done in order to cause confusion and deception in the minds of unwary purchasers. The defendant is guilty of passing off their inferior quality of goods as the goods manufactured by the plaintiff. On account of the defendants’ deliberate unlawful and unjust trade activities, the plaintiff has suffered in the well known and well established trade, reputation and goodwill.

4. The suit is contested by the defendants. In the written statement filed jointly by the defendants it is stated that the suit is not maintainable under Section 44 of the Trade and Merchandise Marks Act, 1958 as the name of the plaintiff has not been entered as ‘subsequent proprietor’ in the records of the Trade Marks Registry. On merits, it is denied if Rajeev Kumar is the sole proprietor of the firm trading as M/s.R.J.Components & Shafts, New Delhi. N