V R INDUSTRIES PRIVATE LIMITED  Vs MOHAN MEAKIN LTD. & ANR.

CS(COMM ) No.485 /2018 Page 1 of 13
* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Date of decision: 29th January , 202 1

+ CS(COMM ) No.485/2018
V.R. INDUSTRIES PVT. LTD. ….. Plaintiff
Through: Mr. Rajat Aneja & Ms. Jia Kapur,
Advs.
Versus
MOHAN MEAKIN LTD. & ANR. ….. Defendants
Through: Mr. Saif Khan, Ms. Prachi Agarwal
& Ms. Ridhie Bajaj, Advs.
CORAM:
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW

[VIA VIDEO CONFERENCING]
RAJIV SAHAI ENDLAW, J .
IA No.14412/2013 (of plaintiff under Order XXXIX Rul es 1&2 of the
CPC) & IA No.18379/2013 (of defendant no.1 under Order XXXIX
Rule 4 of the CPC) .
1. The plaintiff instituted this suit , as per amended plaint verified on
25th February , 2016 and filed pursuant to amendment allowed vide order
dated 16th Februa ry, 2016 , for the reliefs of permanent injunction
restraining the two defendants viz. Mohan Meakin Ltd. and Trade Links
Pvt. Ltd. from manufacturing and selling or operating in food items such as
corn flakes , cereals, muesli, etc. under the mark „8AM ‟ or any other mark
similar or deceptively similar thereto , amounting to infringement and
passing off their goods as that of the plaintiff , and for ancillary reliefs.
2. It is the case of the plaintiff in the amended plaint aforesaid, that (i)
the plaintiff, si nce the year 1986 is carrying on business in respect of
products such as corn flakes , muesli, mix fruit flavour muesli, porridge ,
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etc.; (ii) the plaintiff is the registered proprietor of the trade mark „8AM ‟,
which was coined and adopted on 1st May, 2004 a nd has been continuously,
extensively and exclusively used by the plaintiff since then; (iii) the
plaintiff has been packing corn flakes, muesli, soya chunks, instant
porridge , honey , all under the mark „8AM ‟ and has been marketing the said
goods in all ma jor cities; (iv) the plaintiff, besides of the mark „8AM ‟, is
also the proprietor of other marks; (v) the plaintiff , on 8th June, 2004
applied for registration of the trade mark „8AM ‟ in Class 30, claiming use
since 1st May, 2004 and which application is b eing opposed by Radico
Khaitan Ltd.; (vi) the plaintiff, on 2nd July, 2007 applied for registration of
label marks containing the trade mark „8AM ‟ as essential feature , with
respect to goods in Classes 29, 30 and 32 and which registration was
granted on 20th November, 2014, making the plaintiff registered proprietor
of the trade mark „8AM ‟; (vii) the other applications of label mark „8AM ‟
are pending registration; (viii) owing to the extensive sales and promotional
activities undertaken , coupled with superi or quality of goods sold under the
trade mark „8AM ‟, the goods sold under the said trade mark are associated
with the plaintiff; (ix) the plaintiff, within a span of eight years from launch
of the brand „8AM ‟ in 2005 -06 with sales of Rs.7,99,440/ – has in 2 012-13
reached the sales figure of Rs.6,52,00,000/ -; (x) due to priority in adoption
and use coupled with extensive long uninterrupted use of the trade mark
„8AM ‟ and registration of the said mark, the same has become distinctive
with the goods of the plai ntiff; (xi) in October , 2007, the plaintiff gathered
from trade mark journal dated 16th October, 2007 that the defendant no.1 ,
on 2nd August, 2005 had filed an application seeking registration of the
mark „8AM ‟ in respect of corn flakes and wheat porridge , on “proposed to
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be used ” basis and which was subsequently, as an afterthought on 23rd
August, 2005 changed to, claim of use since 1st January, 2004 ; (xii) the
plaintiff initiated opposition proceedings with respect to the said application
of the defendant no.1 and which opposition is pending; (xiii) in August,
2012, the plaintiff for the first time learnt that the defendant no.1 had
fraudulently and by misrepresentation got the mark „8AM Corn Flakes
(Label)‟ registered in Class 30 for corn flakes and wheat porridge; (xiv) the
plaintiff has a superior and exclusive right over the mark „8AM ‟, by virtue
of being a prior bona fide user and registered proprietor thereof; (xv) a
close look at the official website of the defendant no.1 divulges that no use
of the trade mark „8AM Corn Flakes (Label) ‟ is being made or has ever
been made by the defendant no.1 in respect of the goods for which it is
registered or for any other goods; (xvi) the latest annual report of the
defendant no.1 for the years 2011 -12 also does n ot bear any reference to the
trade mark „8AM Corn Flakes (Label) ‟; (xvii) on the other hand, the
plaintiff ‟s products are advertised in the Canteen Stores Department (CSD)
magazines; (x viii) while the plaintiff‟s corn flakes are advertised under the
mark „8AM ‟, the defendant no.1‟s corn flakes are advertised as „Mohun‟s
New Life Corn Flakes ‟; (xix) the plaintiff could not oppose the defendant
no.1‟s application pursuant to which registration was granted, because the
same was not clearly visible in the trade mark journal in which it was
advertised; (xx) the plaintiff , on 11th October, 2012 initiated trade mark
cancellation proceedings against the defendant no.1 , by filing an application
for rectification of the mark registered in favour of the defendant no.1 and
the said cancellation proceedings are still pending and during the pendency
of which , the plaintiff also has become the registered proprietor of the mark
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„8AM ‟; (xxi) the registration obtained by the defendant no.1 is bad for the
reason of having been obtained by misrepresenting use of the mark since 1st
January, 2004 and owing to the prior application of the plaintiff; (xxii) the
plaintiff‟s earlier application for registration of the same mark „8AM ‟ was
cited in the report of search made pursuant to t he application of the
defendant no.1; (xxi ii) the reputation acquired by the plaintiff in the mark
„8AM ‟ covers not only the goods for which it is used but also cognate and /
or allied goods; (xx iv) the plaintiff, on 30th May, 2013 received a letter
from CSD, seeking plaintiff‟s comments on the notice dated 27th April,
2013 served by the defendant no.1 on CSD claiming right s over the mark
„8AM ‟; the defendant no.1 in the said notice concealed the cancellation
proceedings; (xxv) the plaintiff , in August, 201 3 learnt from the defendant
no.2 Trade Links Pvt. Ltd. who is the exclusive wholesale dealer / full time
Director of the defendant no.1 that the defendant no.1 , was set to introduce
its goods under the mark „8AM ‟ in the market; and, (xxvi) the defendants
have no right to use the mark „8AM ‟.
3. The suit , accompanied with an application for interim relief came up
before this Court first on 10th September, 201 3 when while issuing
summons / notice thereof, vide ex parte order, the defendants were
restrained from using in any manner the trade mark „8AM ‟ or passing off
their goods with the said mark or any other confusingly similar mark and
from writing letters to third parties customers of the plaintiff , claiming
rights in the said mark.
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4. The defendant no. 2 Trade Links Pvt. Ltd. did not appear despite
service and was vide order dated 11th November, 2013 proceeded against ex
parte .
5. The defendant no.1 , in its written statement to the amended plaint ,
has pleaded that (i) the plaintiff obtained the ex part e injunction concealing
that the defendant no.1 was prior adopter of the mark „8AM‟ and had been
selling under the composite trade mark „Mohun‟s 8AM Corn Flakes ‟ for
long; (ii) the claim of the plaintiff o f priority of use , is false; (iii) the
registration s obtained by the plaintiff in Classes 29, 30 and 32 , during the
pendency of the suit and pursuant whereto the plaint was amended, are too
broad and merely eyewash , to claim false use of the mark for corn flakes
and porridge; (iv) the defendant no.1 adopte d the trade mark „Mohun‟s
8AM Corn Flakes ‟ in relation to breakfast cereals including corn flakes and
wheat porridge , in January, 200 4 and has been continuously and extensively
using the said trade mark since then; (v) the defendant no.1 became the
registe red proprietor of the trade mark „Mohun‟s 8AM Corn Flakes (Label) ‟
in Class 30 in relation to corn flakes and wheat porridge , on 23rd August,
2005 and which trade mark is subsisting; (vi) the defendant no.1 is entitled
to exclusive use of the trade mark „8AM‟; (vii) the plaintiff‟s use of the
mark is confined to CSD and not in the public retail shops; on the contrary,
goods under the defendant no.1‟s mark „Mohun‟s 8AM Corn Flakes ‟ are
sold across the country through retail stores; (viii) the plaintiff has
concealed that S.K. Bakshi, Director of the plaintiff and who is the father of
Rahul Bakshi who has signed the plaint on behalf of the plaintiff, was
employed with the defendant no.1 as a Senior Executive Officer and was
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living with his family including Rah ul Bakshi in the premises of the
defendant no.1 at Mohan Nagar, Ghaziabad, Uttar Pradesh, till shortly
before institution of the suit; the plaintiff thus was fully aware of adoption
and use of the mark „Mohun‟s 8 AM Corn Flakes ‟ by the defendant no.1;
(ix) the defendant no.1 is the prior adopter, prior user and lawful proprietor
of the mark; and, (x) mention of “proposed to be used” in the defendant
no.1‟s application for registration of the mark was a clerical error as evident
from documents showing use of the mark since 1st January, 2004 .
6. Though the plaintiff has filed a replication to the written statement
aforesaid but need to refer thereto is not felt , save as mentioned
hereinbelow .
7. As aforesaid , the defendant , along with its written state ment also
applied under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908
(CPC ) for vacation of the ex-parte stay.
8. The application of the plaintiff for interim relief and the application
of the defendant for vacation of ex parte stay granted , remained pending ,
with pleadings being completed thereon and the ex parte order continued.
9. On 3rd March, 2014, finding that the pleadings in the suit stood
completed, issues were framed in the suit and the parties relegated to
evidence. Though the present applications were listed from time to time but
were adjourned , for some reason or the other and in the meanwhile
recording of evidence commenced.
10. The plaintiff filed IA No. 14009 /2018 under Section 124( 1)(b)(i) of
the Trade Marks Act, 1999 and which c ame up first before this Court on 9th
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October, 2018. Vide subsequent order dated 22nd October, 2018, the said
application was allowed and further proceedings in the suit stayed awaiting
the decision of the rectification proceedings pending before the Intel lectual
Property Appellate Board (IPAB) with respect to the validity of the
registered tra de mark of the defendant no.1. However it was clarified that
arguments on the injunction application s would be heard.
11. It was in the aforesaid state of affairs th at the arguments on the
applications aforesaid were heard by the undersigned on 7th November,
2019 i.e. after the ex parte stay had remained in operation for over six years
and though orders were intended to be dictated in the chamber on the same
day, but remained to be dictated and are being pronounced today.
12. During the arguments , the counsels, took the undersigned through the
respective case s as disclosed in the pleadings and documents. T he counsel
for the defendant no.1 also contended, that (a) the plaintiff, at the time of
obtaining ex parte order, concealed from this Court that S.K. Bakshi,
Director of the plaintiff was a Senior Executive Officer of the defendant
no.1 and that the signatory of the plaint viz. Rahul Bakshi was the son of
S.K. Bakshi and that both of them, till a few days prior to the institution of
the suit were residing in the premises of the defendant no.1 at Mohan
Nagar, Ghaziabad ; (b) the plaintiff , after obtaining ex parte injunction , has
also got the trial in the suit stayed, t o, on the one hand perpetuate the
injunction against the defendant and on the other hand not being required to
prove their case ; (c) the plaintiff was earlier not in the business of cereal;
and, (d) the defendant no.1 has sold corn flakes under the mark „8AM‟,
from the year 2004 till the restrain t order . On enquiry, the counsel for the
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defendant no.1 confirmed that the defendant no.1 has not made any
counterclaim or initiated any other proceeding s to restrain the plaintiff from
using the mark and has also n ot applied for rectification of the registration
obtained by the plaintiff.
13. The counsel for the plaintiff , in support of his arguments , referred to
S. Syed Mohideen Vs. P. Sulochana Bai (2016) 2 SCC 683, Neon
Laboratories Ltd. Vs. Medical Technologi es Ltd. (2016 ) 2 SCC 672 and
R.J. Components & Shafts Vs. Deepak Industries Ltd. 244 (2017) DLT
502, all on the rights of a prior user.
14. I have considered the rival contentions.
15. At the outset, I may state that merit is found in the contention of t he
counsel for the defendant no.1, of the plaintiff, while approaching this
Court for ex parte ad-interim relief, hav ing concealed that S.K. Bakshi,
Director of the plaintiff was a Senior Executive Officer of the defendant
no.1 against which the suit was p rimarily directed and that both S.K. Bakshi
and his son Rahul Bakshi, also a Director in the plaintiff and signatory of
the plaint, till a few days prior to the institution of the suit having resided in
the property of the defendant no.1 at Mohan Nagar, Gh aziabad . On the
defendant no.1 in its written statement pleading the said fact s, the plaintiff
in its replication has not denied the same . The said facts, in my opinion,
were material facts , relevant to the issue and required to be disclosed by the
plainti ff to the Court, at the time of obtaining ex parte ad-interim relief. The
plaintiff, neither in the plaint nor in the replication has offered any
explanation as to why the said fact s were not disclosed to the Court at the
time of obtaining ex parte injunct ion. In my further opinion, it was
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incumbent upon the plaintiff to disclose the said fact s along with their
explanation if any thereto and the plaintiff should have left it to the Court to
decide whether the same were of any relevance or not and if of rele vance,
still not deprived the plaintiff of ex parte injunction . I say so, because (a)
the plaintiff in the plaint admitted that the defendant no.1 had a registration
in its favour, of the trade mark „8AM Corn Flakes (Label)‟ of which the
plaintiff was clai ming to be the prior user and which registration in favour
of the defendant no.1 was of 23rd August, 2005 i.e. more than eight years
prior to the institution of the suit; (b) the plaintiff in the plaint also admitted
that the plaintiff, at least since the year 2007 i.e. more than six years prior to
the institution of the suit, was aware of the defendant no.1 having applied
for registration for the mark „8AM‟ ; (c) though the plaintiff in the plaint
pleaded that the defendant no.1 was not using the mark but o nly on the
basis of annual reports of the defendant no.1 and which ordinarily are not
required to and do not contain the trade marks owned or used by the
company; (d) however the plaintiff, by virtue of its Directors S.K. Bakshi
and Rahul Bakshi‟s having a close association with the defendant no.1 as
aforesaid, if had disclosed the said association, would have been required to
also plead on oath from personal knowledge, whether the defendant no.1
was using the mark or not; (e) the plaintiff, by concealing t he said facts,
evaded positive plea of not having knowledge by virtue of association with
the defendant no.1, of use of the mark by the defendant no.1; (f) the
residence of the Directors S.K. Bakshi and Rahul Bakshi of the plaintiff till
a few days prior t o institution of the suit, in the premises of the defendant
no.1, was / is also of relevance in the delay from 2007 to 2013 in instituting
the suit; (g) had the said residence been disclosed, the Court, before
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granting ex-parte injunction, could have enqui red whether the plaintiff
delayed filing of suit till its Directors were dependent for their res idence on
the defendant no.1.
16. Once the plaintiff is found to have concealed material facts while
obtaining ex parte injunction, the plaintiff cannot be sai d to have
approached the Court with clean hands and which disentitles the plaintiff
from equitable relief of injunction and the application of the plaintiff for
interim relief is liable to be dismissed on this ground alone .
17. Not only so, I am constrain ed to observe that the pleadings in the
plaint as originally filed, are also confusing and do not correctly place the
factual position f or consideration of the Court. It cannot be lost sight of that
the Judges manning the Courts, with long cause list, are not able to
minutely go through the pleadings and the documents and it is thus
imperative for the litigants to, at least when approaching the Court for ex
parte relief, ma ke a clean breast of the facts. The plaintiff is not found to
have done so. I refrain from saying more. However, such conduct of the
plaintiff also requires the plaintiff to be denied the equitable relief of
interim injunction.
18. As far as the emphasis by the counsel for the plaintiff, on the plaintiff
being the prior user of the mark, is concerned, it cannot be lost sight of that
though the plaintiff first applied for registration on 8th June, 2004 i.e. well
before the defendant no.1 first applied for registration on 2nd August, 2005,
but no rights under the said application dated 8th June, 2004 in which the
plaintiff cla imed use since 1st May, 2004, have still accrued to the plaintiff
and the claims of the plaintiff in the said application, of use r since 1st May,
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2004, are still to be verified. The subsequent application dated 2nd July,
2007 made by the plaintiff for registration of the trade mark „8AM‟ and
registration pursuant whereto was granted after the institution of this suit,
though for registration in Classes 29, 30 and 32, did not include „corn
flakes‟, with respect whereto th e plaintiff in the present suit sought t o
restrain the defendant no.1. Thus while on the date of institution of the suit,
the defendant no.1 was the registered proprietor of the mark „8AM‟ in
relation to corn flakes since eight years prior to the instituti on of the suit ,
the plaintiff was not. Ordinarily, a registered proprietor is not to be
restrained from use of the mark and the only limitation in Section 34 of the
Trade Marks Act is, of the registered proprietor being not entitled to, on the
basis of the registration, restrain a person who establishes itself to be using
the mark since prior to the use by the registered proprietor. However what
has happened here is that in a suit by the plaintiff instituted in the year
2013, claiming use since 1st May, 200 4 and having knowledge of the claim
of the defendant no.1 to the mark since 2007 and registration of the mark
„8AM Corn Flakes (Label)‟/ „Mohun‟s 8AM Corn Flakes‟ in favour of the
defendant no.1 since 2005, the defendant no.1 has been restrained since
2013 from using the mark; an unregistered proprietor of the mark has
succeeded in restraining a registered proprietor. The plaintiff acquired
registration, only after the institution of the suit.
19. In fact, the p osition today is no different. Both, the pl aintiff and the
defendant no.1 hold registrations , with the registration in favour of the
defendant no.1 being prior to that in favour of the plaintiff; the claim of the
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plaintiff thus, for the purposes of grant of interim injunction, has to be
construed a s of passing off only .
20. In this context I may notice, that though the plaintiff could have
proceeded with the suit , insofar as for passing off, with only the suit on the
ground of infringement being stayed awaiting the adjudication by the IPAB ,
but th e plaintiff chose to have the suit qua passing off also stayed, to
perpetuate the ex parte injunction in its favour and against the defendant
no.1. The said conduct of the plaintiff also does not show the plaintiff to be
still acting bona fide and this ag ain disentitles the plaintiff to any equitable
remedy.
21. This in my view is yet another reason for which the defendant no.1
cannot be restrained at the instance of the plaintiff.
22. I may however state that thoughts have indeed crossed my mind , of
the defendant no.1 having stood restrained for the last now over seven
years , from using the mark and the plaintiff in the interregnum using the
same and of the defendant no.1 having neither sought to restrain the
plaintiff from using the mark nor seek rectif ication of the registration
obtained by the plaintiff and I have wondered the impact thereof on the
matter of interim injunction i.e. decision on these applications. However on
further consideration, I am of the view that merely because the ex parte
injun ction has continued for long, cannot be a ground to continue it further ,
once the plaintiff is found to have approached the Court with unclean
hands . Similarly, merely because the defendant no.1, for whatsoever reason
has not considered it worthwhile to re strain the plaintiff from using the
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mark or to seek cancellation of the registration in favour of the plaintiff,
also cannot be a reason to continue restrain t against the defendant no.1.
23. That brings me to the argument of the plaintiff, of prior use. Having
perused the documents of the respective parties, I am of the prima facie
view that at this stage at least it cannot be said that the plaintiff is the prior
user of the mark. Thus de hors the aforesaid reasons, the plaintiff is not
found to satisfy the essential ingredient of prima facie case, to be entitled to
interim injunction. Not only so, use by the defendant no.1 of the mark
„8AM‟ in conjunction with „Mohun‟s‟ even otherwise distinguishes the
product of the plaintiff and the defendant no.1 and it is felt that no case of
irreparable injury even is made out.
24. Accordingly, IA No.18379/2013 of the defendant no.1 under order
XXXIX Rule 4 of the CPC is allowed and the ex parte ad-interim
injunction dated 10th September, 201 3 is vacated and IA No. 14412/2013 of
the plaintiff for grant of ad -interim injunction is dismissed.
CS(COMM) No.485/2018
25. The proceedings in the suit have been already adjourned sine die in
terms of order dated 22nd October, 2018 .
26. The suit be listed as and when applied b y either party and in the
absence of either party so applying, for directions , on 1st April, 2022.

RAJIV SAHAI ENDLAW, J.
JANUARY 29, 2021
gsr..
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