KING POINT ENTERPRISES CO LTD Through: Mr. Surinder Singh, Advocate.

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1 IN THE HIGH COURT OF DELHI AT NEW DELHI SUBJECT : SUIT FOR INJUNCTION I.A Nos. 9341/2011 (O.39 R.1 & 2 CPC) & 10119/2012( O.39 R.4 CPC) IN CS(OS) 1409/2011 Reserved on: 12th September, 2013 Decided on: 23rd October, 2013 KING POINT ENTERPRISES CO LTD Through: Mr. Surinder Singh, Advocate.... Plaintiff versus ALI ASGAR & ORS... Defendants Through: Mr. Hrishikesh Baruah, Advocate for Defendant No. 1. Mr. Surjit Singh Malhotra, Adv. for Mr. Rajat Joseph, Adv. for D-2. CORAM: HON'BLE MS. JUSTICE MUKTA GUPTA I.A No. 9431/2011 (u/o XXXIX R 1&2 CPC) I.A No /2012 (by D-1 u/o XXXIX R 4 CPC) 1. As per the plaint the plaintiff is a company existing under the laws of Tiawan and claims to be a leading manufacturer of hardware products including rivets, self-drilling screws, fasteners and many other items of building hardware with over two decades of manufacturing experience. The plaintiff claims to be the owner of trademarks PTA and PATTA and its logos/ devices. The trademark PATTA was adopted in the year 1987 by the plaintiff company and PTA in the year The trademarks PATTA and PTA are coined and conceived by the plaintiff. It is claimed that on account of the highly distinctive nature of the pioneering activities of the plaintiff the two trademarks PATTA and PTA have acquired excellent reputation from the very beginning and are synonymous with high standard of quality in respect of goods produced by the plaintiff company. The plaintiff is a SGS ISO 9001:2000 certified company and a member of UKAS Quality

2 Management the sole national accreditation body recognized by United States Government that provides certification, testing, inspection and calibration services. The plaintiff company is a registered proprietor of the trademarks PATTA and PTA in many countries and was registered in India. In India trademark PATTA was registered on 1st November, 2004 in Class 6 with user claimed since 9th October, Further the trademark PTA of the plaintiff company is pending registration in India claiming user since 2002 in Class 6 since October and December, The plaintiff claims to have adopted a very distinctive packaging design in a very special manner since 2002 with the word PATTA and its logo on the outer packaging of each and every product manufactured by it, and the trademark PTA embossed on the products sold under the trademark PATTA. The packaging of the plaintiff under the trademark PATTA is an original art work within the meaning of Section 2(c) of the Copyright Act and the plaintiff is the sole and exclusive copyright owner with exclusive right to reproduce the logo PATTA on its packaging in any form whatsoever. The plaintiff Group s website at is constantly updated with information and knowledge about the products range. The plaintiff in the last week of March, 2011 came to know that defendant No.1 is issuing caution notices to the customers of the plaintiff and threatening them of civil and criminal action in case they sell the goods of the plaintiff under the trademark PTA, as the defendant No.1 claims himself to be the registered owner of trademark PTA. The defendants No.1&2 were earlier the dealers of the plaintiff company in the year for goods under the trademark PATTA and PTA in India and suddenly they stopped purchasing the goods for reasons best known to them. Thereafter, defendant No.1 got the trademark PTA registered in the year 2008 in his name under No in Class 6 by giving incorrect information. Defendant No.2 is the dealer/distributor/agent of the defendant No.1 and is selling the goods of defendant No.1. On the basis of these averments the plaintiff has, inter alia, prayed for a decree of permanent injunction agaomst the defendants restraining the defendants, their proprietors, agents, etc. from using the trademarks PATTA and PTA or its device in any manner whatsoever which is deceptively or confusingly similar to the plaintiff s trademark PTA so as to cause confusion or deception leading to passing off, unfair competition and dilution of plaintiff s trademark, damages and delivery of the counterfeit goods. 2. The suit came up for hearing before this Court on 31st May, 2011 when this Court by way of ex-parte ad interim injunction restrained the defendants from using the trademarks PTA and PATTA with or without

3 device and the packaging similar to that of the plaintiff or any other deceptively similar device mark or packaging. Defendant No.1 being aggrieved by this order in view of the suppression of the material facts by the plaintiff, filed an application under Order 39 Rule 4 CPC and also filed an appeal before the Division Bench which was disposed of with the observation that this Court would consider both the applications. Thus, both the applications have been taken up for hearing. 3. Learned counsel for the plaintiff reiterates the averments in the plaint as mentioned above. Learned counsel for the plaintiff admits that defendant No.1 is the registered trademark holder of PTA in India. His contention is that the plaintiff has been selling goods under the trademark PTA in India and defendant No.1 had also been buying its goods. It is irrelevant even if the same are not being used first in India by the plaintiff, as the ultimate test is who is the first adopter and user of the trademark in the world. Reliance is placed on Milmet Oftho Industries & Ors. Vs. Allergan Inc. (2004) 12 SCC 624. The defendants have copied the entire packaging including the logo. Further, only the first user gets the right to the trademark as held in Century Traders Vs. Roshan Lal Duggar & Company AIR 1978 Delhi 250. Defendant No.1 started using the trademark PTA in 2011 whereas the trademark application of the plaintiff was filed as far back as 2008 claiming user since The print-out of the website clearly show the packaging of PATTA in blue and white colour and the screws with PTA headed thereon. 4. In the written statement defendant No.1 has claimed that the plaintiff obtained the ex-parte ad interim order dated 31st May, 2011 by concealment of material facts. Defendant No.1 though acknowledged the plaintiff s exclusive right to use the trademark PATTA, however it is stated that the plaintiff company has no such right in relation to the trademark PTA. As per the defendant the details of the various applications made by various parties in relation to the trademark PTA are as follows: Date of Application Applicant s Name Application No. Date of Usage shown Status of application MAARG (India)

4 Registered Kanta Aggarwal Rejected King Point International Since 2002 Rejected King Point International Proposed to be used Objected to 5. It is stated that the plaintiff concealed before this Court that his earlier application being had been rejected and the ground for refusal in terms of Section 11 of the Trademark Act was that similar trademark is registered in the name of defendant No.1 i.e. MAARG India. Further in the application No in relation to the trademark PTA the plaintiff does not claim prior user but claims that the trademark is proposed to be used. Further the application which has also been rejected, was filed by one Kanta Aggarwal who disclosed that she was trading in the name of M/s RSA Fastners. The details provided to defendant No.1 shows that both M/s Ram Swarup Aggarwal & Sons and M/s RSA Fastners are sister concerns and are run and managed by the agent of plaintiff company i.e. Shri Anil Aggarwal. The plaintiff can also not claim any copyright in the trademark PATTA as earlier it was simply embossing the stated trademark on rectangular box and due to the goodwill gained by the defendant No.1, in the last two-three years the plaintiff changed packaging of the boxes at least in India and is now copying the packaging boxes and the manner of the trademark PATTA similar to that of the defendant No.1. Defendant No.1 embosses trademark PTA in all kinds of screws whereas the plaintiff company did not do so. It is stated that the invoices shown by the plaintiff company relate only to the customized job work and the plaintiff company does not manufacture or sell screws under the trademark PTA and sells globally door stoppers, hinges etc. Further, the samples of the screws

5 manufactured for sale by the plaintiff company or its group companies do not have embossed trademark PTA on the screws. The defendant No.1 denied dealing with the products under the trademark PATTA except in special circumstances where it gets stocks from dealers from Bangalore and Chennai, as it had run out of stock, but the products were found to be defective and thus the same were found lying. 6. Defendant is claiming its right only on the trademark PTA and is not concerned whatsoever with the plaintiff s trademark PATTA. In the replication to the written statement the plaintiff does not deny his application for registration of trademark PTA being rejected. Once it is the case of the plaintiff itself in the application filed before the Trade Mark Registry, that the two trademarks are different, the plaintiff is estopped from claiming that the defendant No.1 is passing off his goods as that of the plaintiffs. A copy of the brochure of plaintiff has been filed by the defendant as per which there is no embossing of PTA on the screws. Reliance is placed on Anshul Industries Vs. Shiva Tobacco Company 2007 (34) PTC 392 (Del); Chorion Rights Limited Vs. Ishan Apparel & Ors (43) PTC 616 (Del.); Om Prakash Gupta Vs. Praveen Kumar and Anr. ILR (2000) II DELHI 124; Everyday Industries India Ltd. Vs. Mr. Sanjay Chadha & Anr. (2011) 179 DLT 355; Toyota Jidosha Kabushiki Kaisha Vs. Deepak Mangal & Ors. ILR (2010) IV DELHI 220 and Micolube India Ltd. Vs. Maggon Auto Centre & Anr. 150 (2008) DLT Heard learned counsel for the parties and perused the record. As regards the plaintiff s right in the trademark PATTA is concerned. the same is not disputed by the defendant, who claims no right in it or user thereto. Consequently, the interim injunction qua the trademark PATTA is made absolute till the disposal of the suit. However, with regard to the trademark PTA, the claim of the plaintiff is that the plaintiff is embossing the same on the products. Learned counsel for defendant No.1 has taken me through the booklets on screws and print out from the websites of the plaintiff of its products i.e. document filed by the defendant from pages 162 to 210 which have been admitted by the plaintiff. In none of the booklets the screws show the mark of PTA embossed on the heads of the screws. 8. It is evident from the record that in the plaint the plaintiff has misstated facts. It is stated that in relation to its trademark PTA the registration applications are pending before the Trade Mark Authority. The present suit was instituted on 30th May, 2011 by which time the applications

6 of the plaintiff No had already been rejected. Even the application filed by Kanta Aggarwal on behalf of the sister concern i.e. M/s. RSA Fastners had been rejected. Further, in the application No the date of user was shown to be proposed to be used and it was not claimed that the trademark was being used. There is no dispute that the defendant No.1 is the registered owner of the trademark PTA and has been selling its goods since the year Faced with this situation learned counsel for the plaintiff had contended that even if there are mistakes in drafting but this Court would still see whether a prima facie case is made out by the Plaintiff. Admittedly, as per the latest application of the plaintiff dated 21st December, 2009 seeking registration of the trademark PTA it is stated that the plaintiff proposes to use the trademark. Thus, all the claims of the plaintiff in the plaint with regard to the prior user of the trademark PTA in India stand falsified. 10. In The Central Council for Research in Ayurveda and Sidha and Anr. Vs. Dr. K. Santhakumari (2001) 5 SCC 60 relied upon by the learned counsel for the plaintiff, the Supreme Court has noted that a wrong concession on question of law made by the counsel is not binding on his client and such concession cannot constitute a just ground for a binding precedent. Further in Hidesign Vs. Hi-Design Creations 1991 (11) PTC 178 (Del) it was urged that the defendant did not disclose that he was not known to the plaintiff and the plaintiff and the defendant were having business dealings. This Court held that at this stage it would be appropriate to impose fine and the fact of non-disclosure would be considered at the time of final determination of the suit. However, in the present case the plaintiff not only concealed material facts but also stated incorrect facts like the pendency of the application for registration of trademark PTA though the same had been rejected and that too on the ground that the defendant s trademark PTA was a registered trademark. In Jolen Inc., Represented by its Constituted Attorney Vs. Shobanlal Jain and Ors (30) PTC 385 (Mad-DB) the Madras High Court held that in a case of infringement or passing of action, the Court is concerned not only with the rival claims between the plaintiff and the defendant, but should also take note of the interest of the consumer and the same cannot be ignored altogether and the Court should try to see that no deception is carried on to the consumer.

7 11. Further in Anshul Industries (supra) relied by the learned counsel for the Plaintiff this Court held that honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12 (3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest intention. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. The onus and burden is on the defendant to show that the user and adoption at the initial stage was honest. Further where an alleged infringer had built up the trade with the specific knowledge of the proprietor, the prejudice suffered by the infringer was a relevant factor and an additional circumstance to deny injunction. In the present case admittedly the Plaintiff is not registered trademark holder of the trademark PTA in India. The only invoice dated 13th October, 2004 relating to the use of screws with mark PTA embossed on the heads related to the defendant No. 2, which according to the defendants were customized goods manufactured from them. Indubitably while deciding a dispute regarding a trademark not only the rival claims of the parties are a relevant consideration, but the fact that an honest consumer of goods and service is not deceived has to be equally borne in mind. Further admittedly the plaintiff in its application has stated that it proposes to use the mark PTA. In none of the advertisement, folders and the websites print out which have been admitted by the plaintiff during admission/denial of the documents the mark PTA has been found to be embossed on its products. The plaintiff has not been able to prove itself to be the prior user of the trademark PTA as against which the defendant No.1, who is owner of the trademark PTA. Consequently, the applications are disposed of confirming the ad interim ex parte injunction against the defendants qua the trademark PATTA, however, vacating the same qua the trademark PTA. 12. Applications stand disposed of. OCTOBER 23, 2013 Sd/- (MUKTA GUPTA) JUDGE