The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off cases.

JUDGMENT :

AMIT BANSAL, J.

I.A. 37456/2024 ( under Order XXXIX Rules 1 and 2, CPC ), I.A. 40948/2024 ( under Order XXXIX Rule 4, CPC ) and I.A. 42795/2024 (seeking directions)

1. By this judgment, I propose to dispose of the interlocutory application filed on behalf of the plaintiff under the provisions of Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 ( hereinafter ‘CPC’ ) and the interlocutory applications filed on behalf of the defendant (i) under Order XXXIX Rule 4 of the CPC for vacation of the ex-parte ad interim Order dated 28^th August, 2024 and (ii) under Section 151 of the CPC seeking leave to sell the existing stocks of the products bearing the mark ‘INDEED’ that was lying with the defendant.

CASE SET UP IN THE PLAINT

2. The case set up by the plaintiff in the plaint is as under:

2.1 The plaintiff is the largest manufacturer of measuring tapes, spirit levels and measuring wheels in the Indian sub-continent and is well-established in over 60 countries.

2.2 The plaintiff dates back to the year 1950, when its predecessor started manufacturing metal wired measuring tapes by hand in his garage and sold them from door-to-door. At present, the plaintiff is one of the largest manufacturers of measuring tapes in the world with a production capacity of more than 1,30,000 tapes per day. The plaintiff’s product range includes a wide variety of closed reel and open reel measuring tapes ranging in size from 1m to 100m. The plaintiff also started exporting its goods outside India in 1967.

2.3 The plaintiff’s product portfolio extends beyond linear measurement tools to encompass a wide range of hand tools, precision measuring tools, digital measuring tools and power tool accessories. In the year 2023, the plaintiff’s brand 'FREEMANS' attained recognition as a coveted SUPERBRAND with its products available in more than 60 countries worldwide.

2.4 With the view to establish a distinct identity within the Indian market, the plaintiff honestly and arbitrarily adopted the unique and distinctive mark‘INDI’ in the year 2015. The details of the plaintiff’s trade mark registrations pertaining to the trade mark ‘INDI’ and its variants, which are valid and subsisting, are extracted below:

2.5 The plaintiff has been active in advertising and has a prominent presence over various e-commerce websites including but not limited to Amazon, IndiaMart, etc. The plaintiff’s sales figures for the financial years 2022-23, 2023-24 and 2024-25 (till 30^th June, 2024) for the mark ‘INDI’ and its variants were Rs.67,85,28,164/-, Rs.76,63,31,554/- and Rs.19,67,25,782/- respectively.

2.6 The defendant is involved in an identical business as that of the plaintiff, i.e. manufacturing of measuring tapes, measuring instruments and hand tools. In July 2024, it came to the knowledge of the plaintiff that thedefendant has launched a range of measuring tapes under a similar trade mark, i.e. , ‘INDEED’ bearing an identical trade dress.

3. Aggrieved by the aforesaid, the present suit has been filed.

PROCEEDINGS IN THE SUIT

4. Summons in the present suit were issued on 28^th August, 2024. On the same date, an ex-parte ad interim injunction was granted in favour of the plaintiff, restraining the defendant from using the impugned mark ‘INDEED’ or any other