H. C. Goel ( 1 ) BY this order I shall dispose of the application of the plaintiff under Order 39 Rules 1 and 2 and Section 151 of the Code of Civil Procedure for the grant of an ad-interim injunction against the defendants restraining them, their servants, agents etc. from using in relation to whisky or any other alcholic beverage the mark flying Horse with or without the device of a white horse, with or without the wings or any identical or deceptively similar mark or device as would amount to infringement of the plaintiff s registered trade marks No. 83169, 267396 and 128880, as also from passing of their goods by adopting any of the said marks as the goods of the plaintiff till the decision of the suit. ( 2 ) THE application has arisen out of the suit filed by the plaintiff against the defendants in which the plaintiff has prayed for a decree for permanent injunction in the same terms as in the present application. An exparte temporary injunction was granted by S. B. Wad J. in this application, being I. A. No. 3077/84 on June 29, 1984, restraining the defendants from using in relation to any alcoholic beverage the mark flying Horse with or without the device of horse or any other deceptively similar mark. The application has been opposed by the defendant. ( 3 ) I have heard Mr. N. K. Anand, learned counsel for the plaintiff, and Mr. A. K. Goel, learned counsel for the defendants, and have been taken through the material as placed by the parlies on the record. The plaintiff s trade marks white Horse Per Se and white Horse with the device of a horse in white on black background as per its label were registered for the first time by the Registrar of Trade Marks on July 20, 1943. The registrations of the plaintiff viz. white Horse per se land white Horse with the device of a horse in white on black background have been continued from time to time and are still operative. The defendants started manufacturing whisky in the year 1967 under the mark flying Horse with the device of a flying horse. The case of the plaintiff is that the trade marks of the defendants namely, flying Horse and the device of a flying horse infringed the said trade marks of the plaintiff. The defendants started manufacturing whisky in the year 1967 under the mark flying Horse with the device of a flying horse. The case of the plaintiff is that the trade marks of the defendants namely, flying Horse and the device of a flying horse infringed the said trade marks of the plaintiff. It is also alleged that the defendants have been passing off their goods and are likely to pass off their goods as the goods of the plaintiff by the adoption and use of the infringing trade mark of theirs. ( 4 ) IT is obvious that the conflicting trade marks in question are not identical and there are substantial points of dis-similarity in the two marks. The few distinguishing features in the two marks that may be pointed out here are that only one of the two words making the trade mark of each of the parties namely horse is common, where as the other two words white and flying are obviously dis-similar. There are great dis-similarities in the devices of the marks of the two parties. The device of the plaintiff consists of the picture of a white horse on a black background. As against that the device of the defendants consists of a horse with quite large and conspicuous wings and the horse is shown in a flying posture as against a standing horse in the device of the plaintiff. There is also a conspicuous difference in the labels of the parties as regards their colour scheme, the manner in which the marks i. e. white Horse of the plaintiff and flying Horse of the defendants are given therein, as also of the pictures of the horses in the two labels. The other thing to note is that in the label of the plaintiff the words "fine Old Scotch Whisky" are given in very bold letters. In the label of the defendants the words "produce OF INDIA" are given, although not in very bold letters. In the labels of the two parties the names of the respective manufacturers are also given in detail. Further a bottle of White Horse Scotch Whisky is sold in India to a retailer for over Rs. 300. 00 whereas on the label of the defendants itself the price is given as Rs, 42. 00 per bottle. In the labels of the two parties the names of the respective manufacturers are also given in detail. Further a bottle of White Horse Scotch Whisky is sold in India to a retailer for over Rs. 300. 00 whereas on the label of the defendants itself the price is given as Rs, 42. 00 per bottle. There is also admittedly a restriction on the import, as also on the sale of Scotch Whisky. Keeping in view the fact that Scotch Whisky costs over Rs. 300. 00 per bottle, it will be the affluent and elite class of persons in India who only are likely to purchase Scotch Whisky. Keeping all these facts in view it may be an uphill task on the part of the plaintiff to succeed in its passing off action against the defendants. Further the Supreme Court in the case Ruston and Hornsby Ltd. v. The Zamindara Engineering Co. ,1 held as below : "in an action for infringement when the defendant s trade mark is identical with the plaintiff s mark, the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. " (Emphasis supplied) ( 5 ) JUDGED from this angle the infringement action of the plaintiff, also is not free from difficulty, Mr. Anand, learned counsel for ihe plaintiff, advanced lengthy arguments to show that the plaintiff has got a strong prima facie case. Similarly, Mr. A. K. Goel, learned counsel for the defendants, addressed at length in support of his contention that the plaintiff has no case worth trial. The contention of Mr. Anand is that the emphasis in the plaintiff s trade mark is on the word horse with the device of a horse and that the defendants by using the word horse in their trade mark and also by adopting a horse in a flying posture have infringed the plaintiff s trade marks. It was submitted that the defendants had filed applications for registration of their trade marks in question for the. It was submitted that the defendants had filed applications for registration of their trade marks in question for the. mark of flying Horse per se and the other for a label having the words flying Horse with the device of a flying horse therein and that both these applications were rejected by ihe Registrar of Trade Marks on opposition filed by the plaintiff thereto. These applications were rejected in April, 1981. Mr. Anand has contended that these orders of the Registrar operate as res judicata in favour of the plaintiff on the issue as the whether the said trade marks of the defendants infringe the trade marks of the plaintiff Reliance was placed by him in this regard on a decision of the Mysore High Court in K. . R. Chinnakrishna Chetty and others v. Sri Ambal and Co. , Madras2 Mr. Anand also submitted that the said applications of the defendants having been rejected by the Registrar, the only course open to the defendants was to make an application for rectification of the registration of the trade marks in favour of the plaintiffs, but that the defendants have not moved any such application so far to the High Court and that they cannot now take up the plea in defence to the plaintiff s suit that the plaintiff smark has lost distinctiveness which, according to the plaintiff, is the main ground on which the defendants are resisting the suit of the plaintiff. The defendants counsel, on the other hand, has contended that the plea of the defendants that the plaintiff s mark has lost distinctiveness can be raised by the defendants in defence to the suit of the plaintiff and has to be decided by the Court when so raised. In support of their contention that the plaintiff s mark has lost distinctiveness, the defendants heavily rely on the fact that on their recent application for registration of the trade mark flying Horse per se the registrar. Trade Marks, Bombay, has already opined that the word horse and the device of Horse have become common to the trade regarding liquors which includes whisky. The defendants have filed a copy of the additional representation as submitted by them to the Registrar on January 12, 1982 (which is at page 117 of the defendants documents ). Trade Marks, Bombay, has already opined that the word horse and the device of Horse have become common to the trade regarding liquors which includes whisky. The defendants have filed a copy of the additional representation as submitted by them to the Registrar on January 12, 1982 (which is at page 117 of the defendants documents ). At pages 118-122 are the objections as made by the Registrar to the said application of the defendants. In this the Registrar, among others, stated that their claim could not be allowed as white Horse having the device of a horse was registered with M/s. White Horse on their application No 267396. This objection was later waived by the Registrar as per his communication dated September 28, 1984 appended at page 5 of the defendants documents. The Senior Examiner of Trade Marks, Delhi, also in reply to the enquiry submitted by the defendants, stated on October 5, 1984 that the mark white Horse and the device of horse had become common to the trade in class 33. It was contended by the learned counsel for the defendants that the Registrar of Trade Marks has now given the aforesaid opinion in view of the changed circumstances on account of many manufacturers of liquors and whisky having adopted marks having the word horse as also having the device of horse in their labels. The defendants produced one quarter bottle of whisky having the trade mark-Black Horse manufactured by Khasa Disiilleiy Company, Amritsar along with a cash memo for the purchase of the same on November 28, 1984. Another thing to note is that the plaintiff has not even alleged any single instance of passing off the goods by the defendants as the goods of the plaintiff. Keeping in view the respective submissions of the parties learned counsel and the materials as placed by the parties on record the position that turns out to be is this that whereas the plaintiff may be said to have a prima facie case worth trial, it cannot be said that they have got a clear-cut case in its favour. There are contentious issues involved in the case on a final decision of which alone rests the fate of the case of the plaintiff. The grant of the temporary injunction as prayed for by the plaintiff would amount to virtually decreeing the suit of the plaintiff without its trial. There are contentious issues involved in the case on a final decision of which alone rests the fate of the case of the plaintiff. The grant of the temporary injunction as prayed for by the plaintiff would amount to virtually decreeing the suit of the plaintiff without its trial. Such an ad-interim injunction is not ordinarily to be allowed. Further, in such a situation the question as to whether the plaintiff will suffer an irreparable loss if the injunction as prayed for by it is not allowed and the question as to in whose favour does the balance of convenience lie assume a great importance. In the event of the plaintiff s success in the suit the damages to which the plaintiff may be entitled on account of the passing of the defendants goods can be measured and the plaintiff can be compensated by the award of such damages. On the other hand in case the temporary injunction as prayed for is granted, that is bound to destroy the entire business of the defendants which is in existence for the last about 17 years and in case the defendants succeed in non suiting the plaintiff it would almost be impossible to assess the damage caused to the defendants by the grant of the temporary injunction against them. There is yet another important fact which also goes against the plaintiff for its being allowed the relief of the temporary injunction as prayed for by it. As per the plaintiff s own case it had come to know of the impugned mark of the defendants flying Horse with the device of a horse when the defendants filed their two applications for the registration of the mark flying Horse per se and the label having the words flying Horse with the device of a horse therein. These applications were moved by the defendants as far back as in the year 1973. The plaintiff filed its opposition to the same in the year 1978. The plaintiff had thus clearly come to know of the adoption of the impugned mark by the defendants in the year 1978 at the latest. Theplaintiff, however, did not file any action restraining the defendants from adopting or using the impugned trade mark ever since then and the present suit was filed by the plaintiff only in June, 1984. The plaintiff had thus clearly come to know of the adoption of the impugned mark by the defendants in the year 1978 at the latest. Theplaintiff, however, did not file any action restraining the defendants from adopting or using the impugned trade mark ever since then and the present suit was filed by the plaintiff only in June, 1984. This inordinate delay on the part of the plaintiff to bring an action against the defendants for restraining them from adopting or using the impugned trade mark itself is a ground on which the discretionary relief of temporary injunction as prayed for by the plaintiff should be declined. Mr. Anand, learned counsel for the plaintiff, submitted that so far as the infringement action as prayed for by the plaintiff is concerned, that is the statutory right of the plaintiff and the question of delay in filing that action is inconsequential and is no circumstance on which the relief of temporary injunction may be declined to the plaintiff. 1 am not inclined to agree with this view. As pointed out by me already above, it is not a case of the entire mark as such. It is a case of partial adoption of the mark of the plaintiff by the defendants and there is a serious contest between the parties as to whether the adoption of the infringing trade marks in question by the defendants at all amounts to infringement of the registered trade marks of the plaintiff and/or the defendants are capable of passing off their goods as the goods of the plaintiff. I think under such a situation the question of delay has got great relevance with regard to the question as to whether the plaintiff should or should not be allowed the relief of the temporary injunction as prayed for by it In conclusion, in view of what has been said above it is held that the plaintiff is not entitled to the grant of the temporary injunction as prayed for by it The application of the plaintiff is accordingly dismissed. The ex-parte temporary injunction as grante to the plaintiff on June 29, 1984 is hereby vacated. I need hardly say that the observations mads in this order are only for the purpose of disposing of the present application and would not prejudice the rights of the parties at the trial of the suit.