ORDER :

Rajiv Sahai Endlaw, J.

With the consent of the counsels, the two suits are consolidated and from the pleadings of the parties, the following issues are framed :-

I. Whether the use by the defendant of the name/mark TT amounts to infringement of the registered trade mark of the plaintiffs? OPP

II. Whether the use by the defendant of the name/mark TT amounts to the defendant passing off its services as that of the plaintiffs? OPP

III. Whether the defendant is the prior user of the name/mark TT and if so to what effect" OPD

IV. Whether the use by the defendant of the name/mark TT is honest and concurrent with the plaintiffs and if so to what effect? OPD

V. Whether the plaintiffs are not entitled to the reliefs of injunction claimed, for the reason of the suit being barred by delay and laches and acquiescence? OPD

VI. Whether the defendant, owing to the agreement dated 27th April, 2004 is not entitled to use the trade name/mark TT? OPP

VII. If the above issues are decided in favour of the plaintiffs, whether the plaintiffs, besides the relief of injunction, are entitled to any other relief of delivery or rendition of accounts or for damages against the defendant and if so, what damages, if any are payable by the defendant to the plaintiff? OPP

VIII. Relief.

No other issue arises or is pressed.

2. The parties to file their list of witnesses within 15 days.

3. The plaintiffs to file affidavits by way of examination-in-Chief of all their witnesses within four weeks.

4. List before the Joint Registrar on 13th May, 2013 for fixing the dates of trial. I.A. No. 742/2008 in CS(OS) No. 101/2008 and I.A. No. 745/2008 in CS(OS) 102/2008

(Both of plaintiff under Order 39 Rules 1 and 2 CPC)

5. Though the suits have been pending for the last nearly 5 years, no interim relief has been granted to the plaintiffs till date. The counsels have been heard.

6. The plaintiffs have filed the two suits pleading:

i. that the plaintiff No. 1 as the proprietor of M/s. T.T. Industries has been carrying on business of manufacturing and marketing of all kinds of hosiery products such as vests, underwears, brassieres, socks, panties, clothing and under clothing, threads and yarns, shirts, trousers, sarees, elastic tapes, lungies, handkerchiefs, travelling bags, socks, textile piece-goods etc, for several decades with sales offices/depots at various places in India;

ii. that the plaintiff No. 1 adopted the trademark "TT" in relation to the aforesaid goods in the year 1968;

iii. that prior to 1968 the mark "TT" was being used by M/s. Tarun Textiles Pvt. Ltd. a family concern of the plaintiff No. 1 and of which the plaintiff No. 1 is one of the directors;

iii. that the plaintiff no. 2 Company namely T.T. Limited was got incorporated on 15th January, 1998 and since the year 1998 goods under the trademark "TT" are being manufactured by the plaintiff No. 2 Company under the licence from the plaintiff No. 1;

iv. that the plaintiff no. 1, over the years has obtained registration of marks, devices, logos, labels consisting of letters "TT" in Classes 25, 15, 10, 19, 3, 32, 20, 11, 33, 23, 84, 25, 19, 21, 41;

v. that the mark comprising of letters "TT" per se has also been registered in favour of the plaintiff No. 1 in Classes 25, 23, 24, 35 and 36;

vi. other applications of the plaintiff no. 1 for registration of various marks consisting of "TT" letters are also pending;

vii. that the artistic works comprising inter alia letters "TT" in a variety of forms, design, colour scheme have been registered before the Copyright Authority;

vii. that the plaintiff no. 1 is also the owner of the mark "TT" at common law and owing to widespread advertisements by the plaintiff, the consumers and the trade in general associate the said mark/brand/logo/monogram with the products of the plaintiff No. 1 exclusively;

viii. that in August, 2001 the plaintiff No. 1 came across the advertisement in the Trademarks General dated 15th August, 2005 in respect of multi class application for registration of trademark i