FOUR PILLARS ENTERPRISE CO. LTD vs MAHIPAL JAIN & ORS.

* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 472/2023, I.A. 12686/2023, I.A. 18655/2023
FOUR PILLARS ENTERPRISES CO. LTD. ….. Petitioner
Through: Mr. Anirudh Bakhru, Mr. Naqeeb Nawab, Ms. Apurva Bhutani, Mr. Ashutosh Ranga, Ms. Sejal Tayal, Ms. Neeharika, Mr. Harshit Raj and Mr. Umang Tyagi, Advs.

versus

MAHIPAL JAIN & ORS. ….. Respondent
Through: Mr. Shravan Bansal, Mr. Ajay
Amitabh Suman and Ms. Shakshri Agarwal,
Advs.

CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
J U D G M E N T
% 07.03.2024

1. This judgment decides IA 12686/2023, whereby the plaintiff has sought an interlocutory injunction, pending disposal of the present suit CS (Comm) 472/2023, restraining the defendants, and all others acting on their behalf, from using the marks REINDEER BRAND, , , , and REINDEER WONDER in respect of any goods or services, or any other mark which may be confusingly or deceptively similar to the plaintiff’s registered DEER Device marks including and marks.

Rival Contentions

Submissions of Mr. Anirudh Bakhru for the plaintiff

2. The case of the plaintiff, as articulated by Mr. Anirudh Bakhru, learned Counsel, is as under:

(i) The plaintiff, a company established in Taiwan in 1954, manufactures adhesive tapes and labels. It is the proprietor of the trade Marks
(a) , in Class 17, for “PVC Insulating Tape, Adhesives Tape, Water Sticking Tape”, w.e.f. 18 July 1985, on “proposed to be used” basis, and
(b) , in Class 17, for “Adhesive tape for industrial and commercial use namely, adhesive sealing tape for use in machines or pipelines for preventing gas or liquid from leakage, PVC insulating tape, PVC duct tape, Double-sided adhesive tape, self-fusing tape, polyester tape, polyamide tape, glass cloth tape, cellophane tape, floral tape, vegetable bundling tape, reusable plastic tape which can be written tape” w.e.f. 20 July 1998, claiming user since 17 December 1993, registered under Section 18 of the Trade Marks Act, 1999.

(ii) The plaintiff launched its products in India for the first time in 1993. Since then, the plaintiff has been using the and Marks (hereinafter referred to as “the DEER marks”) continuously, extensively and exclusively, with sales, in India, of approximately US $ 3.4 million.

(iii) It is further asserted that the plaintiff has, later, adopted various variants of the DEER marks, including .

(iv) To vouchsafe its reach and reputation, the plaintiff has provided the sales figures of Avatack Co. Ltd. (hereinafter referred to as “Avatack”), one of its licensees, in India, year -wise from 2012 till 2022. For the years 2021 and 2022, the sales figures of Avatack are stated to be US $ 0.886 million and US $ 1.15 million respectively. The plaint also refers to various encomiums and awards earned by the plaintiff. However, most of them were earned in Taiwan.

(v) The plaintiff also owns the domain name www.fourpillars.com, created on 18 December 1997.

(vi) In or around May 2023, the plaintiff came to learn of the listing, on the e-commerce portal IndiaMart, of PVC insulation tapes bearing the marks , and (hereinafter referred to as “the REINDEER marks”) by Defendant 3, Gomec Industries Pvt. Ltd. (hereinafter referred to as “GIPL”). Investigations are stated to have revealed that goods bearing the REINDEER marks were being sold in physical markets through distributors of Defendants 1 and 3. The products were also being advertised and publicised through brochures released by Defendant 3.

(vii) Thereafter, in or around August 2018, the plaintiff claims to have come across Application No. 3827504 filed by Defendant 1 Mahipal Jain (hereinafter referred to as “Mahipal”) before the Registry of Trade Marks for registration of the mark in Class 17 of the NICE classification of trademarks, on proposed to be used basis, for “Adhesive tapes including PTFE thread seal tapes, PVC insulating tapes, crepe paper masking tapes, duct tapes, double sided tapes, sealing tapes, pressure sensitive tapes, adhesive coated plastic in form of film, rubber adhesive, plastic, polyester, foam and rubber, plastic in extruded form for use in manufacture, packing stopping and insulating material being goods included in Class 17”. The plaintiff filed its opposition to the said application before the Trade Marks Registry, and the application retains the said status till date.

(viii) Thereafter, the plaintiff came to learn of further Applications, being
(a) Application 4649108, by Mahipal for the device mark , filed on 10 September 2020, seeking registration under Class 16 for “Stationery tapes and self adhesive tapes, envelopes for letter, inland letter form (unstamped), Aerograms (unstamped), visiting cards, invitation cards, catalogues, periodicals, calendars, diaries, memory pads, writing pads, writing articles, stationery articles, office requisites (other than the furniture), books, stationery advertisement sheets, journals, magazines, letter heads, charts, pens pencils, index cards, letter openers, business papers, office equipments included in Class 16”, claiming user since 8 May 2018,
(b) Application 4649109, also by Mahipal for the device mark , filed on 10 September 2020, seeking registration under Class 35 for “Advertising, business promotion of stationery tapes and self adhesive tapes, envelopes for letter, inland letter form (unstamped), aerograms (unstamped), visiting cards, invitation cards, catalogues, periodicals, calendars, diaries, memory pads, writing pads, writing articles, stationery articles, office requisites (other than the furniture), books, stationery advertisement sheets, journals, magazines, letter heads, charts, pens pencils, index cards, letter openers, business papers, office equipments and adhesive tapes including PTFE thread seal tapes, PVC insulating tapes, crepe paper masking tapes, duct tapes, double sided tapes, sealing tapes, pressure sensitive tapes, adhesive coated plastic in form of film, rubber adhesive, plastic, polyester, foam and rubber, plastic in extruded form for use in manufacture, packing stopping and insulating material.”, claiming user since 8 May 2018,
(c) Application 4649105, by Defendant 2, Goutam Chand Jain (hereinafter referred to as “Goutam”) for the device mark , filed on 10 September 2020 seeking registration under Class 16 for “Stationery tapes and self adhesive tapes, envelopes for letter, inland letter form (unstamped), aerograms (unstamped), visiting cards, invitation cards, catalogues, periodicals, calendars, diaries, memory pads, writing pads, writing articles, stationery articles, office requisites (other than the furniture), books, stationery advertisment sheets, journals, magazines, letter heads, charts, pens pencils, index cards, letter openers, business papers, office equipments included in Class 16”, claiming user since 25 August 2020 and
(d) Application 4649106, by Goutam for the device mark , filed on 10 September 2020 seeking registration under Class 17 for “Adhesive tapes including PTFE thread seal tapes, PVC insulating tapes, crepe paper masking tapes, duct tapes, double sided tapes, sealing tapes, pressure sensitive tapes, adhesive coated plastic in form of film, rubber adhesive, plastic, polyester, foam and rubber, plastic in extruded form for use in manufacture, packing stopping and insulating material included in Class 17”, claiming user since 25 August 2020.

(ix) On 30 December 2020, the plaintiff issued a letter to Mahipal and GIPL, calling on them to cease and desist from using the REINDEER marks and to delist, from all e-commerce portals, any goods, listed by them, bearing the said marks. Additionally, Mahipal and GIPL were also called upon to withdraw, from the Trade Marks Registry, all applications filed by them, seeking registration of the said marks. GIPL, vide letter dated 4 February 2021, responded to the plaintiff’s cease and desist notice, submitting that there was no similarity between the marks of the plaintiff and the marks of the defendants.

(x) While the marks used by the defendants were, according to the plaint, ex facie infringing of the plaintiff’s registered DEER marks, the mala fides of the defendants became further apparent from the use, by the defendants, of a trade dress which was nearly identical to that of the plaintiff, for packing and selling insulating tape under the impugned REINDEER marks. A comparison of the trade dresses of the plaintiff and the defendants is thus provided in para 43 of the plaint:

Plaintiff’s trade dress
Defendants’ trade dress

Further, points out the plaint, the defendants have, on the body of their containers bearing the impugned trade dress, entered the caption “MADE BY TAIWAN TECHNOLOGY”, thereby seeking to draw an association with the plaintiff. On their Facebook page, the defendants have also, vide a post dated 22 January 2022, referred to their products as “THE ORIGINAL REINDEER BRAND”.

(xi) Thus, submits Mr. Bakhru, the defendants are clearly seeking to misrepresent their goods as those of the plaintiff, not only by infringing the plaintiff’s registered DEER marks, but also by adopting a trade dress which is identical to that adopted by the plaintiff. He, therefore, prays that, pending disposal of the suit, injunction be granted in terms of the prayers contained in the present application, which have already been noted in para 1 supra.

Submissions of Mr. S.K. Bansal in reply

3. Responding to the submissions of Mr. Bakhru, Mr. Bansal contends thus:

(i) The present suit is not maintainable, having been instituted without complying with the requirement of pre-institution mediation envisaged by Section 12A1 of the Commercial Courts Act, 2015. He cites, in this context, the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Keerthi2

(ii) The plaintiff’s DEER marks have been in disuse since 2011. Marks which are thus in disuse for a long period of time cannot be asserted, as held by a Division Bench of this Court in Veerumal Praveen Kumar v. Needle Industries (India) Ltd3 in paras 20 to 25 of the report and by a coordinate Single Bench of this Court in Keller Williams Realty Inc. v. Dingle Buildcons Pvt Ltd4. In Keller Williams, it is pointed out, this Court declined injunction despite registration, as the plaintiff was found not to have used the asserted mark, despite its registration, till the defendant commenced registration and use of the impugned mark.

(iii) While the plaintiff had placed, on record, invoices dated 18 December 2002, 21 January 2003, 22 January 2003, 3 July 2012, 18 October 2012, 13 June 2013, 22 April 2022 and 21 May 2022, and other invoices for the period 2013 to 2022, none of the invoices referred to the DEER brand. The reputation has to be of the mark, not the maker.

(iv) In a similar vein, it was incumbent on the plaintiff to establish that the goods of the plaintiff had acquired distinctiveness and were associated, in the minds of the public, with the plaintiff’s trade name. Reliance is placed on para 15 of Gillette India Ltd v. Harbans Lal Malhotra & Sons Pvt. Ltd.5, Munish Kumar Singla Trading v. Jollibee Foods Corporation6 and para 6 of Neon Laboratories Ltd v. Medical Technologies Ltd7. Additionally, Mr. Bansal cites Synthetic Moulders Ltd v. Semperit Aktiengesellschaft8

(v) The Trade Mark License Agreement (hereinafter referred to as “the TMLA”) with Avatack, dated 1 January 2011, placed on record by the plaintiff, was antedated. While conceding that, if the license agreement were valid, it would constitute user of the plaintiff’s DEER marks, Mr. Bansal questions the reliability of the License Agreement on the following grounds:

(a) In the oppositions filed against the applications of the defendants, for registration of its REINDEER marks in 2018, 2021 and 2022, there is no reference to any such License Agreement with Avatack, though the plaintiff has pleaded user.

(b) In the License Agreement, the validity of the plaintiff’s DEER marks is claimed till 18 July 2025 (in the case of the mark) and 20 July 2028 (in the case of the mark).

(vi) Further, no application had been filed before the Trade Marks Registry to register Avatack as the registered user of the DEER marks, as required by Section 48 of the Trade Marks Act.

(vii) The plaintiff has placed, on record, a Letter of Authorisation dated 29 April 1997, authorizing Four Ways International (hereinafter referred to as “Four Ways”) to use the plaintiff’s DEER mark on the merchandise purchased by Four Ways from the plaintiff. However, this document was also antedated, as it is brought up on the letterhead of “Four Pillars Enterprise Co. Ltd”, which was the name adopted by the plaintiff only in 2002. Reliance is placed, in this context, on para 19 of the plaint in which the plaintiff has averred that, on 8 May 2022, it had applied to the Trade Marks Registry to amend the name of the registrant of the plaintiff’s DEER marks from “Four Pillars Co. Ltd” to “Four Pillars Enterprise Co. Ltd”.

(viii) Moreover, the letter dated 29 April 1997 does not establish use of the DEER marks, without proof of actual use of the marks.

(ix) The TMLA between the plaintiff and Avatack was dated 1 January 2011, whereas Avatack executed an Agency Agreement dated 1 July 2005, appointing HSHT Trade Links, Mumbai as its agent and sole exclusive distributor for the DEER brand PVT tapes in India w.e.f. 1 July 2005.

(x) Mere registration, sans proof of use of the registered mark, cannot justify a prayer for injunction. Registration is no proof of use. Reliance is placed on Section 419 of the Specific Relief Act, 1963 and on paras 11 and 16 of Corn Products Refining Co. v. Shangrila Food Products Ltd10.

(xi) Caution notices, though issued by the plaintiff, are no proof of use of the DEER marks. Reliance is placed on para 18 of Usha Intercontinental v. Usha Television Ltd11 and para 19 of L.D. Malhotra Industries v. Ropi Industries12, both rendered by learned Single Judges of this Court.

(xii) The plaintiff has waited for an unconscionably long period of time for instituting the present proceedings, after having come to learn of the alleged infringement by the defendants. This delay, by itself, is fatal to the plaintiff’s prayer for injunction. Reliance is placed on the decisions in Vijay Kumar Ahuja v. Lalita Ahuja13 and Shri Gopal Engineering & Chemical Works v. POMX Laboratory14.

(xiii) DEER and REINDEER are different animals. There is, moreover, no similarity between the marks of the plaintiff and defendants.

(xiv) There were several marks which used the DEER logo or the word “DEER”. A chart of such marks was filed by the defendants. The word DEER was, therefore, a mark which was common to the register of trade marks. Reliance was placed, in this context, on para 14 of the judgment of the High Court of Bombay in James Chadwick & Bros Ltd. v The National Sewing Thread Co. Ltd15.

(xv) Insofar as the aspect of trade dress replication was concerned, the plaintiff had no trade mark registration in respect of its trade dress. Nor was there any evidence of usage of the trade dress.

(xvi) There was no sufficient evidence of goodwill or reputation, or use, of the DEER marks in India.

In conclusion, Mr. Bansal submits that the defendant is willing to restrict its use to the mark and the trade dress , and to forgo the and marks.

Submissions of Mr. Anirudh Bakhru in rejoinder

4. Mr. Bakhru submits, in rejoinder, as under:

(i) Apropos Section 12A, the decision in Yamini Gautam itself clarified that the Court was required to be careful in not allowing suits, which were not urgent, to be camouflaged as urgent so as to avoid pre-institution mediation. The present case, however, was not one such, as the plaintiff was seeking, and entitled to, urgent interim relief.

(ii) The argument, of Mr. Bansal, of non-use, by the plaintiff, of its DEER marks, was completely devoid of merit. Attention was invited to the fact that the website DEERbrand.com was registered on 1 December 1997 (as is apparent from the Whois details which have been placed on record). Further, the letter dated 29 April 1997 from the petitioner to Four Ways International was also evidence of use of the DEER brand. The submission of Mr. Bansal regarding the adoption of use of the corporate name “Four Pillars Enterprise Co. Ltd.” is also without substance, as is apparent from the fact that the plaintiff had applied for registration of the mark as a trade mark, vide Application No. 440445 dated 18 July 1985, in the name of “Four Pillars Enterprise Co. Ltd.”.

(iii) The reference, in the licence agreement with Avatack, of 18 July 2025 and 20 July 2028 as the dates of expiry of the regisrations of the DEER marks was only because the licence agreement was for thirteen years, and registrations are extended for ten years at a time. This did not, therefore, indicate that the licence agreement was ante dated.

(iv) By way of proof of use, reference was further made to
(a) Commercial Invoices No. N644C/8A20600159 dated 28 June 2012 and 0938C/8A305600093 dated 13 June 2013 from Avatack to Swadesh Exim, Chennai, for “DEER Brand” Embossed PVC Insulating Tape, and
(b) Proforma Invoice dated 22 August 2022 from Avatack to Hojefa Officewala for blue and red packing tape “DEER brand core”,
(c) photographs of Avatack marketing the plaintiff’s DEER brand tapes at exhibitions,
(d) Caution Notices published by the plaintiff in the Mid-Day newspaper of 27 December 2005, the Myanmar Times of 8-14 March 2010, the Chennai Edition of the Times of India dated 1 to 7 June 2022, and
(e) photographs of shops selling the plaintiff’s DEER brand tapes, as evidenced by stickers and posters outside the shops.
On the exact meaning of the word “use” in the Trade Marks Act, reliance is placed on the judgment of the Supreme Court in Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.16.

(v) It did not lie in the mouth of the defendants to question the plaintiff’s reputation or goodwill, as the defendants themselves were misrepresenting their goods, on their facebook pages, as “Made in Taiwan”, and also prominently displaying the face of their products bearing the infringing trade design. One such screenshot has been provided with the plaint as under:

(vi) The defendants were, therefore, impersonators, who were seeking to hoodwink the public into confusing their products with the plaintiff’s.

(vii) The defendants, having themselves applied for registration of their REINDEER marks, could not dispute the entitlement of the plaintiff’s DEER marks to registration.

Analysis

5. The plaintiff is, prima facie, entitled to ad interim injunction as sought.

6. On the aspect of infringement, the defendants really has no prima facie case to urge. It is no argument to contend that DEER and REINDEER are different animals. We are not dealing with denizens of the zoo. The test of deceptive similarity has to be applied vis-à-vis the perception of a consumer of average intelligence and imperfect recollection, not a zoologist.

7. Section 29(2) of the Trade Marks Act deems “infringement”, within the meaning of the Trade Marks Act, to have taken place if there is a cumulative satisfaction of three conditions. The first is that the rival marks must be similar to each other. The second is that the marks must be used for goods, or services, which are identical or similar to each other. The third is that, owing to the cumulative satisfaction of the first and second conditions, there is a likelihood of confusion or association, in the minds of the public, between the defendant’s mark and the mark of the plaintiff.

8. This likelihood of confusion is to be assessed from the point of view of a consumer of average intelligence and imperfect recollection. In the case of infringement, what is required is a mark-to-mark comparison. If, on a comparison of the marks, there is a likelihood of confusion, then added features or other distinguishing circumstances, would not mitigate the existence of infringement.

9. In this respect, infringement differs from passing off. Whereas, in passing off, additional circumstances or features, which may reduce the possibility of the goods of the defendant being passed off as the goods of the plaintiff, may make a difference, such additional features or circumstances are irrelevant while examining the claim of infringement. This principle is classically enunciated in para 28 of the judgment of the Supreme Court in Kaviraj Pt. Durga Dutt Sharma v. Navaratna Pharmaceuticals17:
“28.  The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade mark. We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in favour of the appellant to which the learned counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in the colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on his packets and these features were all set out for negativing the respondent’s claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark by the registered proprietor who has a statutory right to that mark and who has a statutory remedy for the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods” (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”
(Emphasis supplied)

10. In examining the aspect of likelihood of confusion, two principles, laid down by English decisions, uniformly been followed by courts in this country. In Munday v. Carey18, Lindley LJ held that where there was an intent to confuse and the mark of the defendant was a copy of the mark of the plaintiff, one had to concentrate more on similarities rather than on dis-similarities. Kekewich J, in Slazenger & Sons v. Feltham & Co.19 carried the point a notch further by holding that, where the defendant had strained every nerve to make his mark as similar to the plaintiff’s mark as would deceive the consumer, the court would presume that the attempt was successful rather than unsuccessful.

11. That there was a deliberate attempt, on the part of the defendants, to imitate the plaintiff, and to deceive consumers into confusing the goods of the defendants with those of the plaintiff, is apparent from the near identity in the trade dress adopted by the defendants, which is practically indistinguishable from that of the plaintiff. This, coupled with the misrepresentation, by the defendants, of its goods as “Made in Taiwan”, obviously as the plaintiff’s product is indeed made in Taiwan, clearly justifies invocation of the principles in Munday and Slazenger.

12. The impugned marks are used by the defendants for goods which are identical to those of the plaintiff, namely insulating tapes. They cater to the same consumer segment, and are available through the same outlets. Inasmuch as the marks are similar, they are used for identical goods, and there is likelihood of confusion, in the mind of a consumer of average intelligence and imperfect recollection, between the goods of the defendants and the goods of the plaintiff, as a result of the conjoint effect of the similarity in Marks and identity of goods in respect of which the marks are used, infringement, within the meaning of Section 29(2) prima facie exists.

13. Where there is infringement, the Supreme Court has held, in Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia20, that an injunction has to follow. Considerations of delay and laches have also been held, in the said decision, not to be relevant while examining whether to grant an injunction.

14. Mr. Bansal canvassed, as his main point of defence, the contention that the plaintiff’s mark has become “dead on account of disuse”. He relied, for the purpose, on the judgment of the Division Bench of this Court in Veerumal Praveen Kumar.

15. It is not necessary for me, at least at this interlocutory stage, to enter into the aspect of whether disuse for a long period of time can eviscerate the right, conferred by Section 28(1)21 of the Trade Marks Act, to relief against infringement. Among the entitlements statutorily made available to the proprietor of a validly registered trademark, is the right to relief against infringement. The relief that can be granted, once infringement is found to exist, are envisaged by Section 135 of the Trade Marks Act, and sub-section (1)22 thereof contemplates injunction as one of the reliefs that can be granted. As already noted, the Supreme Court has, in Midas Hygiene, practically mandated the grant of injunction, where infringement is seen to exist. There is, therefore, no scope for discretion in the matter.

16. That said, the Court would, while applying the Midas Hygiene principle, have to remain aware of the statutory prescriptions against the grant of injunction or against interference with the use of a mark which is otherwise infringing in nature, as contained in the Trade Marks Act itself as, for example, in Sections 30, 34 and 35. None of these provisions, however, apply in the present case.

17. “Disuse” is not one of the circumstances in which the Trade Marks Act prohibits grant of injunction. The only reference to use of a registered trademark, insofar as it affects the right of the registrant, is to be found in Section 33(1)23 and section 4724 of the Trade Marks Act. Section 33 deals with the right of the registered user of one trademark to seek an injunction against the use of a trademark registered by another later in point of time, and does not, therefore, apply to the present case. Section 47(1)(b) envisages the taking off, from the register of Trade Marks, of the registered trademark which, up to a date not earlier than three months from the date of filing of the application seeking the removal of the mark, has been in disuse for a period of five years.

18. There is, however, to repeat, no provision in the Trade Marks Act which allows any infringing defendant to seek protection against injunction on the ground that the plaintiff’s mark has been in disuse, for any period of time.

19. The question then arises as to whether, in a case in which the plaintiff’s validly registered trademark is infringed by the defendant, and the case does not fall within one of the statutory prescriptions against the grant of injunction, the Court is nonetheless proscribed from granting an injunction for the reason that the plaintiff’s mark has not been used for a considerable period of time.

20. Veerumal Praveen Kumar, on which Mr. Bansal places reliance, undoubtedly seems to so indicate. However, it is important to note that, in that case, the suit for injunction was filed by the plaintiff in 1995, whereas evidence of user of the plaintiff’s mark was available only for a period of two years from 1977 to 1979 and there was no evidence of user after 1981, i.e., for a period of as many as fourteen years prior to the institution of the suit. The matter before the Division Bench was an appeal against an order, by a learned Single Judge of this Court, restraining the defendants in the suit from using the impugned mark, which was found to be deceptively similar to the plaintiff’s registered trademark. In appreciating the impact of the decision of the Division Bench in Veerumal Praveen Kumar, it has to be remembered that the Court was dealing with an application for interim injunction, in which an injunction can be granted only if there is simultaneous satisfaction of the three established criteria of existence of a prima facie case, balance of convenience being in favour of grant of the injunction, and the likelihood of irreparable loss to the plaintiff, were injunction not to be granted. Where the plaintiff’s mark has been in disuse for fourteen years, it is prima facie apparent that no interlocutory order of injunction would be justified, as it could not be said that, by allowing the defendant to continue to use the impugned mark, irreparable prejudice would result to the plaintiff. As such, in principle, the decision in Veerumal Praveen Kumar is clearly justified.

21. It may require consideration, however, in an appropriate case as to whether, in the light of the subsequent enunciation of the law in Midas Hygiene, the decision in Veerumal Praveen Kumar can still be followed.

22. This, however, need not be that appropriate a case, thankfully, as, in the present case, the plea of disuse, by the plaintiff, of its registered DEER marks, as raised by Mr. Bansal, is factually devoid of merit.

23. “Use” of a registered trademark is defined, in Section 2(2)(b)25, as “a reference to the use of printed or other visual representation of the mark”. Section 2(2)(c)26 further clarifies that any reference, in the Trade Marks Act, to the use of a mark, in relation to goods, “shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods”.

24. Thus, “use” of a registered trademark does not necessarily denote use of the mark on the goods while putting them up for sale or even in invoices. Use of a mark in any manner in relation to the goods, in any physical or other relation whatsoever, would constitute “use”.

25. Thus seen, the documents and material cited by Mr. Bakhru and enumerated in Kaviraj Pt Durga Dutt Sharma and Midas Hygiene make out a prima facie case of use, by the plaintiff or by its licensee, Avatack, of the DEER marks.

26. Mr. Bansal has also sought, however, to discredit the license agreement dated 1 January 2011, between the plaintiff and Avatack Co. Ltd. The only ground raised by him, to support such a submission is, however, the following table, to be found in Annexure A to the license agreement:
Trademark
Class
Number
Registered Date
Expiry Date

17
811008
20 July, 2008
20 July, 2028

17
440445
18 July, 1985
18 July, 2025

27. I am inclined, however, to accept Mr. Bakhru’s explanation that, as renewal of a trademark is granted for a period of ten years at the time, and as the license agreement was alive for a period of thirteen years, it was deemed appropriate to indicate the term of the validity of the registered trademarks as twenty years from the date of registration. This stands to reason. If the trademarks were to expire prior to the terminus ad quem of the license agreement, the license agreement would be devoid of purpose. There is, therefore, nothing inherently incongruous in the plaintiff reflecting the dates of expiry of its registered DEER marks as 18 July 2025 and 20 July 2028.

28. The only substantial challenge raised by Mr. Bansal to the grant of injunction being, thus, found to be devoid of merit, an injunction in favour of the plaintiff must, as held in Midas Hygiene, follow.

Conclusion

29. Resultantly, the defendants, as well as all others acting on their behalf, shall stand restrained, pending disposal of the present suit, from using, in any manner, the marks , , or the trade dress , or any other trade mark or trade dress which is confusingly similar to the plaintiff’s registered trade marks or trade dress, for adhesive tapes or for any other allied or cognate goods or services, pending disposal of the present suit.

30. IA 12686/2023 stands allowed accordingly.

C. HARI SHANKAR, J.
MARCH 7, 2024

1 12A. Pre-Institution Mediation and Settlement—(1) A suit, which does not contemplate any urgent interim relief under this Act, shall not be instituted unless the plaintiff exhausts the remedy of preinstitution mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government.
(2) The Central Government may, by notification, authorise the Authorities constituted under the Legal Services Authorities Act, 1987 (39 of 1987), for the purposes of pre-institution mediation.
(3) Notwithstanding anything contained in the Legal Services Authorities Act, 1987, the Authority authorised by the Central Government under sub-section (2) shall complete the process of mediation within a period of three months from the date of application made by the plaintiff under sub-section (1):
Provided that the period of mediation may be extended for a further period of two months with the consent of the parties:
Provided further that, the period during which the parties remained occupied with the pre-institution mediation, such period shall not be computed for the purpose of limitation under the Limitation Act, 1963 (36 of 1963).
(4) If the parties to the commercial dispute arrive at a settlement, the same shall be reduced into writing and shall be signed by the parties to the dispute and the mediator.
(5) The settlement arrived at under this section shall have the same status and effect as if it is an arbitral award on agreed terms under sub-section (4) of section 30 of the Arbitration and Conciliation Act, 1996 (26 of 1996).]
2 2023 SCC OnLine SC 1382
3 93 (2001) DLT 600
4 2020 SCC OnLine Del 539
5 (2009) 41 PTC 378 (DB)
6 244 (2017) DLT 644
7 2015 (64) PTC 225 (SC)
8 1979 SCC OnLine Del 200
9 41. Injunction when refused.—
An injunction cannot be granted –
(a) to restrain any person from prosecuting a judicial proceeding pending at the institution of the suit in which the injunction is sought, unless such restraint is necessary to prevent a multiplicity of proceedings;
(b) to restrain any person from instituting or prosecuting any proceeding in a court not subordinate to that from which the injunction is sought;
(c) to restrain any person from applying to any legislative body;
(d) to restrain any person from instituting or prosecuting any proceeding in a criminal matter;
(e) to prevent the breach of a contract the performance of which would not be specifically enforced;
(f) to prevent, on the ground of nuisance, an act of which it is not reasonably clear that it will be a nuisance;
(g) to prevent a continuing breach in which the plaintiff has acquiesced;
(h) when equally efficacious relief can certainly be obtained by any other usual mode of proceeding except in case of breach of trust; 1 [(ha) if it would impede or delay the progress or completion of any infrastructure project or interfere with the continued provision of relevant facility related thereto or services being the subject matter of such project.]
(i) when the conduct of the plaintiff or his agents has been such as to disentitle him to be the assistance of the court;
(j) when the plaintiff has no personal interest in the matter.
10 AIR 1960 SC 142
11 1986 (1) Arb LR 36
12 PTC (Supp) (2) 564 (Del)
13 95 (2002) DLT 3
14 AIR 1992 Del 302
15 AIR 1951 Bom 147
16 (2003) 11 SCC 92
17 AIR 1965 SC 980
18 (1905) RPC 273
19 (1889) 6 RPC 531
20 (2004) 3 SCC 90
21 28. Rights conferred by registration. –
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act
22 135. Relief in suits for infringement or for passing off. –
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.
23 33. Effect of acquiescence. –
(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark –
(a) to apply for a declaration that the registration of the later trade mark is invalid, or
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used,
unless the registration of the later trade mark was not applied in good faith.
24 47. Removal from register and imposition of limitations on ground of non-use. –
(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either—
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(b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being:

25 2. Definitions and interpretation. –
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(2) In this Act, unless the context otherwise requires, any reference—
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(b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark;
(c) to the use of a mark, –
(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;
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