* IN THE HIGH COURT OF DELHI AT NEW DELHI

%

Date of decision: 20.08.2010

+ FAO (OS ) NO.1 OF 2010 and CM No.51/2010

WHEELS INDIA

…APPELLANT

Through: Mr.Mohan

Vidhani

and

Mr.

Rahul Vidhani, Advocates.

NIRMAL SINGH & ORS.

...RESPONDENTS

Through: Mr.Ajay

Sahni,

Mr.Siddharth

Bambha and Mr.Devanshu Jain,

Advocates.

CORAM:

HON'BLE MR. JUSTICE SANJAY KISHAN KAUL

HON’BLE MR. JUSTICE VALMIKI J. MEHTA

1.

Whether the Reporters of local papers

may be allowed to see the judgment?

NO

2.

To be referred to Reporter or not?

NO

3.

Whether the judgment should be

NO

reported in the Digest?

SANJAY KISHAN KAUL, J. (ORAL)

1.

The appellant filed a suit for infringement of trademark,

passing off, rendition of accounts etc. against the

respondents in respect of wheel covers for use in motor

vehicles and other allied and cognate goods being used

as accessories in such motor vehicles under the

2010:DHC:4129-DB

trademark ‘PRINCE’. The appellant also filed an

application seeking interim relief under Order 39 Rules 1

and 2 of the Code of Civil Procedure, 1908 (‘the said

Code’ for short). The claim of the appellant was

predicated on a registered trade mark since 27.09.2004

with the allegation that the respondents had come into

the trade subsequently to tarnish the reputation and

goodwill of the appellant. An interim order was granted

in favour of the appellant on 02.06.2006. However, on

the respondents moving an application under Order 39

Rule 4 of the said Code, interim order was modified on a

statement of the counsel for the appellant that the

appellant had no objection if the respondents continue

using their firm name as ‘PRINCE Auto Industries’ but

they should not use the trademark ‘PRINCE’. The said

two applications for stay and vacation of stay were,

thereafter, decided in terms of the impugned order dated

15.10.2009. The application filed by the appellant under

Order 39 Rules 1 and 2 of the said Code was dismissed

and the interim orders were vacated. The present appeal

has been preferred against the said order.

2.

A reading of the plaint filed by the appellant shows that

the appellant claims continuous, open and extensive use

of the mark ‘PRINCE’ since April, 2001 with huge sales

though the mark ‘PRINCE’ is stated to have been

registered on 27.09.2004 in respect of the accessories

2010:DHC:4129-DB

used in cars included in Class 12. The appellant claims

to have come to know in May, 2006 that the goods of

respondents were in the market with the identical trade

mark ‘PRINCE’. Respondents filed their written statement

and contested the pleas raised by the appellant. The

respondents claimed that R-2 had adopted the trade

mark/trade name ‘PRINCE Auto Industries’ in the year

1998 which was much prior to the alleged adoption of the

trademark ‘PRINCE’ by the appellant in the year 2001.

The respondents alleged suppression of facts by the

appellant. The most important suppression is stated to

be non dis-closure of the fact that the appellant was one

of the authorized stockiest of R-2 since the year 2001

and, in fact, subsequently had entered into the written

agreements dated 19.08.2002 and 20.09.2002 in that

capacity. The registration of the mark by the appellant is

alleged to be fraudulent soon after R-2 ceased to have

any business dealing with the appellant on account of the

alleged

defaults

in

payments

due

to

R-2.

The

respondents have filed documents in support of the plea

including the appellant’s application for registration to

the sales tax authorities in September, 2001 as

distributor of R-2 which fact is endorsed on the sales tax

certificate of the appellant.

3.

In order to arrive at the conclusion, learned Single Judge,

in our considered view, has rightly framed the question

2010:DHC:4129-DB

as to whether the appellant being a prior user since 1998

of the