TaxTMI 
TaxTMI 
2012 (9) TMI 1216
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...., and hence by such prior use it has become the owner of the trademark. The defendant No. 1 contests the suit claims. It is urged that the defendant No. 1 is the parent company of the erstwhile predecessor-in-interest company of the plaintiff and which owned the trademark 'EXIDE'. It is pleaded that the defendant No. 1 is the worldwide owner of the trademark 'EXIDE' as it has consistently used the trademark since the beginning of the century, and which trade mark is registered in about 130 countries. What is strenuously pleaded/urged on behalf of the defendant No. 1 is that being the prior user worldwide, and since there exists transnational/spillover reputation in India, it is the defendant No. 1 who is the owner even in India of the trademark, and not the plaintiff. It is also urged that the registration which the plaintiff has in the trademark 'EXIDE' is not only void as it has been obtained by playing a fraud on the office of the Registrar of Trade Marks, but the same also has no effect in the eyes of law because the trademark 'EXIDE' by virtue of certain agreements which are relied upon by the plaintiff itself has necessarily to be retransferred....
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.... the parent company was granted registration of the trademark 'EXIDE' in U.S.A. Since the CESCO was a group company of ESBC, CESCO was permitted to use the trademark. CESCO also came to be granted registration in U.K. for the trademark 'EXIDE' on 23.12.1902 numbered as 250920 (Ex. DW1/34). Pursuant to an order of a U. S. District Court dated 24.11.1947 (Ex. DW1/35), between the U.S. company and the U.K. company, an agreement was entered into whereby the connection between the parent company ESBC and the U.K. company CESCO was snapped, however, under that agreement CESCO continued to have the right to use the trademark 'EXIDE'. This is an undisputed position on record that CESCO so far as U.K was concerned was an independent owner of the trademark 'EXIDE'. It is the case of the plaintiff that CESCO started selling batteries in India under the name 'EXIDE' from U.K. however, subsequently CESCO applied for and was granted registration of the trademark 'EXIDE' even in India on 8.6.1942 (Ex. PW2/1 to Ex. PW2/3). CESCO is said to have set up its factory in India in around the year 1946 at Shyamnagar in West Bengal for manufacturing batterie....
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.... state that as on date in the records of the Registrar of Trademark the plaintiff is the registered owner of the trademark 'EXIDE'. The defendant No. 1 has however applied to the High Court of Calcutta under Section 56 of the Trade and Merchandise Marks Act, 1958 for cancellation of the registrations standing in the name of the plaintiff company, and which proceedings are pending. At this stage, I put on record that since this suit was filed in the year 1997 i.e. before the Trade Marks Act, 1999 came into force, the common case of both the parties before me is that the suit has to be decided in terms of the 1958 Act. Plaintiff in the plaint claims that though it went into manufacture of batteries under the trademark 'EXIDE' from the year 1978 onwards, however, plaintiff is entitled to tag the user of the earlier owners of the trademark firstly of M/s. CESCO and thereafter of M/s. Chloride Group Ltd. i.e the plaintiff claims in effect the user of the trademark 'EXIDE' at least since 8.6.1942 when registration was granted of the trademark 'EXIDE' and 'IRON-CLAD EXIDE' to M/s. CESCO in India. The plaintiff also relies upon admission made by t....
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....on the aspect as to whether the plaintiff is the registered proprietor of the trademark 'EXIDE' and hence entitled to injunction against the defendant No. 1 from infringing the trademark 'EXIDE', and the corresponding defence of the defendant no. 1 of the registrations not being valid in the name of the plaintiff. (ii) This fact cannot be disputed in any manner that in the record of the Registrar of Trademark, as things stand today, the plaintiff is the owner of the trademark 'EXIDE'. The defendant No. 1 does not dispute that by virtue of the registration certificates Ex. PW2/1 to Ex. PW2/3 there is in the record of Registrar of Trademark ownership of the trademark standing in the name of the plaintiff. What the defendant No. 1 in the written statement pleads by its para 13 is that the agreement dated 7.2.1978 between the Chloride Group Limited and the plaintiff for transfer of the trademark has resulted in a fraudulent and illegal grant of registration to the plaintiff. The defendant No. 1 argues that the assignment was a conditional assignment, and on account of failure to abide by the terms of the assignment the plaintiff is not the owner of the tra....
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....signor falling below 40%; b. The acquisition by any individual or company (other than the assignee) or body corporate or any person or any group within the meaning of Section 2(18A) of The Companies Act, 1956 of the controlling interest in the assignor; The Plaintiff got itself recorded as the subsequent proprietor of the trademarks on the basis of Deed of Assignment dated 7th February 1978, without disclosing to the Registrar of Trade Marks, the existence of the Agreement and the Deed of Reassignment to which that assignment was subject. This was a glaring fraud committed upon the Registrar. The Registrar, as a result of this fraud, put the Plaintiff's name on record as the subsequent proprietor when in fact the Plaintiff was only the licensed user of the trademark. This wrong reflection of the factual position on the Register was a fraud on the Indian public. (Underlining is mine) 5. Learned Counsel for the defendant No. 1 has very strongly sought to argue the case of the defendant No. 1 relying on the two agreements dated 7.2.1978 and the third agreement dated 2.6.1980. Reliance was sought to be placed upon these agreements to argue that t....
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....rties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2). (5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly. (6) The power to rectify the register conferred by this section shall include the power to remove a trade mark registered in part A of the register to Part B of the register. Section 2(x) "tribunal" means the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending. As per Section 9 of Code of Civil Procedure, 1908 (CPC), every Civil Court has jurisdiction to try all suits unless cognizance of the same is expressly or impliedly barred. So far as the issue of cancellation of the trademark is concerned, once there are specific authorities, including the High Court before whom an application for rectification of the trademark is made, and since the same is admittedly pending, consequently, a Civil Court before whom injunction is prayed by the registere....
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....r defendant's trade mark in prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b)(ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in subsection (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order i....
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....#39;EXIDE' in favour of the plaintiff. Issue No. 6 is also decided in favour of the plaintiff inasmuch as if the plaintiff is the owner of registered trademark 'EXIDE' the defendant No. 1 by using or proposing to use the trademark has caused or will cause infringement of the registered trademark of the plaintiff. Issue nos. 3,7 and 8 9. I will now take up for disposal the other issues in the case and which issues touch the aspect of passing off and prior use. The aspect of passing off is basically on the aspect of prior use. Before going further I must record that counsel for the parties agree that issue no. 8 is wrongly framed as the word infringement therein should not exist and the issue would be whether use by the plaintiff of the mark 'EXIDE' amounts to passing off the trademark/trade name of the defendant No. 1. This issue has been framed as the defendant no. 1 has filed a counter-claim against the plaintiff and which counter-claim also will be decided by the present judgment. 10. In trade mark law, prior use and adoption of a trademark in relation to goods, which cause distinctiveness of the trade mark on account of sale of the goods under the tr....
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....sors after 1947 being only common law licensees of the defendant No. 1-company, and as so urged on behalf defendant No. 1 before me, is an argument which I find to be wholly unbelievable. Surely, when a gargantuan company such as the defendant No. 1 to the suit and their group companies operate in a commercial field, that too, in dozens of countries worldwide, if the plaintiff was only to be a common law licensee, there actually would have been specific written document to that effect. There is however admittedly no such document or agreement. The written statement contains no mention of any specific date or any terms of the so called common law license permitting the plaintiff to use trade mark 'EXIDE'. Also, the case as has been argued before me during the final arguments, even assuming there are such pleadings, has no credibility whatsoever inasmuch as why would one commercial entity being defendant No. 1 company allow one of its most valuable assets i.e the trade mark 'EXIDE' to be used by another company in which it has no controlling interest. It is also not the case in the written statement that the common law license has been given for any valuable considera....
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....ara 5 of the written statement on merits is reproduced as under:- 5. The contents of Paragraph 5 as stated are denied. It is denied that the Chloride Eastern Storage Co.(U.K.) is the Plaintiffs predecessor. Up to about the year 1947, the first Defendant No. 1 was directly by itself and through its agents and dealers, marketing batteries in India under the Exide trademark. The true fact is that no batteries were manufactured in India up to the year 1960. From about the year 1920 to 1960, batteries manufactured, inter alia, by Electric Storage Battery Company (which later became Exide Corporation), were imported into India by F & C Osler Ltd. The Plaintiff up to 1960 had no manufacturing capability and did not manufacture batteries in this country. Some time after 1960, the Plaintiff started manufacturing batteries in India and up to 1978, they were the registered users (licensees) of the trademark 'Exide'. The Plaintiff, being a mere licensee, did not have any proprietary rights in the trademark Exide. (v) It is relevant at this stage to note that the user of the predecessors of the plaintiff company i.e. M/s. CESCO and Chloride Group Ltd. of the trademark 'E....
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....ff and their predecessors-in-interest are the prior user of the trade mark 'EXIDE'. I also note that since vide Ex. PW2/1 to PW2/3, there is shown continuous existence of registration of the plaintiff and its predecessors-in-interest of the trade mark 'EXIDE', in a way, this will also be a presumptive indication (though rebuttable) of actual user of the trade mark by the plaintiff. I have already in the earlier part of this judgment referred to the fact that the registrations existed in favour of two predecessors-in-interest companies of the plaintiff i.e. M/s. CESCO and M/s. Chloride Group Ltd. M/s. CESCO had obtained registration of the trade marks 'EXIDE' and 'IRONCLAD EXIDE' pursuant to their application dated 8.6.42. Chloride Group Ltd. which was the holding company subsequently of M/s. CESCO and it had also obtained independent registration of the trade mark 'EXIDE' on 23.4.1973. Once therefore the trade mark 'EXIDE' exists as registered trade mark of the plaintiff company and its predecessors-in-interest, the normal consequence also would be that the plaintiff would be the prior user of the trade mark, unless the defendant No. ....
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....defendant No. 1 has failed to show me any documents filed and exhibited on behalf of the defendants to show actual sale of goods under the trade mark 'EXIDE' by the defendant No. 1 in India from the year 1950 till the year 1997. I therefore hold that there were no sales by the defendant No. 1 under the trade mark 'EXIDE' in India from the year 1950 till the year 1997. 16. The next aspect is that even if there are no sales by the defendant No. 1 under the trade mark 'EXIDE' from the year 1950 till 1997, can it be said that the defendant No. 1 still remains the owner of the trademark 'EXIDE' inasmuch as there existed special circumstances for the defendant No. 1 not to have sold the goods under the trade mark 'EXIDE' in India from the year 1950 to 1997. If there are no special circumstances, and the plaintiff and its predecessor companies are found to have sold the goods under the trade mark 'EXIDE' in their own rights, then, it will be the plaintiff who will become owner of the trademark and the defendant No. 1 would have lost its rights to claim the ownership in India of the trade mark 'EXIDE' even if the defendant No. 1....
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....on to abandon the trademarks. If, that is established it is a complete defence to the action. The second erroneous finding of the Division Bench was that economic viability or existing market condition was outside the concept of special circumstances. The finding does not follow from the Section and is against the weight of authority. 59. Special circumstances have been defined in Aktiebolaget Manus v. R.J. Full wood and Bland, Ltd. (1949) 66 RPC 71 as "some external forces as distinct from voluntary acts of any individual"......... where the impact of local condition makes impractical the ordinary usage of international trade". In that case it was held prohibitive tariffs which were practically effective to keep out of England altogether machines manufactured abroad which had, till the tariffs had been imposed, been imported to the country amounted to special circumstances. The facts in Manus' case are similar to the facts which we have to consider. In dispute were trademarks as applied to milking machines. The proprietor of the marks was a Swedish company. The machines had been imported into Britain through the defendant No. 1 as its agent When the import of the milk....
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....that scheme. The non-use of the trade mark by the Bali Company, even during the token import scheme, is thus in my view, shown to have been due to special circumstances in the trade. (Emphasis supplied) 62. The Court of Appeal reversed this decision on another issue. The House of Lords in turn reversed the decision of the Court of Appeal and reaffirmed the decision of Justice Ungoed Thomas in Berlei (U.K.) Ltd. v. Bali Brassiere Co., Inc. 1969 (2) ALL ER 812. 63. This view has been accepted as good law in this country. [See A.J. Vulcan v. V.S. Palanichamy Nadar and and Express Bottlers Services Pvt Ltd. v. Pepsi Inc. and Ors. The law therefore is that even an economical impracticability would amount to special circumstances. (Underlining is mine) 18. The underlined portion of the aforesaid paragraphs of the judgment of the Supreme Court in Hardie Trading (supra) makes it clear that existence of special circumstances is an aspect so as to arrive at a conclusion as to whether or not there was intention to abandon the trademark. If there are special circumstances because of which a person does not sell the goods in a country, then, there is no in....
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....inion it cannot be urged that the defendant no. 1 must succeed in its argument of special circumstances. I also disagree that this issue should be taken to be included in issue No. 8 inasmuch as this would cause irreparable prejudice to the plaintiff who has led no evidence and not dealt with its case so as to counter the case of 'special circumstances'. I therefore hold that the plea of special circumstances raised on behalf of the defendant No. 1 must fail. This plea of special circumstances is accordingly rejected firstly on account of lack of pleadings and non-existence of a specific issue in this regard. 20. (i) In my opinion, the argument of existence of special circumstances has secondly also to be rejected in the facts of the present case because the defendant No. 1 has really failed to lead any credible evidence to prove the existence of alleged special circumstances. For the sake of considering this submission, I am presuming that there are pleadings and an issue framed on this aspect of special circumstances, though that is not so. (ii) Let us see that what is the evidence led by the defendant No. 1 on this aspect of special circumstances. There is no document....
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....eight to the deposition as per paras 34 to 36 as reproduced above of the witness Mr. Bruce Cole (DW-1) to hold that special circumstances existed. In my opinion before it is held that there was either a direct or indirect bar for batteries to be imported in India or the import of batteries would have been economically unviable for the defendant No. 1 for being sold in India because the defendant No. 1 would then have to sell at a loss, then such aspects are such which could have been proved only by leading clear cut and categorical evidence. I do not think it is difficult to prove Government circulars (and which in fact without being proved could even be referred to at the stage of final arguments), however, there is absolutely nothing on record for this Court to come to a finding that there was any direct or indirect bar or prohibition for importing of batteries in India by the defendant No. 1 so that they could not sell batteries in India under their trademark 'EXIDE'. The defendant No. 1 did have sufficient opportunity during its evidence to throw the required light on this issue of an alleged bar or existence of circumstances/ economic unavailability ,but this aspect is....
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....roof, I hold that the plea of special circumstances as set up by the defendant No. 1, even assuming for the sake of argument that there are pleadings and issue to this effect, therefore has to fail. (ii) I therefore reject this argument of the defendant No. 1 that because of special circumstances including of the economic unavailability etc it was not able to sell its goods in India under the trademark 'EXIDE' from the year 1950 to 1997. 23. (i) Once in the facts of the present case, the defendant No. 1 has failed to discharge its onus of proof as stated above, the issue which arises is that can the plaintiff be held to be the owner on account of prior user of the trademark 'EXIDE'. I have already discussed above the aspect of sale by the plaintiff and its predecessor-in-interest companies from around the year 1960 onwards. The plaintiff, therefore, in the absence of the defendant No. 1 showing sales in India or existence of alleged special circumstances, would become owner of the trademark 'EXIDE' in India. This conclusion is additionally conditioned by what I am stating hereinafter. (ii) Even if the plaintiff was selling its goods in India under the ....
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....elonged to the U.S. company. The sale by the U.K. company was not in any manner related or shown to be related with the U.S. company. Under these circumstances, it was held by the Chancery Division that the sale by the U.K. company of mill machinery under the trademark Sturtevant was in its own right and the U.K. company will be the owner so far as U.K. is concerned of the trademark Sturtevant. The relevant paras of this judgment read as under:- It is obvious from what I have said that during the period from 1911 down to the year 1933, that is to say, 21 or 22 years, there was no question of the American Company acquiring any goodwill or any benefit of that kind in respect of its business in this country, because it was not permitted under that agreement to trade in this country. It did not attempt to trade in this country and therefore the goodwill, as far as there was a goodwill in this business in this country, was the goodwill of the plaintiff company. Although it may be that some of this special machinery for grinding, crushing and screening, may have come from America and may, in some few cases, have been known by persons in the trade as having come from America, non....
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....mon law action for damage; this is a quia timet action for an injunction to prevent a possible damage in the future; it is an equitable action and one to which equitable principles apply, and it is said there is some equity which ought to disentitle the Plaintiffs to the relief which they seek. I confess I fail to appreciate the force of that submission. If the Plaintiff Company has surreptitiously and improperly obtained the benefit from their connection with the American Company, there might be some sort of equity, but that is not the case; in fact, so far is that from being the case, that any benefit which the Plaintiff Company may have derived from their connection with the American Company was a benefit for which they paid, and as a result of a bargain made between the Plaintiff Company and the American Company. The American Company cannot now complain, as it seems to me, having had their quid pro quo, because the Plaintiff Company have had, or may have reaped, some benefit in this country from that connection. What the equity is which disentitles the Plaintiffs to relief, if otherwise they are entitled to it, I confess I am not able to appreciate. But then it is said: if the ....
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....he larger number of shares in the Company, and for the time being having the control of the Company. That again, it seems to me, is not a sound contention. So far as this county is concerned, there never has been any engineering business of this kind other than the Plaintiffs' carried on under the name of "Sturtevant," or under any name of which "Sturtevant" forms a part, and there is no question of carrying on some existing business under the form of a limited company instead of by a private person, or anything of that sort at all. So far as this county is concerned, I am bound, it seems to me, to treat the position as precisely the same as if the American Company did not exist or had no sort of connection with the Defendant Company. It cannot, in my judgment, make any difference that there is in existence in America a company which as for many years carried on this kind of trade under the name of "Sturtevant". The Defendants' business is a new business, so far as this country is concerned, and although the facts in this case afford ample explanation for the desire of the Defendants to use the name "Sturtevant" in their title, and negative any suggestion that they have del....
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....ers, stationery and the like, which were used for what was known as "the Adrema system", in the United Kingdom. The result of this was that in the United Kingdom, the name "Adrema" and the goodwill associated with that name, became attached to the Plaintiffs, Adrema Ltd., as the sellers, and not to the manufacturers (the Germany Company), although the five trade marks were registered in the United Kingdom in 1924 in the name of the Germany Company. It must be noted that in 1933 about one half of the goods comprised in the Plaintiff Company's annual turnover were not made in Germany, and after the formation of the Plaintiff Company no goods had been sold in the United Kingdom by the German Company otherwise than to the Plaintiff Company in the period before the war. The word "Adrema" in some form was placed prominently on the face or side of all goods sold by the Plaintiffs in the United Kingdom. xxxx xxxx xxxx The whole substance of the German Company's defence appears me to be based on the German Company's present name being "Adrema-Werke G.m.b.H.". There are, however, some important facts which affect the position. It is true that for some ten years ....
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....nder the trade mark WESTON, which goods were imported into England from about 1900. In 1918 it formed a wholly owned subsidiary in England through which its goods were sold, but in 1936 it entered into an agreement with an English company called Sangamo under which it sold 51% of its shares in its English subsidiary to Sangamo, and provided for a market sharing arrangement under which the English subsidiary, now controlled by Sangamo, would sell WESTON goods in the British Empire, and would enjoy patent licences and technical co-operation from Newark. In 1939 there was a further agreement between Newark and Sangamo under which Sangamo acquired all the shares in the former subsidiary, and in return for an annual fee payable over 15 years Newark agreed to supply Sangamo on request with further technical assistance, but there was no obligation on Sangamo to manufacture their goods which were to be sold as WESTON goods in accordance with any standards or requirements of Newark. It was also provided that Sangamo and Newark would share the world market in WESTON goods, with mutual agreements not to sell in each other's territory. In 1945 there was a further agreement which recited th....
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....aid three judgments because the ratio of Hardie Trading Ltd. of the Supreme Court will not apply to the facts of the present case as the defendant No. 1 has failed to show existence of special circumstances. If the defendant No. 1 had proved the existence of special circumstances, then, the aforesaid three judgments would not have applied inasmuch as the Supreme Court in the case of Hardie Trading Ltd. has held that if there are special circumstances by which the parent company or the original company could not sell goods in the local market, then, the original parent company does not lose rights in the trademark. 29. Finally, Learned Counsel for the defendant No. 1 has sought to place reliance upon Section 34 of the Trade Marks Act, 1958 and paragraphs 199 and 200 of Halsbury's Laws of England, 1995 Fourth Edition Reissue, Volume 48 to argue the entitlement of defendant No. 1 to use its own trade name or in any case a right to concurrent use and shared goodwill. Section 34 of the Trade Marks Act and paras 199 and 200 of Halsbury's Laws are reproduced as under: 34. Saving for use of name, address or description of goods.--Nothing in this Act shall entitle the pr....
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....r mark can prevent the other from continuing to use it but the vested right of property of traders in marks which they have honestly adopted and which by public use have attracted valuable goodwill must be accommodated with the interest of the public in not being deceived about the origin of goods. A concurrent right to use does not, however, justify the use, whether intentionally or not, of a name or mark with attributes which increase the risk of confusion. Another source of concurrent rights of use can arise from the rules of the European Community as to free movement of goods and as to competition. 30. Surely, the arguments in this regard are only arguments of desperation. Once it is the plaintiff who is the owner of the trademark in India, surely then no person including the defendant No. 1 can claim benefit of Section 34 alleging bona fide use. The defendant No. 1, if is entitled to use the trademark and trade name with the expression 'EXIDE' in countries abroad, however, in India since the trade mark 'EXIDE' is relatable to and distinctively only of the goods of the plaintiff and its predecessors companies, Section 34 cannot be so read that in spi....
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....intiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant Company which is yet to commence its business from utilizing the name of "Mahendra" or "Mahendra & Mahendra" for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge. (ii) Another relevant judgment in this regard is the judgment of a Division Bench of this Court in the case of Montari Overseas Ltd Vs. Montari Industries, 1996 PTC (16) 142 (Del). The relevant portions of this judgment are as under: "When a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired reputation and the public at large is likely to be misled that the defendant's business is the business of the plaintiff, or is a branch or department of the plaintiff, the defendant is liable for an action in passing off. Even if the word "MONTARI" as part of the corporate name of the appellant was derived from the names of the father a....
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....onsidered from the point of view of that person. Copying of a trade name amounts to making a false representation to the public from which they have to be protected. Besides the name of the company acquires reputation and goodwill, and the company has a right too to protect the same. A competitor cannot usurp the goodwill and reputation of another. One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation & business of that person". (iii) The ratio of Montari is also the ratio of the judgments of this Court in Dr. Reddy's Laboratories cases which are reported as Dr. Reddy's Laboratories Ltd. VS. Reddy Pharmaceuticals Ltd. 2004 (29) PTC 435 (Del) and Reddy Pharmaceuticals Ltd. Vs. Dr. Reddy's Laboratories Ltd. 2007 (35) PTC 868 (Del.) (DB). Paras 15 and 16 of the learned Single Judge's Judgment in the above decision read as under:- "15. The plea raised by the defendant that it has a bona fide statutory right to use the trade name "Reddy" as its Managing Director is Mr. Reddy is also liable to be rejected for the reason that the trade mark "Dr. Reddy" in spite of not being registered has acquired con....
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....(i) By the same rationale as given above paras 199 and 200 of the Halsbury's Laws of England (supra) cited above can have no application inasmuch as so far as India is concerned once the plaintiff is the owner of the trademark 'EXIDE' the defendant cannot use the trademark either in relation to goods or in relation to its trade name. I am of the opinion that paras 199 and 200 of the Halsbury's Laws of England (supra) cited before me cannot be so read that even if one person is owner of the trademark, such owner of trademark cannot prevent any other person who uses the same trademark against the interest of the owner. Once again I am making this statement with respect to ownership of the trademark by the plaintiff and its predecessor companies in India inasmuch as in India whether they be customers/buyers/dealers or any other persons associated with the trade do not understand the sale of batteries under the trademark 'EXIDE' as being in any manner related to the defendant No. 1/US company. The sale of the goods being the trade mark 'EXIDE' by all the concerned persons is only relatable to the plaintiff and its predecessors, and therefore, thought the....
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....tual injunction can be refused. As per Section 38 of the Specific Relief Act, 1963 once a plaintiff proves that it is necessary to prevent the breach of violation of an obligation existing in the plaintiffs favour, and such breach being violation of ownership of the trademark, perpetual injunction follows. At the cost of repetition, discretion of the Court has to be exercised with respect to denial of injunction at the stage of final disposal of the suit only if the suppression is such for the Court to be convinced that everything else which the plaintiff has done, and which shows that the plaintiff is the owner of the trademark, becomes immaterial because of suppression and is such for the substantive proved relief of injunction to be declined. In the facts of the present case, I do not feel that the discretion should be so exercised by me against the plaintiff to decline the relief as claimed, merely on the ground that there is certain suppression of facts. Issue No. 4 is accordingly decided against the defendant No. 1. ISSUE No. 5 34. Issue No. 5 is with respect to acquiescence of the plaintiff. I have already partly dealt with this aspect in para 32 above. I have already ....