Prior user and deceptive similarity in passing off can override registration and sustain interim trade mark protection.

Territorial jurisdiction under Section 134 of the Trade Marks Act was treated as available at the interim stage because the plaint stated that the plaintiffs carried on business in Delhi and that averment was not specifically denied; the objection was left open for re-examination at issue-framing and trial as a mixed question of law and fact. In the passing off dispute, the defendants failed to establish continuous prior user, while the marks AQUAFINA and AQUAFINE, together with the packaging and get-up, were found deceptively similar and a slavish copy. Prior user and common law rights were treated as prevailing over mere registration, so interim protection was continued.

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Issues: (i) Whether the Court had territorial jurisdiction to entertain the suit under Section 134 of the Trade Marks Act, 1999. (ii) Whether the plaintiffs were entitled to confirmation of the ex parte ad interim injunction on the basis of prior user, deceptive similarity of the marks, and copied packaging, notwithstanding the defendants' registration.

Issue (i): Whether the Court had territorial jurisdiction to entertain the suit under Section 134 of the Trade Marks Act, 1999.

Analysis: The plaint asserted that the plaintiffs carried on business in Delhi and that their mark was registered. The defendants did not specifically deny the material averments regarding the plaintiffs' business activities in Delhi. On that basis, the Court held that jurisdiction could be assumed at the interim stage. It also observed that the question of jurisdiction remained open for re-examination at the stage of framing of issues and after trial, since it was a mixed question of law and fact.

Conclusion: The objection to territorial jurisdiction was rejected.

Issue (ii): Whether the plaintiffs were entitled to confirmation of the ex parte ad interim injunction on the basis of prior user, deceptive similarity of the marks, and copied packaging, notwithstanding the defendants' registration.

Analysis: The defendants failed to produce cogent material to establish continuous prior user of the mark from 1992, and their documents did not show a reliable or uninterrupted chain of use. The Court found that the rival marks AQUAFINA and AQUAFINE were almost identical and that the packaging and get-up were a slavish copy of the plaintiffs' packaging. It further held that registration by the defendants did not defeat a passing off claim because prior user and common law rights prevail over mere registration, and registration does not confer immunity against an action by a prior user.

Conclusion: The plaintiffs were held entitled to continuation of interim protection and the defendants' request for vacation of the injunction was rejected.

Final Conclusion: The interim restraint against the defendants was continued, and the application was disposed of in favour of the plaintiffs.

Ratio Decidendi: In a passing off action, prior user and goodwill prevail over mere registration, and deceptive similarity assessed from the overall mark and get-up can justify interlocutory protection.

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