Prior usage of a trademark is critical in determining the legitimacy of claims and registration; dishonest use must be substantiated with evidence.

JUDGMENT

Manmohan, J. (Oral)--Present appeal has been filed challenging the interim injunction order granted in favour of the respondent by the learned District Judge (Commercial Court)-02 in CS(COMM) 494/2019 vide order dated 16th December, 2020.

2. Learned counsel for the appellants states that the learned District Judge failed to appreciate the fact that both the parties were doing business together since the beginning and both the entities, M/s Smitz Polytex and Smitz Marketing, ran smoothly between 2007 and 2015. He states that as both the entities were doing a joint business, the adoption and use of the mark SMITZ and their use of the trading name was known to all including the respondent-plaintiff. He also states that the appellant No.3 is the prior user of the mark SMITZ, as appellant No.3 designed and adopted the mark in 1999. He points out that in 2015, when the respondent owed a huge amount to the appellants, the respondent with a dishonest intent decided to separate their business. He undertakes that the appellants shall not use the mark INDIGO.

3. Per contra, learned counsel for respondent states that appellants' use of mark SMITZ is dishonest. He states that in the past the respondent had permitted the appellants to use the mark SMITZ as the appellants were supplying all its goods to the respondent-plaintiff.

4. Having heard learned counsel for the parties, this Court finds that the substratum of the impugned Trial Court order is that defendant No.3's application for registration of trade mark/logo "SMITZ" under no.2948568 in Class 23 and under no.2948570 in class 35 were rejected by the Registrar of Trade Mark vide order dated 31st January, 2019. During the hearing, it is an admitted position that the said Trade Mark applications pertain to the trade mark "INDIGO" and not "SMITZ".

5. Further, it is an admitted position that the appellants had been using the trade name M/s Smitz Polytex between 2007 and 2014 to the knowledge of the respondent-plaintiff.

6. Keeping in view the aforesaid, the impugned order dated 16th December, 2020 is set aside.

7. At this stage, learned counsel for the respondent states that the respondent would be satisfied in the event the Trial Court is directed to dispose of the suit filed by it within a strict time frame. Accordingly, the present appeal is disposed of with a direction to the Trial Court to decide the suit filed by plaintiff/respondent as expeditiously as possible, preferably, within six months. Needless to state, the Trial Court should decide the matter on its own merit uninfluenced by any observation made by this Court. The rights and contentions of all the parties are left open.