A manufacturer may claim rights to a trademark through continuous use, even without a current license, if the licensor has abandoned quality control measures over a significant period.

ORDER :

ABDUL QUDDHOSE, J.

This Court is rehearing the interlocutory applications in these suits pursuant to the directions issued by the Division Bench of this Court through its common judgment dated 18.11.2024 passed in O.S.A.(CAD) Nos.138 and 139 of 2024. By the aforesaid judgment, the Division Bench, while remanding the matter to the learned Single Judge, set aside the order dated 17.10.2024 passed in O.A.No.745 of 2024 in C.O.S.(Comm.Div.)No.190 of 2024 and directed the parties to the dispute to maintain status-quo until the interlocutory applications are reheard by the learned Single Judge afresh and finally disposed of.

2. The dispute revolves upon the usage of the trademark ''Massey Ferguson” (MF) by Tractors and Farm Equipment Limited (TAFE). To avoid repetition of facts, this Court is not repeating the same, since the Division Bench in its common judgment dated 18.11.2024 referred to supra has succinctly narrated the facts, which lead to the filing of the suits and injunction applications by both the parties to the dispute. This Court is only deciding the interlocutory applications and for the purpose of adjudicating the same, it would suffice to consider the respective contentions of both the parties to the dispute and thereafter adjudicate applying the trinity tests of (a) prima-facie case (b) balance of convenience; and (c) irreparable hardship.

3. Massey Ferguson Corp is hereinafter referred to as 'MFC'; Tractors and Farm Equipment Limited is hereinafter referred to as 'TAFE'; the Joint Venture Agreement dated 31.10.1960 entered into between Massey Ferguson Limited (MFL) and Amalgamations (Private) Limited is hereinafter referred to as 'the 1960 JV Agreement'; the Trademark Users Agreement dated 17.03.1978 executed between MFC and TAFE is hereinafter referred to as 'the 1978 TM Agreement'; and the Trademark Registered User Agreement dated 18.03.1994 entered into between Massey Ferguson Corp (Delaware) Inc. (MFC Delaware) and TAFE is hereinafter referred to as 'the 1994 TM Agreement'.

4. In O.A.No.744 of 2024, TAFE prayed for an interim injunction to restrain MFC from holding out or representing that it is the owner, proprietor, rights holder of the MF brands/trademarks, including by amending MFC's website or that of AGCO, the parent company of MFC, pending disposal of the suit.

5. In O.A.No.745 of 2024, TAFE prayed for an interim injunction to restrain MFC from interfering with the TAFE's use of the MF brands/trademarks, pending disposal of the suit.

6. TAFE is represented by Mr.C.Aryama Sundaram, Mr.A.L.Somayaji, Mr.P.S.Raman and Mr.Krishna Srinivasan, learned Senior Counsels. MFC is represented by Mr.R.Parthasarathy and Mr.R.Sankaranarayanan, learned Senior Counsels, and Mr.Rishab Gupta, learned counsel, and they are assisted by Mr.Mithun V.Thanks, Ms.Shreya Gupta, Mr.Bikram Chaudhuri, Mr.Mukul Baveja, Ms.Prachi Gupta, Mr.Abhijeet Sadikale, Ms.Akhila Jayaraj, Mr.Suhrith Parthasarathy, Mr.Allwin Godwin, Mr.Pratik Singvi, Mr.Keyur Jaju and Mr.T.Barathwaj, learned counsels.

7. Submissions of Mr.C.Aryama Sundaram, learned Senior Counsel, for TAFE:-

a) Pursuant to the 1960 JV Agreement, TAFE was incorporated and after the incorporation, TAFE has manufactured tractors and other allied equipments for more than 60 years. About 95% of the products manufactured by TAFE carry MF brands/trademarks.

b) Although the 1960 JV agreement, the 1978 TM Agreement and the 1994 TM Agreement referred to a limited number of products, TAFE has manufactured and marketed about 500 products bearing the MF brands/trademarks.

c) Except the 1994 TM Agreement, the other agreements, including the 1960 JV Agr