The main legal point established in the judgment is that a prior and registered user of trademarks using a specific prefix has a prima facie case and the balance of convenience may favor the plaintiff in a trademark infringement case.

YOGESH KHANNA, J.

IA No.6829/2017 & 8114/2017

1. This application (IA No.8114/2017) under Order 39 Rule 4 CPC is moved by the defendant for vacation of an interim order dated 30.05.2017 passed under Order 39 Rule 1 & 2 of the CPC (IA No.6829/2017) wherein the defendant was restrained from advertising, offering of service/sale, adopting, using and/or dealing in any manner with the plaintiff’s registered trademarks/name “Lotus” and logo of the plaintiff or any other trade mark identical or deceptively similar to the plaintiff’s above mentioned trademarks and further from representing in any manner that they are connected with the plaintiff or by using the trademark of Lotus Greens in its website till the next date of hearing.

2. During the course of the arguments by either counsels the controversy was culled down to three issues

(a) if the defendant had infringed the mark “Lotus” of the plaintiff;

(b) the effect of other users in the market using the mark “Lotus” and

(c) whether this court has jurisdiction to try and decide the dispute.

3. Qua contention (a) above, the defendant in its application IA No. 8114/2017 has alleged, a bare perusal of the plaint would reveal that though the plaintiff claim to have a registered trademark “Lotus” in its name, but para 6 of the plaint clarifies the following trademarks been registered in favour of the plaintiff viz. “Lotus Arena” in class 36; “Lotus Arena” in class 37; “Lotus Greens Sports City” in class 36; “Lotus Greens Sports City” in class 37; “Lotus Isle” in class 36; “Lotus Isle” in class 37; “Lotus Arascape” in class 37. The learned Senior Counsel for the defendant argues that all the above trademarks show the word “Lotus” has been used only as a prefix word alongwith an another word but never the word “Lotus” individually has been registered in favour of the plaintiff anywhere in India and hence the plaintiff cannot claim exclusive rights to the use of word “Lotus” as its mark/label. Qua an alleged use of a website by the defendant viz. www.lotusgreens.net.in, it is argued that it is a normal practice where the plaintiffs themselves through their agents create a website in the name of defendant just to make a cause of action for these types of suits and the defendant herein is nowhere related to such website and rather invites the court to take any penal action against the maker of such website. In support of his contentions, the learned Senior Counsel for the defendant has heavily relied upon Vardhman Buildtech Pvt. Ltd. and others vs. Vardhman Properties Pvt. Ltd. 2017 (1) R.A.J. 558 (Delhi) wherein the division bench of this court has held as under.

“8. On a plain reading of section 15(1), it is evident that where a proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately, he is permitted to apply to register the whole and the part as separate trade marks. In the present case, the respondent is the proprietor of the label/mark which includes the words VARDHMAN PLAZAS. The respondent is claiming exclusivity in respect of the word VARDHMAN. It is clear that he had the option to make an application for registering the word VARDHMAN as a separate trade mark. Assuming that he could have had the word mark registered, it is an admitted fact that the respondent made no such application. Section 17 of the said Act makes it clear when a trade mark consists of several matters, as FAO(OS) 187/2016 & 188/2016 Page 11 of 14 it does in the present case, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. There is no dispute that the label/mark, taken as a whole, is the exclusive property of the respondent. The learned counsel for the appellants has no quarrel with this at all. The issue arises when the respondent claims exclusive right to a part of the label/mark and particularly to the word VARDHMAN. Section 17(2) is a non-obstante provision [vis-vis sub-section(1)], which stipulates that