Om Prakash Gupta v. Parveen Kumar & Anr.
2000 (20) PTC 326 (DEL)
Plaintiff was the registered proprietor of the label ‘Suraj Chhap’ in respect of scented chewing tobacco. However, the registration of the Plaintiff was granted subject to a disclaimer on the word ‘Suraj’ and the device of ‘Sun’.
The Plaintiff used the mark ‘Suraj Chhap’ from 1973 to 1978 and thereafter recommenced the use of the mark in the year 1999. Meanwhile, somewhere in 1995 Defendants started marketing raw tobacco in pouches under the mark ‘Suraj Chhap’ tobacco in distinctive pouches. Plaintiff filed a suit against the Defendants for injunction against infringement of trademark and passing off, besides other reliefs.
In August, 1999, the Plaintiff obtained an ex parte injunction against the Defendants restraining it from using the mark ‘Suraj Chhap’. At the time of obtaining the ex parte order the Plaintiff has not disclosed to the Hon’ble Court that it’s trade mark is registered subject to a disclaimer on the word ‘Suraj’ and the device of ‘Sun’.
The Defendants filed an application under Order 39 Rule 4 for vacating the ex parte order.
• Plaintiff has traded extensively under the trade mark ‘Suraj Chhap’ for different varieties of tobacco since the year 1973 in several states and has got good reputation in his products.
• The registration of the Plaintiff’s trademark remains on the register of the trademark till today, having been renewed every seven years which is still valid. It shows that there was no intention to abandon the trademark.
• The fact of non- user for more than 16 years is irrelevant as this Hon’ble Court in Polson Ltd. v. Polson Dairy Ltd.; 1996 PTC 709 has held that the Plaintiff may have temporarily discontinued the use of trademark, but he is entitled to protection of the same by virtue of Sections 28 and 81 of the Trade and Merchandise Marks Act, 1958 as the trademark still continues on the register of the trade mark registry and is still valid.
• Plaintiff also has common law rights towards action for passing off in respect of his trademark on account of long and extensive use therefore the factum of disclaimer is irrelevant and not a material concealment.
• Plaintiff has made a misleading statement that his trademark is registered. His trademark was registered but with a disclaimer of the word ‘Suraj’ and the device of ‘Sun’ which fact has not been disclosed. Thus, the Plaintiff had obtained the earlier injunction by misrepresentation of facts.
• Plaintiff does not have any right in the trademark or in the goodwill in respect of the trademark ‘Suraj Chhap’, due to non-user.
• Plaintiff has restarted new business under the said mark only in the year 1999, whereas the Defendants have been using the trademark before that time.
On factum of disclaimer:
The fact of the disclaimer has not been mentioned in the plaint nor so disclosed orally at the time of ex parte order and rather clear and categorical statement has been made in the Court also that the trademark ‘SURAJ CHHAP’ is a registered trademark registered at Sr. No. 287631 and obviously the basis of the ex parte injunction is the averment made in the plaint, material placed on record and the representation made in Court. This is a mis-representation of material fact made to the Court.
The Plaintiff thus by suppressing the fact of disclaimer, has prevaricated and has tried to overreach the process of the Court in an attempt to obtain ex parte injunction. The special advantages which the Act gives to the proprietor by reason of the registration of its trademark did not extend to the matter in the trade mark which he had disclaimed. In short, the disclaimed part(s) or matter(s) is not within the protection of the statute.
Obviously, the Plaintiff has not only concealed material fact and document but has made misrepresentation of facts and thereby misused the process of the Court by fraudulent means. This conduct is highly derogatory, without justification and is reprehensible.
On maintainability of passing off action and effect of non-user till 1999:
Plaintiff has not given any proper explanation or valid reason for abandonment of the mark till 1999 and therefore, the Plaintiff does not have any right to an action of passing off as in absence of any proper explanation towards non-use the mark, the mark was abandoned by the Plaintiff. The Defendants being the prior adopter and user of the impugned trademark after abandonment and before 1999, and the particular pouch has superior right than that of the Plaintiff.
The injunction was vacated and the suit was dismissed on account of material concealment of disclaimer.
Author: Aadhya, National Law University, Odisha