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This Product is Licensed to Mr. V. Ponnusamy, Advocate, Karur

Citation :- CDJ 2002 BHC 1453

Court : High Court of Judicature Case No : NOTICE Judges: THE

at Bombay

OF MOTION NO.1999 OF 1999 IN SUIT NO.3361 OF 1999

HONOURABLE MR. JUSTICE D.K. DESHMUKH (P) Ltd. & Another Versus Chembond Chemicals Ltd. & Another Mr. Ravi Kadam i/b. Mr. V.S. Hegde, for the Plaintiffs. Mr. Virendra Tulzapurkar i/b M/s.Veena Advani, for the

Parties : Agromore

Appearing Advocates :

Defendants.
Date of Judgment : 21-03-2001 Head Note :-

Trade and Merchandise Marks Act, 1958, Section 105 & Section 44-Code of Civil Procedure, 1908, Order 39, Rule 1 & Rule 2Case Law Referred : 1.Scan Decor Development AB vs. Scan Decor Marketing AB and another 1999 F.S.R. 26 (Para 5). 2.Biochem Pharmaceutical Industries v. Bioche Synergy Limited 1998 P.T.C. 18 (Para 7). 3.M/s. Gujrat Bottling Co. Ltd. and ors. vs. Coca Cola Company and others AIR 1995 SC 2372 (Para 8). 4.S.P. Chengalvaraya Naidu v. Jagannath AIR 1994 SC 853 (Para 8). 5.The Indian Association of Thermometry and others vs. M/s. Hicks Thermometers (India) Ltd. and another 1981 P.T.C. 121 (Para 6). 6.Indo-Pharmaceutical Works Put. Ltd vs. Pharmaceutical Company of India 1977 (Vol. LXXX) Bom.L.R. 73 (Para 10). 7.Star Industrial Company Limited vs. Yap Kwee Kor (Trading as New Star Industrial Company) 1976 F.S.R. 256 (Para 6). 8.Consolidated Foods Corporation v. Brandon and Co. Pvt. Ltd. AIR 1965 Bom. 35 (Para 8). 9.Shankerlal and another vs. Jethmal and another AIR 1961 Raj. 196 (Para 8). 10.M/s. S.C. Cambatta and Co. Pvt. Ltd. v. Commissioner of Excess Profits Tax, Bombay AIR 1961 SC 1010 (Para 6). 11.Maqsood Ali vs. Zahid Ali Sabzposh AIR 1954 All. 385 (Para 8). 12.Mt. Zabaishi Begam v. Naziruddin Khan AIR 1935 All. 110 (Para 8). 13.Abdul Cadur Allibhoy vs. Mahomedally Hyderally 3 Bom. L.R. 220 (Para 8). 14.Lavergne and another vs. Hooper I.L.R. (VIII) Mad. 149 (Para 6). COMPARATIVE CITATIONS: 2002 (1) BLR 853, 2002 (2) ALL MR 711, 2002 (5) BCR 392, 2002 (5) MAH.L.J 542, 2002 (25) PTC 532
Judgment :-

P.C. This is a Notice of Motion taken out by the Plaintiff. The Plaintiff has filed this suit claiming therein that it is a Company incorporated under the Companies Act and that it carries on business of the manufacture and sale of wide range of Industrial and Agro Chemical products and in export market. The Plaintiff claims that it is leading and well-known manufacturer and dealer in wide range of Industrial and Agro Chemical products and are carrying on business for the last nearly 4 decades throughout the country and in export markets. It claims that it is manufacturing and marketing their products under the distinctive trade mark. It claims that it has 90 products. It claims that the annual sale turnover of all the products of the Plaintiff during the last ten year ranges between Rs. 1.45 crores and Rs. 2.58 crores respectively. It is claiming that one of the Industrial Chemical Products of the Plaintiff: is manufactured and marketed by them under the trade mark RODINE. The product of the Plaintiff bearing the trade mark RODINE is used in the form of Acid Inhibitor for Pickling and for Industrial cleaning. It is claimed that the Plaintiff has manufactured the product RODINE under strict international standard of quality and is marketing the said products continuously, extensively and uninterruptedly throughout the country and in certain export markets for the last nearly four decades. It is further claimed that the trade mark RODINE has come to be
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exclusively identified and associated by members of trade and consumers with the Plaintiff and no one else. The Plaintiff has annexed to the plaint a statement giving annual sales turnover of all the products and product bearing the trade mark RODINE for the period from December, 1960 to March, 1998. In the affidavit filed in support of the Notice of Motion, in paragraph (7) it is claimed that the Plaintiff has been manufacturing and marketing the product bearing the trade mark RODINE on extensive scale in India and export markets since 1959. The Plaintiff further claims that on 8th April, 1994, the Plaintiff made an application for registration of the trade mark RODINE in their name in Class I under No. 626174 in respect of chemical product used in Industries under the 4th Schedule to the Trade and Merchandise Marks Act, 1958. The Plaintiff further claims that they are also proprietor of the trade mark ROTODINE. The trade mark ROTODINE has been registered in India under No. 378342 dated 13th July, 1981 in class I of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959. The Plaintiff claims that in or about January, 1998, it came to the knowledge of the Plaintiff that the Defendant No. 1 was selling an identical product as that of the Plaintiffs product RODINE under the trade mark RODINE - 58. Therefore, the Plaintiff issued a notice dated 12th January, 1998 to the Defendant No. 1 pointing that use of the trade mark RODINE by the Defendant No.1 amounts to passing off and calling upon the Defendant No. 1 to discontinue the use of the trade mark RODINE. As the Defendant No. 1 did not comply with the Notice, the Plaintiff filed this suit claiming that the Plaintiff being the much prior user and the prior applicant for registration of the trade mark RODINE and the prior registered proprietor of the trade mark of the ROTODINE and the Defendant No. 1's trade mark being deceptively identical, phonetically, visually and structurally similar to the Plaintiffs trade mark RODINE and the registered trade mark ROTODINE, the Plaintiff has a right to prevent the Defendants from manufacturing and selling its industrial chemical products under the identical trade mark RODINE. The action of the Plaintiff, therefore, in so far as the trade mark RODINE is concerned, is for passing off and in relation to their trade mark ROTODINE, it is for infringement of their registered trade mark. In substance, therefore, the case disclosed by the Plaintiff in the plaint is that they are using the trade mark RODINE right from the year 1959. In 1994, they have applied for registration of that trade mark and therefore they have acquired a common law rights to prevent the Defendants from passing of its products by using the trade mark RODINE as that of the Plaintiff. It is further the case of the Plaintiff that the trade mark of the Defendant RODINE-58 is deceptively similar to the registered trade mark of the Plaintiff namely ROTODINE and therefore, the Defendants have infringed the registered trade mark of the Plaintiff and therefore, on both these counts the Plaintiffs are entitled to a perpetual injunction against the Defendants preventing them from selling their product under the trade mark RODINE. 2.The Plaintiffs by this Notice of Motion claim temporary injunction in the same terms in which a perpetual injunction is claimed in the plaint. 3.The Defendants filed their first affidavit in the Notice of Motion, which is dated 29th June, 1999. The Defendants disputed the claim of the Plaintiffs that it is using the trade mark Rodine exclusively in proprietary rights since 1959. The Defendants contend that a U. S. based Company having world wide presence by name Amchem Products Incorporated was the inventor and the proprietor of the know how and the trade name of the product since more than four decades. The said Company was the proprietor in India of the registered Trade mark Rodine No. 117735 (Rodine) since 5th January,1946. It is further claimed that the said company had invested in the Plaintiff and had permitted the Plaintiff in or about 1963 to use its know-how and trade mark of the product in question and for that purpose, the Company had on 15th May, 1963 formally assigned its trade mark with a right to obtain reassignment to the Plaintiff. It is claimed that the Plaintiff by an agreement dated 16th August, 1973 had reassigned the trade mark to the said Company and by an agreement of the same date namely 16th August,1973 the said Company granted the Plaintiff permissive right to use the trade mark RODINE along with other trade mark. It is further claimed that in or about 1980 World-wide operation of the said US company Amchem including the said product and other were acquired and taken over by Henkel product and since then, Henkel is the proprietor of know-how and the trade mark of the said product. It is claimed that on or about 26th December, 1988, the formal merger took place of Amchem Product and Parker Chemical Company into Henkel Corporation. It is further claimed that Henkel has formed a joint venture Company in India with the Defendant and has granted to the Defendant No. 1 with Reserve Bank of India permission, rights to use the know-how and trade name of the product in question by an agreement. It is claimed that the Defendant No. 2 is thus exclusively entitled to the use of the know-how and trade name of the said product under licence from the owner and proprietor. According to the Defendants, it is the Plaintiffs/Company, which are pirating and are in default and are liable to be dealt with in accordance with law. The Defendants along with their affidavit have filed a copy of an agreement dated 15th May, 1963, which shows that number of trade mark including the trade mark Rodine were assigned by the Amchem Corporation to the Plaintiff. The Defendants have also filed with their affidavit in reply a copy of an agreement dated 16th August, 1973, by which several trade marks including the trade mark Rodine were reassigned by the Plaintiffs to Amchem Corporation. After this affidavit-in-reply was filed, on behalf of the Plaintiff rejoinder was filed, which is dated 6th August, 1999. In rejoinder, the Plaintiffs admitted the fact of assignment of Trade mark by Amchem to the Plaintiffs in the year 1963 and reassignment of the trade mark by the Plaintiff to the said Amchem Corporation. It was claimed, however, that the assignment deed has not been recorded with the Trade Mark Registrar. It is also claimed that the Plaintiff/Company is the owner of the trade mark Rodine, which is being used by it for the last 40 years, without any obstruction and it's application for registration of that trade mark is also pending. One more affidavit-in-rejoinder came to be filed by the Plaintiff dated 30th August, 1999. In that affidavit, it is claimed on behalf of the Plaintiff that the said Amchem Corporation as also its successors are not the owner of the impugned mark Rodine in India since they have not used the said trade mark and also in view of the fact that the registration of the
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said trade mark has not been renewed by them from the year 1977. The Plaintiffs have reiterated that the Plaintiffs have been using the trade mark Rodine since the year 1959 continuously. The Plaintiffs have filed one more affidavit dated 14th August, 2000 reiterating their claim that the Plaintiffs have been using the trade mark Rodine from 1959. It is stated in that affidavit that "Even after 1973 royalty statement continued to be sent to Amchem by the Plaintiff and Amchem was well aware of the use of the trade mark Rodine by the Plaintiff even beyond 1978 i.e. even after royalty payments ceased." The Plaintiffs claim that reassignment of the trade mark by the Plaintiffs to the said Amchem Corporation was merely a formality. In this affidavit, it is claimed that Amchem abandoned the trade mark by its conscientious and deliberate act of non-renewal of the Trade mark Rodine in 1977 when it became due. The Defendants have claimed in their reply that the Plaintiff is guilty of suppressing relevant and material facts from the Court and therefore, it is not entitled to any temporary injunction. grant of which is in the discretion of the Court. According to the Defendants, Henkel, which is a successor of Amchem Corporation is a necessary party to the suit and as Henkel Corporation has not been Joined as a Defendants in this suit, the suit is bad for non-joinder of necessary party and therefore for these reasons also the Plaintiff is not entitled to temporary injunction, which it is seeking by this Notice of Motion. 4.Apart from the documents, which are annexed to the plaint as also the documents, which have been filed along with the affidavits at the hearing of the Motion, a copy of an agreement dated 16th August, 1973 between the Plaintiff and the said Amchem Corporation has been placed on record. By that agreement, the Amchem Corporation permitted the Plaintiff to use their trade mark in India. According to this agreement, the agreement was to be in force for initial period of 5years from the date of agreement and was to continue thereafter subject to 12 months notice in writing from the either party to the agreement. The Plaintiff by that agreement agreed that they will use the trade marks which are subject matter of this agreement clearly indicating that Amchem Corporation is the proprietor of the trade mark and that the Plaintiff is using it by way of a licence. The agreement of assignment in the year 1963 shows that the trade mark Rodine was registered in favour of Amchem Corporation on 5th January, 1946. It was stated at the hearing that as per the law then in force, the registration of the trade mark continued for a period of 15 years. Thus, the registration of the trade mark on 5th January, 1946 as per the law then in force would continue till 1961. On behalf of the Defendants, a copy of trade mark journal dated 1st April, 1947 has been produced, which shows that the trade mark Rodine bearing No. 117735 was registered in favour of the Amchem Corporation. On behalf of the Defendants, a copy of trade mark journal dated 1st April, 1975 has been produced, which shows that the trade mark was renewed in the year 1975. It was, thus claimed on behalf of the Defendants that registration of the trade mark Rodine in favour of Amchem Corporation was current till January, 1982. This position was not disputed by the Plaintiffs. 5.The learned Counsel appearing for the Plaintiffs submits that the Defendants are passing of their business and goods as that of the Plaintiffs by using the trade mark Rodine. The learned Counsel submits that in a passing off action the Plaintiffs are required to establish three things. (i) goodwill in the business in which the trade mark is used in goods supplied by the Plaintiffs in the mind of public in India; (ii) a misrepresentation (intentional or otherwise) by the Defendants that the goods supplied by the Defendants are goods of the Plaintiffs; (iii) Likelihood of damage; According to the Plaintiffs, these three ingredients have to be established by the Plaintiffs in order to entitle them to an injunction against the Defendants on the material date and historical reference to the origin are immaterial. According to the Plaintiff, the material date is February, 1998, the time when the Plaintiff found that the Defendants are passing of their goods as that of the Plaintiff. According to the learned counsel, who so ever might have been the registered owner of the trade mark previously, in the year 1998, the Plaintiff had become the proprietor of the trade mark by long user thereof and therefore, the Plaintiff has established that it has goodwill in the business. In support of this contention, the learned counsel relied on a judgment of the Court of Appeal in the case of Scan Decor Development AB vs. Scan Decor Marketing AB and another 1999 F.S.R. 26. The learned Counsel mainly relied on the following observations from the judgment: "Although the Judge carefully traced the history of the relationship of the parties and their trading activities in different territories and in different products, he focused mainly on entitlement to the goodwill at the time of the proceedings. As a general rule, the goodwill which it is sought to protect must exist at the date of proceedings. That is therefore the correct date on which to concentrate." 6.The learned Counsel further submits that the Plaintiff has used the trade mark as registered proprietor from 1963 till 1973. He submits that even on reassignment of the trade mark on 16th August, 1973, the goodwill in the business continued to remain with the Plaintiff. The learned counsel submits that subsequent to 16th August, 1973 the Plaintiff used the trade mark in their own right, independently and without any control of the Defendants. Hence, he submits that goodwill for the period from 1973 to 1978 also accrued to the Plaintiffs. The learned Counsel contended that in 1978 the said Amchem Corporation abandoned their business in India and severed their connection with the Plaintiff. According to the learned Counsel, after the Amchem Corporation abandoned their business in India, the Plaintiff continued to use the trade mark Rodine and therefore, because of the continued user of the trade mark by the Plaintiff from 1978 onwards, the Plaintiff acquired common law rights to prevent anybody else from using that trade mark. The learned counsel submits that the property in a trade mark is a transitory and not permanent and therefore once that trade mark was abandoned in India by Amchem Corporation and the Plaintiff picked it up and continued using it the Plaintiff by long user became the proprietor of that trade mark. In support of this proposition, the learned Counsel relies on a judgment of the Privy Council in the case of Star Industrial Company Limited vs. Yap Kwee Kor (Trading as New Star Industrial Company) 1976 F.S.R. 256, and especially on following observations from that judgment : "A passing-off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to
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be injured by the misrepresentation made by passing-off one person's goods as the goods of another. Goodwill, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill the goodwill in that country perishes with it although the business may continue to be carried on in other countries." The learned counsel also relies on a judgment of the Supreme Court in the case of M/s. S.C. Cambatta and Co. Pvt. Ltd. v. Commissioner of Excess Profits Tax, Bombay AIR 1961 SC 1010, to point out what amounts to the goodwill. The learned Counsel also relies on a judgment of the Delhi High Court in the case of The Indian Association of Thermometry and others vs. M/s. Hicks Thermometers (India) Ltd. and another 1981 P.T.C. 121. He relies especially on the following observations from that judgment : "At this stage, it is only the validity of his claim, which is to be considered. The respondents were in fact with in the trade mark. first as a registered users and thereafter without registration. After 4.2.1972 the foreign proprietors abandoned the trade mark. They did not renew the registration although the respondents informed them about it. They also did not raise any objection to the respondent's filing an application for the registration of the trade mark in its own name. although an express notice was sent by the respondents. This is sufficient evidence of abandonment. The respondents were first person to pick up this abandoned trade mark. They had reasons to do it." The learned Counsel also relies on a judgment of the Madras High Court in the case of Lavergne and another vs. Hooper I.L.R. (VIII) Mad. 149. In nut shell, the submission of the learned Counsel is that in 1978, Amchem Corporation abandoned their trade mark, in as much as they did not renew it. The Plaintiff continued its business in that Trade mark without any objection from the Amchem Corporation, with the result in 1994 the Plaintiff applied for registration of its own trade mark Rodine and by 1998 the Plaintiff had established its goodwill and its proprietary rights in the trade mark Rodine and therefore, the Plaintiff had acquired a common law right to prevent the Defendants from passing off its goods under that trade mark. 7.The learned Counsel further submits that they are registered owner of trade mark Rotodine. The trade mark Rodine being used by the Defendants is deceptively similar to the registered Trade mark of the Plaintiff and therefore the Plaintiff is entitled to an injunction restraining the Defendants from infringing the trade mark of the Plaintiff namely Rotodine. The learned counsel submits, relying on the judgment of the Single Judge of this Court in the case of Biochem Pharmaceutical Industries v. Bioche Synergy Limited 1998 P.T.C. 18, that a registered proprietor is also entitled to an injunction to enforce his right as a registered owner of the trade mark and that at interlocutory stage the Court will not go into the conduct of the registered owner in getting his trade mark registered. 8. On behalf of the Defendants, the learned Counsel for the Defendants, submits that the Plaintiff is guilty of suppressing the relevant and material facts from this Court. It is submitted that so far as the claim of the Plaintiff in relation to passing off is concerned, in a suit for passing off the Plaintiff has to establish the Plaintiffs own reputation, the Plaintiff is first required to establish its ownership of the trade mark and thereafter reputation of its mark. The ownership of a mark can be acquired either by independently adopting the mark and using the same or by adopting a mark and by applying for registration of the same with intention to use it. In support of this proposition, the learned Counsel relies on a judgment of this Court in the case of Consolidated Foods Corporation v. Brandon and Co. Pvt. Ltd. AIR 1965 Bom. 35. Thus, in order to succeed in a passing off action, according to the learned Counsel, the Plaintiff has to first plead as to how he acquired the trade mark. In support of this proposition, the learned Counsel relies on a judgment of this Court in the case of Abdul Cadur Allibhoy vs. Mahomedally Hyderally 3 Bom. L.R. 220. The learned counsel further submits that in so far as averments in the plaint and the affidavit filed in support of the motion are concerned, the Plaintiff has pleaded that it started using the trade mark in 1959 and it has acquired proprietary rights in the said trade mark by using it from 1959. The learned Counsel submits that thus the Plaintiff made the claim of using the trade mark since 1959 exclusively, however, while making that claim the Plaintiff omitted to state and disclose a fact, which was within their knowledge that the said trade mark was registered in favour of Amchem Corporation in the year 1946. That in the year 1963, Amchem Corporation assigned that trade mark to the Plaintiff, that in the year 1973 that trade mark was reassigned by the Plaintiff to Amchem Corporation and that in the same year 1973 the Plaintiff entered into the user agreement with the said Amchem Corporation. The learned Counsel thus submits that the Plaintiff suppressed from the Court these facts, which were relevant to their claim of claiming ownership and proprietary rights in the trade mark Rodine from the year 1959. The learned Counsel, therefore, submits that thus the Plaintiff is guilty of suppression of material facts, which were within the knowledge of the Plaintiff. The learned Counsel relying on the judgment of the Supreme Court in the case of S.P. Chengalvaraya Naidu v. Jagannath AIR 1994 SC 853, submits that as the Plaintiff had suppressed these material and relevant facts from this court, the Plaintiff is not entitled to any relief at the hands of this Court. In any case, the Plaintiff is not entitled to grant of temporary injunction, grant of which is in the discretion of the Court. The learned Counsel also relies on the observations of the Supreme Court it is judgment in the case of M/s. Gujrat Bottling Co. Ltd. and ors. vs. Coca Cola Company and others AIR 1995 SC 2372. The learned Counsel submits that in the affidavit, the Plaintiff has modified its case and now the Plaintiff is claiming that it acquired the trade mark after it was abandoned by the Amchem Corporation. According to the learned, Counsel an inference of abandonment of the trade mark by the Amchem Corporation is drawn by the Plaintiff, because according to the Plaintiff the said Amchem Corporation did not take any steps for renewal of its trade mark Rodine in the year 1978. The learned Counsel submits that the statement that the trade mark Rodine was due for renewal in the year 1978 is factually wrong. It was within the knowledge of the Plaintiff that the registration of the trade mark Rodine in favour of the said Amchem Corporation was
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current till the year 1982, because the Plaintiff had entered into the user agreement in the year 1973 and it was using the trade mark from 1973 pursuant to the licence granted by Amchem Corporation, Therefore, the Plaintiff has made deliberate misstatement of the fact. The learned Counsel submits that in the affidavits, the Plaintiff has drawn inference of abandonment of the trade mark by Amchem Corporation, because of their not taking any steps in the year 1978 for renewal of the trade mark and as now it is established on record that renewal of that trade mark was not due in 1978, as the trade mark continued to be registered till 1982, there is no material on record placed by the Plaintiffs to draw any inference about the abandonment of the trade mark by Amchem Corporation. The learned Counsel submits that, in any case, now if the basis of the claim made by the Plaintiff is alleged abandonment of the trade mark by Amchem Corporation, a finding of abandonment of the trade mark by Amchem Corporation in the year 1977 cannot be recorded by this Court in the absence of the Plaintiffs Joining the said Amchem Corporation or its successor as a Defendant in the suit. The learned Counsel submits that thus the successor of Amchem Corporation is a necessary party to the suit. The learned counsel submits that the Defendants have also disclosed in their first affidavit itself that they are not using the trade mark in their own right, but they are using the trade mark as licensee of the successor of the Amchem Corporation. Despite disclosure of this fact the Plaintiff has very promptly refused to Join the successor of Amchem Corporation as a Defendant in this suit. According to the learned Counsel, therefore, as the suit is bad for non-Joinder of necessary party, the Plaintiff is not entitled to any relief at the hands of this Court. In so far as the aspect of suppression of material facts by the Plaintiff is concerned, the learned Counsel appearing for the Plaintiff submits that registration of the trade mark in favour of Amchem Corporation in the year 1946, its assignment by the Amchem Corporation in favour of the Plaintiff in 1963, reassignment of the trade mark by the Plaintiff to Amchem Corporation in the year 1973 and the user agreement entered into between the Plaintiff and Amchem Corporation in the year 1973 are not relevant and material facts. The Plaintiffs case of passing off is based on the rights that it has acquired by the year 1998, when the Defendants started using the trade mark. Therefore, the only relevant facts to be considered in this suit are whether the Plaintiff has been using the trade mark in his own right for a considerable long period before 1998. Historical origin of the trade mark and the transaction entered into by the parties previously in relation to that trade mark are not relevant. The learned Counsel also submits that the successors of Amchem Corporation are also not a necessary party to this suit. In support of that submission the learned Counsel relies on a judgment of the Rajasthan High Court in the case of Shankerlal and another vs. Jethmal and another AIR 1961 Raj. 196, a judgment of the Allahabad High Court in the case of Maqsood Ali vs. Zahid Ali Sabzposh AIR 1954 All. 385, as also a Judgment of Allahabad High Court in the case of Mt. Zabaishi Begam v. Naziruddin Khan AIR 1935 All. 110. 9. The learned Counsel for the Defendants submits that mere non-renewal of the trade mark does not amount to abandonment and that there has to be material placed, which will indicate definite intention to abandon the use of the trade mark in the trade mark Rodine. He relies on a judgment of the Chancery Division in the case of Mouson & Co. vs. Boehm. The learned Counsel submits that exclusive use by the Plaintiff of the trade mark Rodine from 1959 is incapable of being accepted, as it was since 1946 a registered trade mark of the Amchem Corporation. The Plaintiffs claim of proprietorship in the trade mark will depend on the Plaintiff establishing abandonment of the trade mark by the Amchem Corporation. Acquisition of the title in the trade mark by the Plaintiff depends on the divestment of the title by Amchem Corporation. Therefore, for holding in fax our of the Plaintiff, this court will have to record a finding that Amchem Corporation abandoned the mark, that it ceased to be the owner of the trade mark, that the licence granted by Amchem Corporation in favour of the Plaintiff came to an end. According to the learned counsel, finding on these questions which are necessary to be recorded for accepting the case of the Plaintiff cannot be recorded in the absence of Amchem Corporation or its successor as a Defendant. 10. The learned Counsel further submits that in so far as the case of the Plaintiff that he is entitled to an injunction as registered owner of the trade mark Rotodine is concerned, according to the learned Counsel, the conduct of the Plaintiff disentitles him to injunction. The learned counsel submits that it is now established on record that the Plaintiff had entered into user agreement with Amchem Corporation on 16.8.1973. According to clause (8) of that agreement, the Plaintiff was under a duty to bring to the notice of the Amchem Corporation all the cases of passing off and infringement of the said trade mark. It was further provided in the agreement that in case any proceedings are required to be instituted by Amchem Corporation in relation to infringement or passing off of their trade mark, the costs of the proceedings are to be born by the Plaintiff. The learned counsel submits that thus under that agreement it was the duty of the Plaintiff to bring to the notice of Amchem Corporation, if anybody infringes their trade mark. Despite, this duty being imposed on the Plaintiff by the agreement entered into by the Plaintiff, the Plaintiff while the registration of Amchem Corporation of their trade mark was current till 1982 made an application in the year 1981 for registration of his own trade mark Rotodine, which according to the Plaintiff himself is deceptively similar to the trade mark Rodine. The learned Counsel submits that the conduct of the Plaintiff of making an application for registration of his Trade mark Rotodine was in breach of his contractual duty to Amchem Corporation. The learned Counsel further submits that even if it is assumed that for the purpose of this suit, despite his conduct, the Plaintiff has to be considered as a registered proprietor of the Trade mark Rotodine, in view of the fact that the Plaintiff is using the trade mark as a licensee of Henkel Corporation, which is a successor of Amchem Corporation, which was using the trade mark since prior to the date of the registration of the trade mark Rotodine in favour of the Plaintiff in terms of the provisions of Section 33 of the Trade Mark Act the Plaintiff is not entitled to injunction, which he is claiming. The learned Counsel, in support of this submission, relies on a judgment of this Court in the case of Indo-Pharmaceutical Works Put. Ltd vs. Pharmaceutical Company of
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India 1977 (Vol. LXXX) Bom.L.R. 73. 11. The learned Counsel appearing for the Plaintiff, on the other hand, submits that section 33 of the Act would not prevent this Court from granting injunction for infringement of the registered trade mark Rotodine on the basis of prior user of the trade mark by the Defendants. According to the learned Counsel, Section 33 has to be read with section 12(3) of the Act. In the submission of the learned Counsel, Section 33 operates only in favour of those persons, who are entitled to concurrent registration in terms of the provisions of Section 12(3) of the Trade Mark Act. 12. Now, the Plaintiff has instituted this suit under Section 105 of the Act. Section 105 of the Trade Mark Act lays down that a suit can be instituted in a Court, which is not inferior to the District Court, by the Plaintiff, who alleges that his registered trade mark has been Infringed or the Defendant is passing of his goods under the trade mark which is identical with or deceptively similar to the Plaintiff's trade mark; whether registered or unregistered. In the plaint, the Plaintiff claims that he is the proprietor of the trade mark Rodine, which is not registered trade mark, though he has applied for registration of the same and that the Defendants are marketing their products under a trade mark which is identical with or deceptively similar to the unregistered Trade mark of the Plaintiff namely Rodine. In short, according to the Plaintiff, the Defendants are passing off their goods as that of the Plaintiffs under the Trade mark Rodine. It is further the case of the Plaintiff that the Defendants have infringed their registered trade mark Rotodine by marketing their goods under the trade mark Rodine-58. According to tn. Plaintiff, trade mark Rodine is deceptively similar to the registered trade mark of the Plaintiff Rotodine. 13. In order to entitle the Plaintiff to temporary injunction in terms in which it is sought in this Notice of Motion, the Plaintiff will have to establish, prima facie, that they have proprietary rights in the trade mark Rodine. A person can acquire proprietary right in a trade mark by establishing that the mark was originated by him or that he has acquired it. In so far as the present case is concerned, the Plaintiff does not claim that he originated the trade mark. According to the averments in the plaint and the affidavit filed in support of the motion, the Plaintiff claims that it is manufacturing and marketing their product under the trade mark Rodine since 1959. Thus, the Plaintiff claims that they adopted trade mark Rodine in the year 1959 and thereby they acquired proprietary rights in that trade mark. Now an inquiry has to be made to find out as to whether the Plaintiff has established this case of acquisition of proprietary rights in the trade mark by user since 1959, it is now revealed on record that the trade mark Rodine was registered in favour of Amchem Corporation in January, 1946. I have already observed above that it is common ground before me that according to law then in force, the registration granted in 1946 was for a period of 15 years and obviously therefore the registration in favour Amchem Corporation of the trade mark Rodine was current and in force in 1959. Section 28 of the Act gives exclusive right to the registered proprietor of the trade mark to use the trade mark in relation to the goods in respect of which the trade mark is registered. Therefore, even if it is assumed that the Plaintiff started using the trade mark Rodine in the year 1959, the use of the trade mark Rodine by the Plaintiffs in the year 1959 was contrary to law and therefore, it will not confer any rights on the Plaintiffs. The trade mark was assigned to the Plaintiff in the year 1963 by Amchem Corporation and from 1963 till August, 1973 the Plaintiff was using the trade mark Rodine as assignee of the trade mark. However, in the month of August,1973, the trade mark was reassigned to Amchem Corporation by the Plaintiff. The Plaintiff, however, in its affidavit date 6th August, 1999 in paragraph 4 stated. "It is true that assignment of trade mark between the Plaintiff and Amchem Products Inc. (as it were prior to 26th April 1977), took place in the years 1963 and 1973, but the Plaintiff is enjoying uninterrupted usage of the trade mark Rodine for the past four decades without any objection whatsoever from any quarters much less from Amchem Products, Inc. or any of its successors, if any. As a matter of fact, none of the assignment deed has been recorded with the Trade Marks Registry." Thus, according to affidavit filed by the Plaintiff, the assignment of the trade mark by Amchem Corporation in favour of the Plaintiff in the year 1963 is not recorded with the Registrar of Trade Mark. In this connection, therefore, provisions of Section 44 of the Act become relevant. Section 44 of the Act reads as under: "(1) Whether a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title and the Registrar shall, on receipt of the application and on proof of title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register: Provided that where the validity of an assignment or transmission is in dispute between the parties. the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent court. (2) Except for the purpose of all application before the Registrar under subsection (1) or an appeal from an order thereon, or an application under Section 56 or an appeal from an order thereon, a document or instrument in respect of which no entry has been made in the register in accordance with sub-section (1), shall not be admitted in evidence by the Registrar or any Court in proof of title to the trade mark by assignment or transmission unless the Registrar or the Court, as the case may be, otherwise directs." It is, thus, clear that a person in whose favour trade mark has been assigned has to make an application for getting assignment recorded in the register in his favour. If the document of assignment in relation to which the entry has not been made by the Registrar in accordance with the provisions of sub-section 1 of Section 44 of the Act, the document cannot be admitted in the evidence, in any Court in proof of title of the trade mark, unless the Registrar or the Court otherwise directs. Thus, so far as assignment of trade mark by Amchem Corporation in favour of the Plaintiff in the year 1963 is concerned, the position that emerges on the basis of the above referred statement of the Plaintiff is that though agreement of assignment was entered into, the assignment was never recorded in the register, with the result Amchem Corporation continued to be the registered proprietor of the trade mark and the user of the trade mark by the Plaintiff from 1963 would, at best, be termed as a
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permissive user. In any case, in the year 1973, the trade mark was reassigned by the Plaintiff to Amchem Corporation and an agreement was entered into between Amchem Corporation and the Plaintiff, whereby the Plaintiff was to be permitted by Amchem Corporation to use the trade mark. It is further to be seen here that it is also clear from record that the registration of the trade mark in favour of Amchem Corporation was in force till the year 1982. The Plaintiff in its affidavit dated 14th August, 2000 in paragraph 39 has stated: "The Defendants have conveniently lost sight of the situation that existed all along right from 1959. Even after 1973 royalty statement continued to be sent to Amchem by the Plaintiff and Amchem was well aware of the use of the Trade mark Rodine by the Plaintiff even beyond 1978 i.e. even after royalty payments ceased." It appears from this statement that the Plaintiff is suggesting that from 1959 the Plaintiff was sending royalty statement and was making payment of royalty to the Amchem Corporation and that it continued to make that payment even after 1973 and that the Plaintiff ceased to make payment of royalty after 1978. It, thus, appears that the user of the trade mark by the Plaintiff, if at all from 1959, was permissive user. So far as the position after 1973 is concerned, there is an agreement on record by which Amchem Corporation permitted the Plaintiff to use the trade mark. Now so far as 1973 agreement is concerned, in paragraphs 2, 6, 7 & 8 it is stated as under: "2. The permitted User are desirous of using the said Trade marks in respect of the goods for which they are respectively registered (hereinafter termed "the contract products") and the Proprietors are agreeable to their using the said Trade marks to supplement such use of the said trade marks as the proprietors themselves may wish to make in India as import restrictions and other conditions combine to permit. 6. The said trade marks shall not be used in close proximity to any other trade mark and shall at all times be so described as clearly to indicate that they are the trade marks of the Proprietors and are being used only by way of licensed use by the Permitted Users. 7. This agreement shall be for an initial period of five years from the date of the Agreement above mentioned and shall continue thereafter subject to twelve months notice in writing from either party hereto to the other. 8. The Permitted Users shall be the sole registered users of the said trade marks but nothing contained or implied herein shall be constructed as preventing the Proprietors from using the said trade marks in India as import restrictions and other circumstances combine to permit." It is clear from the terms quoted above that under this agreement the Plaintiff was using the trade mark subject to the control by Amchem Corporation and the agreement permitted Amchem Corporation to use the said trade mark in India, in case the Import regulations so permit. It is, thus, clear that the use of the trade mark by the Plaintiff from 1959 appears to be permissive use and not an exclusive use in its own rights. Thus, prima facie, it is clear that the Plaintiff has failed to establish that they were exclusively using the trade mark Rodine as proprietor thereof since 1959. 14. Now, in the affidavit filed in the motion, the Plaintiff has slightly modified its case and according to them now Amchem Corporation abandoned the trade mark in the year 1978, the Plaintiff picked up that Trade mark and started using it exclusively and this exclusive user of the trade mark since 1998 by the Plaintiff confers on the Plaintiff common law right to prevent the Defendant from using that trade mark in the year 1978. Thus, the foundation of acquisition of this common law right by the Plaintiff is abandonment of the trade mark by Amchem Corporation in the year 1978. As observed above, there are no averments to be found in this regard in the plaint. The averments in this regard have been made for the first time in the affidavit filed in the motion, after reply was filed by the Defendants to the motion. In paragraph 39 of the affidavit dated 14th August, 2000, filed on behalf of the Plaintiff, it is stated that by agreement dated 15th May, 1963, the trade mark Rodine was absolutely and totally assigned in favour of the Plaintiff, however, reassignment made by the Plaintiff in favour of Amchem Corporation was only a formality with the sole purpose of enabling the Amchem Corporation to obtain any new trade mark registration without any hindrance. Thereafter, it is stated: "What followed thereafter is history in the sense that Amchem did not care to renew the Trade mark Rodine when it became due in 1977. In the meantime, the uninterrupted use of the Trade mark Rodine by the Plaintiff continued and its right to use the same even after the reassignment did not get extinguished. Further, the question of recording the plaintiff only as a registered user of the trade mark Rodine did not arise at all Amchem abandoned the trade mark by its conscientious and deliberate act of non-renewal of the trade mark Rodine in 1977 when it became due." It is clear from the statement made on oath by the Plaintiff that the Plaintiff draws an inference of abandonment of the trade mark by Amchem Corporation on two counts. Firstly, according to the Plaintiff, the assignment of Trade mark in favour of the Plaintiff in 1963 was absolute and reassignment of the year 1973 in favour of Amchem Corporation was a formality. In support of its claim that reassignment in favour of Amchem Corporation in the year 1973 was a formality, the Plaintiff relies on a paragraph in a letter dated 7th July, 1973 addressed to the Plaintiff by M/s. Remfry & Sons Patent and Trade mark Attorneys, Calcutta, who were acting for Amchem Corporation. Now, perusal of the letter dated 7th July, 1973, which is at Exh.B to the affidavit dated 14th August, 2000 filed on behalf of the Plaintiff shows that this letter is in reply to the letter of the Plaintiff dated 28.6.1973. It goes without saying that the contents of a reply cannot be understood properly, unless the letter to which this reply was sent is also placed before the Court. The Plaintiff, however, while relying on reply sent on behalf of the Amchem Corporation to their letter dated 28.6.1973 have Chosen not to place that letter on record. The Plaintiffs have relied on following paragraph from the reply. "Turning to the second enquiry we advise that Amchem Products, Inc., have applied for registration of certain trade marks and have run into difficulty because the Registrar has objected that they conflict with marks previously assigned to you by "AMCHEM". Even if you were to grant a letter of consent to the registration of the marks concerned the Registrar would not withdraw the objection of the ground of conflict and for that reason it is proposed that the registered marks concerned should be reassigned by you to Amchem and that application should thereafter be filed for your record as registered users." Now, this above quoted paragraph suggests that
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assignment of trade mark by Amchem Corporation in favour of the Plaintiff was recorded with the Registrar in the year 1963. However, there is a clear conflict between this version to be found in the letter and the statement made in the affidavit dated 6th August, 1999 on behalf of the Plaintiff, which has been quoted above, where the Plaintiff has clearly stated that assignment was not recorded with the Trade Mark Registrar. Now, if according to the Plaintiff the assignment was not registered, then, it is for the Plaintiff to explain as how it became necessary for the Amchem Corporation to have the trade mark reassigned by the Plaintiff to get other trade mark registered. No such explanation is given by the Plaintiff. Therefore, in the face of this clear conflict, it is not clearly established by the Plaintiff that the reassignment of the trade mark in favour of Amchem Corporation was merely a formality. In any case, in the face of this conflict and contradictory versions being placed before the Court, it is not possible for the Court to come to a definite conclusion as to the real nature of the transaction between the parties. So far as the second ground on which the Plaintiff draws an inference of abandonment on the part of the Amchem Corporation is their failure to take steps for renewal of the trade mark Rodine in the year 1977. The Plaintiff, in its affidavit, dated 14th August, 2000 has stated at more than one places that renewal of the registration of the trade mark Rodine became due in 1977. In paragraph 57 of that affidavit the Plaintiff has claimed thus: "Assuming that the Defendants' alleged predecessor enjoyed some right to use the mark sometime in the past, the said right is and was not an absolute right. The registration of the mark in favour of Amchem lapsed in 1977. The Plaintiff has used the mark prior thereto and subsequent thereto and is as such the proprietor in India and is entitled to sue Amchem and/or persons claiming through or under Amchem. The right if any of Amchem came to an end in 1977 when the said mark was surrendered or abandoned by them." Thus, the Plaintiff is repeatedly saying that renewal of the Trade mark became due in 1977 and because in 1977 Amchem Corporation did not take steps to renew its trade mark, an inference has to be drawn that it abandoned that trade mark. However, at the hearing of the motion, it was agreed by both sides that the first registration of the trade mark in favour of Amchem Corporation was in January, 1946. The registration was for a period for 15 years. The Defendants have produced before the Court a document which was not disputed by the plaintiff, which showed that the registration was renewed in the year 1975 for a term of seven years. Thus, renewal of the trade mark became due in the year 1982 and in no case in 1977. Thus, the very foundation of the case of the Plaintiff in relation to abandonment disappears. It is further to be noted here that according to a statement made on oath in paragraph 39 of the affidavit dated 14th August, 2000, the Plaintiff was making payment of royalty to Amchem Corporation till 1978. If, according to the Plaintiff, the trade mark was abandoned by Amchem Corporation in 1977, the Plaintiff does not explain as to how royalty statements were sent and royalty payments were made till 1978. It is, thus, clear that on this count also the Plaintiff has not made clear and unambiguous statements before the Court. Therefore, it cannot be said that the Plaintiff has established abandonment of the Trade mark by Amchem Corporation in the year 1977. To my mind, therefore, it is clear that the Plaintiff has not established clearly on record either the case pleaded by them in relation to acquisition of proprietary right in the trade mark in the plaint or in the affidavit filed in the motion. The Plaintiff cannot succeed in establishing the prima facie case unless it presents before the court a clear case. In the present case, I find that the Plaintiff has made contradictory statements and has not presented before the Court a clear case and therefore, it cannot be said that the Plaintiff has been able to make out prima facie case in its favour. 15. As I have found that the plaintiff has not been able to establish the case pleaded by the Plaintiff in the plaint and the affidavit filed in the motion, it is not necessary for me to refer to the authorities relied on by the learned Counsel for both sides to show as to when the trade mark is said to be abandoned, regarding acquisition of goodwill, as also whether after the Amchem Corporation, allegedly did not renew Its trade mark, its common law rights in the trade mark continues. 16. It is further to be seen here that the Plaintiff has come to the Court with a case that it is exclusively using the trade mark Rodine since 1959. According to the learned counsel for the Plaintiff, in order to be entitled to establish before the Court that he has acquired a common law right in the trade mark Rodine by exclusive user thereof, at the time when the Defendants used that mark i.e. in the year 1998, the Plaintiff has to establish his exclusive user of the mark, at the time of its use by the Defendant. Historical origin of the trade mark and its user by others, previously is not relevant. In my opinion, the submission is not well founded. Had there been no agreement dated 16th August, 1973, which permitted the Plaintiff to use the trade mark, there would have been something in the submission of the learned Counsel. However, there is on record an agreement which the Plaintiff has entered into with Amchem Corporation in the year 1973 and that agreement permits the Plaintiff to use the trade mark. Therefore, for establishing the claim of the Plaintiff of exclusive use of the trade mark, the agreement dated 16.8.1973 between the Plaintiff and Amchem Corporation was relevant and it was for the Plaintiff to plead as to how that agreement came to an end and since what date exclusive user of the trade mark by the Plaintiff started. The Plaintiff was a party to the agreement dated 16.8.1973, therefore, the agreement was within the knowledge of the Plaintiff and as observed above for establishing the case pleaded by the Plaintiff of his exclusive user of the trade mark, the fact that the agreement was entered into by the Plaintiff with the registered proprietor was relevant. The Supreme Court in its judgment in S.P. Chengalvaraya Naidu's case referred to above, has held that a litigant approaching the Court is bound to produce all the documents executed by him which are relevant to the litigation. The relevant observations are to be found in paragraph 7 & 8, which reads as under: "7. The High Court, in our view, fell into patent error. The short question before the High Court was whether in the facts and circumstances of this case, Jagannath obtained the preliminary decree by playing fraud on the Court. The High Court, however, went haywire and made observations which are wholly perverse. We do not agree with the High Court that there is no legal duty cast upon the plaintiff to come to Court with a true case and prove it by true
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evidence." The principle of "finality of litigation" cannot be pressed to the extent of such an absurdity that it becomes an engine of fraud in the hands of dishonest litigants. The Courts of law are meant for imparting justice between the parties. One who comes to the Court, must come with clean hands. We are constrained to say that more often than not, process of the Court is being abused. Property-grabbers tax-evaders, bank loan-dodgers and other unscrupulous persons from all walks of life find the court process a convenient lever to retain the illegal-gains indefinitely. We have no hesitation to say that a person whose case is based on falsehood, has no right to approach the Court. He can be summarily thrown out at any stage of the litigation. 8. The facts of the present case leave no manner of doubt that Jagannath obtained the preliminary decree by playing fraud on the Court. A fraud is an act of deliberate deception with the design of securing something by taking unfair advantage of another it is a deception in order to gain by another's loss, it is a cheating intended to get an advantage. Jagannath was working as a clerk with Chunilal Sowear. He purchased the property in the Court auction on behalf of Chunilal Sowear. He had, on his own volition, executed the registered release deed (Exhibit B-15) in favour of Chunilal Sowear regarding the property in dispute. He knew that the appellants had paid the total decretal amount to his master Chunilal Sowear. Without disclosing all these facts, he filed the suit for the partition of the property on the ground that he had purchased the property on his own behalf and not on behalf of Chunilal Sowear. Non-production and even non-mentioning of the release deed at the trial tantamounts to playing fraud on the Court. We do not agreed with the observations of the High Court that the Appellants-Defendants could have easily produced the certified registered copy of Exhibit B-15 and non-suited the Plaintiff. A litigant, who approaches the court, is bound to produce all the documents executed by him which are relevant to the litigation. If he withholds a vita document in order to gain advantage on the other side than he would be guilty of playing fraud on the Court as well as on the opposite party." The document of agreement dated 16.8.1973 was a relevant document, to which the Plaintiff was a party and the document was relevant for establishing the claim of the plaintiff that he is exclusively using the trade mark Rodine. In my opinion, therefore, for this reason also the Plaintiff is not entitled to the discretionary relief of temporary injunction. 17. It is further to be seen here that there is a considerable force in the submission of the learned Counsel for the Defendant that if acquisition of the proprietary rights in the Trade mark Rodine by the Plaintiff is dependent on abandonment of rights in the trade mark by the Amchem Corporation, then for recording a finding that Amchem Corporation has abandoned its rights in trade mark, successor of Amchem Corporation is a necessary party, may be, when the suit was filed the Plaintiff was not aware that the Defendants claim to be a licensee of the successor of the Amchem Corporation. However, once it is disclosed to the Plaintiff; that the Defendants claim to be a licensee of the successors of the Amchem Corporation, in my opinion, it was necessary for the Plaintiff to join successors of Amchem Corporation as a Defendant in the suit. It is pertinent to note here that the Defendants claim to be mere licensee of the successors of Amchem Corporation. They did not claim to be assignee. Therefore, mere licensee will not be able to effectively represents the interest of the successors of the Amchem Corporation. On behalf of the Defendant it has been stated that the successor of the Amchem Corporation has applied to the Registrar of Trade Marks for registration of trade mark Rodine. This is not disputed by the Plaintiff. The Plaintiff also has applied for registration of the same trade mark. The question whether the Amchem Corporation had abandoned the use of the trade mark is bound to arise in the proceedings before the Registrar. Any finding recorded in this suit by this Court against the successor of the Amchem Corporation on that question, would definitely cause prejudice to their interest in the proceedings before the Registrar. Therefore, when the Plaintiff is inviting that finding from the Court in this suit, the principle of natural justice requires that the Plaintiff must join the successor of the Amchem Corporation as a Defendant in this Suit. 18. Now, so far as the contention of the Plaintiff that they are registered proprietor of the trade mark Rotodine and that the Defendants are using trade mark Rodine, which is deceptively similar to their trade mark and therefore, their trade mark is infringed is concerned, it is established on record that the trade mark Rotodine was registered in favour of the Plaintiff in the year 1981, though it is admitted that they have never used it. It is also established on record that till 1982, Amchem Corporation was registered owner of the trade mark Rodine, which according to the Plaintiff itself is deceptively similar to their registered trade mark Rotodine. Section 33 of the Act reads as under : "Saving for vested rights. - Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation which that person or a predecessor in title of his has continuously used that trade mark from a date prior (a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his: or (b) to the date of registration of the first mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark." It is clear from the provisions of Section 33 that the registered proprietor of the trade mark does not get a right to interfere with or restrain the use of the same trade mark by a person, if that person or his predecessor in title was using that trade mark prior to the date of the registration of the trade mark in favour of the proprietor. Thus, it is clear that if on the date on which the Trade mark is registered in favour of a person, another person is using same or similar Trade mark, then the registration of the Trade mark does not give the proprietor of that trade mark a right to claim an injunction against the other persons, who is using the Trade mark on the date of registration. In my opinion, the heading of section 33 which is "Saving for Vested rights" also suggests the same interpretation of the provisions of this section. The intention behind incorporating this provision appears to be to protect the right which are vested in other person on the date of registration of the trade mark. In other
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words, the registration of the trade mark becomes effective from the date of its registration and registration of the trade mark cannot be used by the proprietor to interfere with the use of similar or same trade mark by others who were using it on the date of the registration of the trade mark. I find that same view has been taken by the learned Single Judge of this Court in its judgment in IndoPharmaceutical Works Pvt. Ltd. The learned Counsel for the Plaintiff, however, submits that this construction put on the provisions of Section 33 is unreasonable. He submits that suppose a person was using the same trade mark on the date of registration, but after the registration of the trade mark in favour of another person he abandons the use of that trade mark and again starts using that trade mark after a considerable long time, according to interpretation which is indicated above according to the learned Counsel, even that person cannot be restrained from readopting the trade mark. The learned counsel submits that section 33 has to be read with subsection 3 of section 12 of the Act. Sub-section 3 of section 12 of the Act permits the Registrar to register more than one proprietors of trade mark, if he is satisfied that both of them were concurrently using that Trade mark. The learned counsel submits that if a person is not entitled to claim concurrent registration under section 12(3), on the date on which he is readopting the mark, he would not be entitled to protection of Section 33 of the Act. It cannot be denied that there is some substance in the submission made by the learned counsel for the Plaintiff. However, perusal of the judgment of learned Single Judge of this Court in Indo Pharmaceutical Works Pvt. Ltd. referred to above shows that this court has already held that if a person is shown to be using the trade mark on the date of registration of the trade-mark, then the registered proprietor is not entitled to an injunction restraining him from using the trade mark. It is further to be seen that even if the interpretation put on the provisions of Section 33 of the Act by the learned counsel for the Plaintiff is accepted, then also for holding that the provisions of Section 33 of the Act do not protect the defendant, a finding will have to be recorded that the use of the trade-mark Rodine was abandoned by the Amchem Corporation. I have already held above that the Plaintiff has not been able to establish the case of abandonment of the trade mark by the Amchem Corporation or its successors. May be, in case the Plaintiff after joining the successors of the Amchem Corporation, at the final hearing of the suit, succeeds in establishing the abandonment of the trade mark by the Amchem Corporation, the interpretation suggested by the learned Counsel can be examined. At this stage however it is clear that in view of the provisions of Section 33 of the Act an order of temporary injunction can't be made against the Defendant in relation to the trade mark Rotodine. 19. Taking over all view of the matter, therefore, in my opinion, the Plaintiff has not been able to establish that he is entitled to the temporary injunction in the terms in which it is seeking. Notice of Motion is, therefore, disposed of. Parties to act on simple copy of this order duly authenticated by the Associate of this Court as a true copy.

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