The judgment reaffirms the protection of registered trademarks and the legal principles surrounding infringement and passing off, highlighting the significance of goodwill in business.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

CS(COMM)-91/2022

2. The present suit has been filed by the plaintiff - M/s. Western Infrabuild Products LLP seeking a decree of permanent injunction against the alleged infringement of its mark `WESTERN' by the Defendants as also an order of delivery of the goods bearing the infringing mark. The Defendants M/s. Western Roof Tile - Defendant No.1 and M/s. Western Roof and Floor - Defendant No.2, are proprietary concerns of Mr. Safeer Ali. The said proprietor has joined the proceedings today virtually from Kodiyathur near Kozhikode in Kerala.

3. The case of the Plaintiff is that the mark `WESTERN' has been used by it in respect of roof tiles, roofing materials, clamps/chains and other goods in classes 6 & 19 since 2015. The said mark is also part of the corporate name of the Plaintiff company, which is engaged in the manufacture and sale of construction and roofing material. The mark has been registered since 2015 by the Plaintiff vide Trade Mark Nos. 3065037 and 3065038 in classes 6 and 19 respectively, with an application date of 28th September, 2015. The Plaintiff's products are sold across the country and are even purchased by various institutions. The claim of the Plaintiff is that extensive use of the mark and sales of almost Rs.13 crores in the year 2021 would show that the mark has become a well-known mark.

4. The grievance of the Plaintiff in the present case is that the Defendants were using an identical mark `WESTERN' in respect of tiles, roofing material, rivets and other related products. The Plaintiff claims to have acquired knowledge of the Defendants' infringing actions when, in the last week of September 2021, it came across the Defendant's trade mark application dated 22nd February, 2020 for registration of the mark `WESTERN ROOF TILE' in Class 19 bearing application No. 4450585. In the said application, the Defendants claim to be using the mark since 31st October, 2017, which according to the Plaintiff, was a false claim of user.

5. Thereafter, the Plaintiff, on 23rd September, 2021 issued a legal notice asking the Defendants to cease and desist from using the mark. Subsequently, on 31st January, 2021, an interlocutory petition praying to take a notice of opposition on record was also filed by the Plaintiff against the Defendants' mark. The Defendants were also displaying their products on various social media and online platforms. According to the Plaintiff, the use of the mark `WESTERN' for identical products constitutes infringement of registered trade mark and passing off.

6. In the present suit, a decree of permanent injunction has been sought by the Plaintiff along with damages. The suit of the Plaintiff was listed on 9th February, 2022 on which date an ad-interim injunction was passed in the following terms:

"17. Accordingly, till further orders, defendants, their proprietors/directors, assignees in business, franchisee, licensees distributors, dealers, stockists, retailers etc. are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in tiles, roofing materials, clamps/chains, etc. and other materials for building and construction under the impugned mark WESTERN and labels thereof; trade name containing the word Western or any other trade mark, trading name as may be deceptively similar to the plaintiffs trade mark WESTERN amounting to infringement of the plaintiffs registered trade marks and pas