The importance of placing all facts before the court for dispensing justice and the disentitlement to relief due to deliberate omission of placing a counterstatement on record.

JUDGMENT :

C. Hari Shankar, J.

I.A. 1203/2022 (Order XXXIX Rules 1 and 2 of the CPC)

1. This judgment disposes of IA 1203/2022, whereby the plaintiffs seek interlocutory injunctive reliefs against the defendants, pending disposal of CS (Comm) 56/2022, instituted by them.

2. Arguments in this matter have been heard over a considerable period of time. However, I am of the opinion that the plaintiffs would stand disentitled to interim relief as sought both on account of certain admissions of fact, contained in a counterstatement filed by the plaintiffs on 14th January 2020, in response to proceedings initiated by the defendants against the plaintiffs under Section 57 of the Trade Marks Act, 1999, as also because the document, containing the said admission of fact, was suppressed while filing the present plaint.

Facts

3. The rival marks, with which we are concerned in the present case, are the following:

[IMAGE]

4. The defendants applied for registration of the impugned [IMAGE] mark in Class 11 on 25th September 2014, claiming user since 1st April 2014 and covering apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”.

5. The plaintiffs applied for registration of the [IMAGE] mark on 14th September 2015, in Class 42, claiming user since 1st September 2008 and covering “consulting services in the field of lighting design and lighting controls; consultancy relating to lighting specification pertaining to permanent or temporary architectural, theatrical, entertainment, commercial and/or residential applications; room design consisting of selection of lighting and visual planning”. The plaintiffs' mark was registered on 5th January 2017.

6. On 27th August 2018, the plaintiffs filed an opposition under Section 21 of the Trade Marks Act, 1999, opposing the application dated 25th September 2014 of the defendants for registration of the [IMAGE] mark. Counter-statement, to the said opposition, was filed by the defendants on 29th September 2018.

7. On 13th September 2018, the plaintiffs issued a notice to the defendants, calling upon the defendants to cease and desist from using the impugned mark [IMAGE].

8. On 23rd September 2019, the defendants filed an application, in the office of the Registrar of the Trade Marks under Section 57 of the Trade Marks Act, seeking rectification of the register and removal, therefrom, of the plaintiffs' [IMAGE] mark. On 14th January 2020, the plaintiffs filed its reply to the said application of the defendants, and in para 4 of para-wise reply that the following averment finds place which, according to me, completely defeats any entitlement of the plaintiffs to interlocutory relief:

“The contents of Paragraph 4 are wrong and denied. It is submitted that there is no question of identicalness with respect to Registered Proprietor's Registered Trademark in comparison with Petitioner's Impugned Mark. It is specifically stated that Registered Proprietor trademark “LIGHT BOOK ARCHITECTURAL LIGHTING DESIGNERS”/” [IMAGE]” (Device mark) and Petitioner's Impugned Mark is “Lightbook”/” [IMAGE]” only. It can be clearly observed that Registered Proprietor's Registered Trademark comprises of five different terms placed in such a way that the same as per common laws, case laws requires to be read as a whole. However, Petitioner's Impugned Mark consists of only single term only which is nowhere similar or identical to Registered Proprietor's Registered Trademark. Hence, such contention of Registered Proprietor having an identical trademark with Petitioner's Impugned Mark stands invalid. It is further submitted that allowing Petitioner's present rectification application will cause irreparable harm Registered Proprietor's established business and impeccable reputation in the eyes of public as the public associate the term Lightbook being known and attached with the Registered Proprietor. As of now there is no cause of confusion on part of the public with respe