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[2009(7) ADJ 606]
ALLAHABAD HIGH COURT
BEFORE : PANKAJ MITHAL, J.
M/s. GLAXY BRUSHWARE, BIJNOR AND ANOTHER ....Appellants
Versus
RAMESH SOOD AND ANOTHER ....Respondents
(First Appeal From Order No. 2277 of 2009, decided on 11th August, 2009)
(B) Trade Marks Act, 1999—Sections 135, 134 and 124(5)—Code of Civil Procedure, 1908—Order XXXIX, Rules 1 and 2 and Order XLIII, Rule 1(r)—Suit for infringement of trade mark, i.e., action for passing off—Filed by respondent, running business of manufacture and sale of paint brush, having its registered trade mark “Bekay”—Against appellant who was also in same business and its paint brush had registered trade mark name “Super Beekay”—In such suit Court has ample power to grant interim injunction also on grounds not specified in Sections 135 and 124(5)—It is not restricted only to those grounds which are specified—However, when a rectification application for rectification of trade mark is pending—Court should restrict applicability of interim order of injunction only to period till disposal of that application—High Court modified order of trial Court accordingly, holding that all the three requirements for grant of interim order of injunction were satisfied that there was no error, permitting interference in appeal. [Paras 10, 14, 15, 17, 18, 20 and 25]
(C) Trade Marks Act, 1999—Sections 21 and 135—Code of Civil Procedure, 1908—Order XLIII, Rule 1(r)—Trade Mark—Registration of—Limitation of three months—Mentioned in Section 21—Is for opposing registration of trade mark by filing objection—This limitation is not applicable for filing suit for infringement of trade mark—Moreover, this point of limitation is to be considered by trial Court and not in appeal under Order XLIII, Rule 1(r), filed challenging interim order of injunction. [Para 24]
Honble Pankaj Mithal, J.—The parties to this appeal are litigating over a trade mark.
2. The plaintiffs are M/s. Ogal Trading Company and one of its partner engaged in the manufacturing and marketing of paint brushes under the trade name “BEKAY”. The defendant No. 1 M/s. Galaxy Brushware is a sole proprietorship firm and is also engaged in the business of paint brushes under the trade name “SUPER BEEKAY” whereas defendant No. 2 is its proprietor.
3. The plaintiff/respondents instituted a suit No. 80/08 against the defendant/appellants for infringement of trade mark which is legally called an action for passing off. The plaintiff-respondents claimed relief of perpetual injunction restraining the defendant/appellants from using the trade name “SUPER BEEKAY” for the paint brushes manufactured by them and for rendering true and complete accounts of the sale and profit made by use of such trade name which was said to be similar and deceptive to the registered trade mark of the plaintiff/respondents.
4. The suit was instituted on the allegation that the plaintiff/respondents are prior user of the trade mark “BEKAY” which is being used by them since 1998. They had applied for its registration as a trade mark on 10.8.1998 and the registration was granted vide registration certificate No. 814043 on 20.1.2005 w.e.f. 10.8.1998. The defendant/appellants as such have no right to use the trade mark “SUPER BEEKAY” for their paint brushes as it is quite similar and deceptive to the registered trade mark of the plaintiff/respondents. The defendant/appellants despite notice dated 14.1.2005 did not stop using the trade mark “SUPER BEEKAY” and in order to circumvent the same they got the aforesaid trade name “SUPER BEEKAY” registered on 5.4.2005.
5. In the suit an application for grant of interim injunction was also moved on the aforesaid facts.
6. The defendant/appellants opposed the interim injunction application by filing objections stating that they are using the trade mark “SUPER BEEKAY” since 1991 and have obtained its registration bearing No. 1348936 which has been granted to them with effect from 10.11.2004. Thus there is no infringement of any trade mark rights on their behalf. The suit is barred by time and as the application of the plaintiff/respondents for the rectification is pending, the suit is not liable to proceed.
7. The application after consideration was finally allowed by the Court below by the impugned judgment and order dated 30.5.2009 and the defendant/appellant has been restrained from using the trade mark “SUPER BEEKAY” during the pendency of the suit. Aggrieved, the defendant/appellants have preferred this first appeal from order.
8. I have heard Sri Farman Naqvi, learned counsel for the defendant/appellants and Sri Manoj Mishra, learned counsel appearing for the plaintiff/respondents. The parties have already filed their affidavits annexing all the relevant documents which they want to rely upon and were said to be part of the record of the Court below. They have agreed for final disposal of the appeal at the admission stage. Accordingly, I am proceeding to decide the same finally.
9. The first argument of Sri Naqvi on behalf of the defendant/appellants is that the defendant/appellants are the registered owners/users of the trade mark “SUPER BEEKAY” since 1991 and, as such, being the prior user vis-a-vis the plaintiff/respondents they cannot be stopped from using it.
10. The Court below after considering the material on record has returned a specific finding that the plaintiff/respondents are prima facie the prior user of the trade mark “BEKAY” vis-a-vis defendant/appellants. To test the above finding I have carefully examined the documents on record. The plaintiff/appellants have applied for registration of trade name “BEKAY” on 10.8.1998 which registration was granted vide certificate dated 20.1.2005. The certificate categorically states that it is effective from 10.8.1998. The application as well as the cert
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