IMPORTANT POINT
The failure to renew a trademark registration leads to abandonment, allowing subsequent users to claim rights.

JUDGMENT :

Laxmi Narayana Alishetty, J.

Since the parties to the appeals are one and the same and the issues involved in both the appeals are interconnected, both the appeals are heard together and are disposed of by this common judgment.

2. Heard Sri Bankatlal Mandhani, learned counsel for the appellant, as well as Sri P.Venkatarama, learned counsel for the respondents. Perused the entire material available on record.

3. CMA.No.544 of 2023 is filed challenging the order dated 06.10.2023 passed by the XII Additional Chief Judge, Secunderabad, in I.A.No.10 of 2023 in O.S.No.2 of 2023. The said I.A.No.10 of 2023 was filed to restrain the respondent therein from using the trade mark ‘PRITI’ in relation to the sewing machines of his manufacture and the same was allowed by the trial Court.

4. CMA.No.548 of 2023 is filed challenging the order dated 06.10.2023 passed by the XII Additional Chief Judge, Secunderabad, in I.A.No.564 of 2020 in O.S.No.54 of 2020. The said I.A.No.564 of 2020 was filed for grant of temporary injunction against the defendant from dealing or selling sewing machine with the Trade brand word ‘PRITI’ to any person pending disposal of the suit and the same was dismissed by the trial Court.

5. Succinctly stated, the facts of the case, shorn off unnecessary details, are that originally, the appellant’s father started manufacturing machines with trade brand name 'PRITI', after obtaining necessary license from the authorities. He migrated from Delhi to Hyderabad. The appellant’s father also registered the brand word 'PRITI' with Registrar of Trade Marks which was continued till 2013. The appellant’s father opened a Sales outlet of 'PRITI' sewing machine and obtained various trade licenses and General Sale Tax Registration Certificate, etc. in the name of appellant’s mother-Usha Gupta in the year, 1974. Since then, the appellant’s mother carried on the business of sale of sewing machine under the trade name and style of M/s 'PRITI' Sewing Machine Company and necessary licenses were issued for the said business in the name of appellant’s mother. After the death of appellant’s mother in the year 2019, the appellant succeeded the business of selling sewing machines under the trade brand name 'PRITI' by obtaining necessary licenses.

5.1. While so, the appellant came to know through Google search in second week of September, 2020, that the respondent applied for registration of the word 'PRITI' for doing sewing machine business in the year, 2017 and he is passing off in the name of 'PRITI Sewing Machine' since 2017. The appellant and his mother developed the sale of 'PRITI' trade brand sewing machine and got published the advertisements in daily newspaper. Therefore, the appellant is not only the proprietor, but also the owner of the trade mark by name 'PRITI’. But since 2017, the turnover was reduced and on his enquiry, the appellant came to know that the respondent is doing passing off business under the trade name of ‘PRITI’.

5.2. The appellant issued notice to respondent to stop the passing off business, but he replied that he is doing business of selling of sewing machines with the trade name of 'PRITI' since 2008 and got registration of the trade mark "PRITI" with the Registrar of Trade Marks on 10.07.2019. The appellant is the prior user and first in the market with the trade name 'PRITI for sewing machines and hence, he is only having right to do the business. The respondent obtained the registration of trade mark by name 'PRITI in the year 2019. So, he cannot do business with the brand name of 'PRITI' for selling sewing machines. The prima facie case and balance of convenience are in favour of the appellant. So, the respondent should be injuncted from doing the business under the name and style of "PRITI' Sewing Machine.

6. The respondent filed counter denying the allegations made in the petition and concisely, the averments are that the respondent was engaged in the business of manufacturing and marketing various varietie