The main legal point established in the judgment is that the use of a deceptively similar trade mark constitutes infringement and passing off, and the use of a trade mark for export satisfies the requirements of Section 56 of the Trade Marks Act, 1999.

JUDGMENT

V. Kameswar Rao, J. - IA 8010/2020

1. By this order, I shall decide IA 8010/2020 filed by the plaintiff under Order XXXIX Rule 1 & 2 read with Section 151 CPC.

2. The case of the plaintiff, as contended by Mr. Hemant Singh is that the suit has been filed for infringement and passing off in relation to plaintiff''s trade mark UFO (word per se) registered in India vide trade mark registration No. 388739 dated April 13, 1982 in class 25 for description of goods comprising trousers including pants and blouses and shirts for men, women and children. The registration is valid till April 13, 2030. According to Mr. Singh, the trade mark UFO is an arbitrary mark, which was adopted by the plaintiff in the year 1968 and has been registered in various countries. The trade mark UFO has been promoted extensively by various brand ambassadors and has also featured in the leading international magazines, which are circulated globally, as well as in India. The plaintiff has also registered its trade mark UFO as a domain name in 1998. The plaintiff gets its clothing manufactured for export and sale in international markets from third party manufacturers. The defendant Nos. 2, 3, 8 and 9 have been engaged and associated with such manufacturers of clothing under the trade mark UFO for and on behalf of plaintiff in India since 1970s till 2011. In this regard, he has relied upon the sale invoices bearing the trade mark UFO for the period between 2003-2011.

3. Mr. Singh stated, the use of the trade mark UFO by the defendant Nos. 2, 3, 8 and 9 during the period 1970-2011 was by way of license granted by the plaintiff, one such agreement dated October 21, 1982 has been placed on record. He stated that the said agreement was signed by the plaintiff and defendant Nos. 8 and 9 on behalf of Creative Casualwear Pvt. Ltd., which was a part of the Creative Group of Companies. He laid stress on the fact that defendant Nos. 2, 3, 4, 8 and 9 are all part of the Creative Group of Companies and were associated with the plaintiff by undertaking the manufacture and export of plaintiff''s product i.e. apparels under the trade mark UFO. He stated that in March, 2011, defendant No. 2 approached the plaintiff vide email dated March 30, 2011 to launch children''s clothing in India under the trade mark UFO. Vide e-mail dated May 07, 2011, the plaintiff agreed to grant license for the use of the trade mark UFO for kids-wear by sharing a draft license agreement. The said draft license agreement had depicted the trade marks proposed to be licensed for its use by the licensee in India. Vide e-mail dated June 08, 2011, the defendant No. 2 shared the logo it proposed to use with UFO written in the same manner in which it is currently being used by the defendants and is sought to be injuncted by the plaintiff on grounds of being an unauthorized use. The defendant No. 2 desired full ownership of the trade mark UFO in India instead of licensed use, which was categorically denied by the plaintiff vide its e-mail dated July 12, 2011. This led to the parties falling apart in respect of the then business relationship. Thereafter, the plaintiff started getting its clothing products for export, manufactured from another manufacturer till 2017. The plaintiff is in negotiations with other manufacturers in India for undertaking the said assignment.

4. Mr. Singh would contend that it was only in the month of January, 2019 that the plaintiff came across trade mark of defendant No.1 published in Trade Marks Journal No. 1869 dated October 01, 2018 on a ''proposed to be used'' basis for garments falling in class 25. The plaintiff immediately filed opposition thereto since used in the advertised trade mark was the same which the plaintiff has disallowed the defendants from using, except by way of a license, to be granted by the plaintiff as is evident from communications exchanged in 2011. He stated that further inquiry by the plaintiff revealed that the defendants are even selling clo