The central legal point established in the judgment is the protection of distinctive marks, statutory rights and remedies under the Trade Marks Act, 1999, and the principles of passing off in cases of infringement.

JUDGMENT :

Manmohan, J.

1. The present appeal has been filed against the ex-parte injunction order dated 20th December, 2007 passed by the learned Single Judge. The trial court after holding that the plaintiff's/Respondent's Mark HAJMOLA was a well known mark u/s 2(zg) of the Trade Mark Act, 1999 held that the Defendant's mark RASMOLA for the same product was deceptively similar and likely to cause confusion in the minds of the customers of these products, especially children. Consequently, by virtue of the impugned order, the learned Single Judge restrained the Appellant/Defendant from using the mark RASMOLA and in particular the suffix MOLA in respect of the digestive tablets manufactured and sold by it.

2. At the outset, we suggested to both the parties that we would request the learned Single Judge to expeditiously dispose of the injunction application, as any decision by us would deprive either of the party to a right of appeal. However, Mr. Arun Jaitley, learned Senior Counsel for Appellant submitted that as the learned Single Judge had not disposed of either the injunction application or the Appellant's application for vacation of injunction within thirty days, the present appeal was maintainable. In any event, both the parties requested this Court to dispose of the present appeal on merits. Consequently, with the consent of both the parties the present appeal is being taken up for disposal.

3. Mr. Arun Jaitley, learned Senior Counsel for the Appellant has contended that the Appellant has been using the mark RASMOLA for its product namely digestive tablets since 1989. He further contended that the Appellant's mark had been registered vide Certificate dated 3rd July, 1996. Consequently, Mr. Arun Jaitley submits that no suit for infringement is maintainable against the Appellant.

4. Mr. Arun Jaitley further contended that the suffix MOLA is not an invented word of the Respondent/plaintiff and the latter had no monopoly in the said word. In fact, according to the Appellant, the word MOLA is common to the trade as more than 25 trademarks are registered with the suffix MOLA. Mr. Arun Jaitley stated that variants of MOLA for digestive tablets are commonly available in the market.

5. According to the Appellant, the Respondent/plaintiff had obtained the impugned ex-parte injunction order by concealing and suppressing vital facts as well as by making misrepresentations before the learned Single Judge. It was contended that the Respondent/plaintiff had concealed the fact of filing of three earlier suits by it, against the user of marks SIDHMOLA, SATMOLA AND CHATMOLA being Suit No. 1644/1998, Suit No. 62/2006 and Suit No. 765/1993. In all the aforesaid three suits, the Respondent/plaintiff had got no relief and it subsequently compromised the suits by permitting those three parties to use the marks SIDHMOLA, SATMOLA AND CHATMOLA.

6. It was further contended that the Respondent/plaintiff's suit is hit by law of acquiescence and delay as the Respondent/plaintiff had knowledge of adoption of user of the mark RASMOLA for a long time. In this connection Appellant relied upon back to back advertisement of Appellant and Respondent's products on national TV channels like Star Gold, Set Max and Doordarshan in the years 2005 and 2006. It was further alleged that the Respondent/plaintiff had been aware of the user of the trade mark RASMOLA for a long time but despite their knowledge, they knowingly made misrepresentation in the plaint about the Appellant's adoption and user of the mark RASMOLA as of December, 2007. Learned Senior Counsel for Appellant referred to the cause of action paragraph in the plaint as well as the notice of opposition dated 25th July, 2007 to the Appellants trademark application which in turn explicitly stated that the Appellant had been using the mark since April 1993. In this connection the Appellant relied upon a judgment of Division Bench of this Court in B.L. and Co. and others Vs. Pfizer Products Incl. (2001) 93 DLT 34