The court affirmed the registered trademark holder's rights against similar marks and clarified standards for proving prior use and confusion under trademark law.

JUDGMENT

Navin Chawla, J.

I.A. 9580/2020

1. The present application has been filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (in short, `CPC') praying for grant of an ad interim injunction restraining the defendants, their proprietors, partners, agents, assigns, representatives, heirs, servants, dealers, distributors, manufacturers, franchisees and/or anyone acting for and on their behalf from selling, marketing, offering for sale, advertising directly or indirectly the goods under the trade mark or any other mark/name which is identical or deceptively similar to the plaintiff's mark or for `apparatus for lighting, heating, steam generating, cooling, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, etc.' included in Class 11 or other similar goods in any manner whatsoever, so as to result in the infringement as also passing off the said registered trade mark and artistic work of the plaintiff.

FACTUAL BACKGROUND

PLAINTIFF:

2. It is the case of the plaintiff that in the year 1996, Mr. Naeem Ahmed and Mr. Wasim Ahmed had entered into a partnership and started a firm, namely `M/s. M.T. Engineering Works', engaged in the business of manufacture and sale/supply of a complete range of bath fittings. On 01.04.1998, Mr. Naeem Ahmed and Mr. Wasim Ahmed conceived and adopted the trade mark and have been using it ever since. They applied for the registration of the trade mark , bearing application no. 1099195 in Class 11, on 26.04.2002. The said application was, however, treated as `abandoned' on 30.09.2015 as they failed to file a reply to the opposition filed by one M/s Anchor Kenwood Electricals, under Form TM-6, within the prescribed period of time.

3. It is the further case of the plaintiff that in the year 2004, Mr. Naeem Ahmed and Mr. Wasim Ahmed entered into another partnership and established another firm, namely `M/s. M. Sons Engg. Works', and filed a fresh application on 23.09.0211 bearing no. 2210199 for the registration of the trade mark for goods falling in Class 11 with respect to `apparatus for lighting, heating, steam generating, cooling, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, etc.', claiming user since 01.04.1998. The said trade mark was registered in the name of the said partnership firm vide Certificate of Registration no. 1873221 in Class 11.

4. The plaintiff asserts that, thereafter, Mr. Wasim Ahmed executed an Assignment Deed dated 21.03.2013, assigning several registered trade marks, including the trade mark , in favour of Mr. Naeem Ahmed, who by then had started a proprietorship-firm under the name and style of `M/s Future Bath Products'. Mr. Naeem Ahmed filed an application, under Form TM-16, before the Trade Marks Registry and accordingly, became the registered proprietor of the trade mark claiming user since 01.04.1998.

5. On 17.08.2017, the plaintiff-company was incorporated and by virtue of an Assignment Deed dated 09.08.2018, the plaintiff-company acquired the proprietorship of the said trade mark from Mr.Naeem Ahmed. The plaintiff filed Form TM-P in this regard before the Trade Marks Registry on 09.08.2018, which was allowed and as such the plaintiff became the registered proprietor of the trade mark .

6. The plaintiff further submits that through its predecessor-in- interest, it is engaged in the business of manufacturing, marketing and selling of `apparatus for Lighting, Heating, Steam Generating, Cooling, Cooking, Refrigerating, Drying, Ventilating, Water Supply and Sanitary purposes etc.', included in Class 11 (hereinafter referred to as `the said goods') and other classes as detailed in the Fourth Schedule to the Trade Marks Rules, 2002 since 01.04.1998.

7. The plaintiff further asserts that the predecessor-in-interest of the plaintiff had also applied for the registration of the mark and other trade marks/labels in other classes as well for