Goswami,j. ( 1 ) THIS application under Order 39 Rules 1 and 2 of the Codeof Civil Procedure has been filed by the plaitniff-company for the grant ofinterim injunction in a suit for perpetual injunction against the respondent torestrain it from infringing the applicant s registered trade mark "now" andfrom passing of its goods as those of the applicants as well as for rendition of accounts. ( 2 ) THE plaintiff is an American Company and is the registered proprietorof trade mark "now" in nearly 80 countries of the world including India. Itis alleged in the plaint as also in the application that the trade mark is usedby the plaintiff in relation to cigarettes made by it and sold in a large numberof the countries in the world. As far as the manufacture and sale of cigaretteis concerned, it is sold in various countries but not in India. The plaintiff hasgiven details of its sales and publicity expenses in the plaint. According to thefigures mentioned, the sales are worth millions of dollars and the expenses ofadvertisement also run into lacs of dollars. It is further stated that in January,1986, the plaintiff learnt through their Hong Kong Office that the defendant badintroduced in India cigarettes under the trade mark "now". Thereafter theplaintiff made enquiries and learnt that now" cigarettes had been introducedand were being sold not only in Delhi but in many parts of the country by thedefendant. According to the plaintiff, the defendant was taking advantage ofthe ban on the import of cigarettes which prevented the plaintiff from sellingin India. It is further alleged that the defendant s trade mark "now" isdeceptively similar to the plaintiff s registered trade mark and in fact the markis exactly the same i. e. "now". It is stated that the applicant s trade mark"now" represents high quality fine tobacco and is associated with the cigarettesoriginated exclusively from the applicant s house. The respondent s use ofthe mark is clearly intended to establish a nexus between its own goodsand the applicant s. Since the applicant s trade inarks is registered, hehas a good prima facie case and the balance of convenience is in favourof the applicant. In case the interim injunction, as prayed for, is not granted. the applicant will suffer an irreparable injury whereas the respondent wasmarketing goods of much lesser and as a result the respondent will not sufferany irreparable harm or injury. In case the interim injunction, as prayed for, is not granted. the applicant will suffer an irreparable injury whereas the respondent wasmarketing goods of much lesser and as a result the respondent will not sufferany irreparable harm or injury. ( 3 ) THE application has been seriously contested by the defendant-company. In the affidavit in reply, it is stated that the defendant has filedform TM-26 dated 7/01/1986, being an application for rectification toremove the registered trade mark "now" of the plaintiff from the Register oftrade Mark as specifically on the ground that the said trade mark was registered without any bona fide intention, on the part of the plaintiff that it should beused in relation to the goods of the plaintiff and that there has in fact beenno bona fide use of the said trade mark in relation to the said goods by theplaintiff and that the said trade mark does not qualify for registration. It isfurther stated that the registration of the trademark "now" is invalid andcould not in law have been registered and is, therefore, liable to be struck off theregister of Trade Marks. On merits, it is pleaded that the defendant-companyhas been in the cigarette manufacturing trade since 1910 and from time to timehas developed and Marketed a wide range of cigarettes of different types andflavours under a large number of trade marks, and the defendant has neverbeen accused of much less have any proceedings filed against it alleginginfringement of a registered mark. It is further stated that the cigarette industryis a highly competitive industry and the manufacturers are constantly strivingto improve their market and have been marketing cigarettes of different brandnames to meet the changing tastes of consumers. Over the years, the defendantbad to compete and has effectively done so without even indirectly attemptingto infringe the mark of a competitor, whether foreign or indigenous. It isfurther stated in the affidavit that as a result of Central Government Notification dated 2/09/1985 excise duty on cigarettes was raised verysteeply bringing about a significant drop in industry volume, compellingmanufacturers, including the defendant, to consider ways and means toaugmenting their volumes. Thereafter the defendant has stated the reason foradopting "now" as its trade mark but it is not necessary to reproduce thereasons as the same are not relevant for the purpose of this application. Thereafter the defendant has stated the reason foradopting "now" as its trade mark but it is not necessary to reproduce thereasons as the same are not relevant for the purpose of this application. It isfurther stated that though the trade mark "now" was registered in July 1975,the same has not been used and the plaintiff had no bona fide intention to usethe same at any point of time. Such a trade mark is liable to pe removed fromthe Register. According to the defendant, the plaintiff has never advertisedthe trade mark "now" in any journal which has a circulation in this countryand has not spent anything for advertisement as far as this country is concerned. The defendant s cigarettes bearing the trade mark "now" have alreadycaptured a share equal to 2. 5% of the total cigarette market in India andthe defendant-company has spent an enormous amount on publicity andadvertisement as far as the brand "now" is concerned. According to thedefendant, the balance of convenience is in favour of the defendant-companyand the plaintiff-company will not suffer any injury inasmuch as the cigarettesmanufactured by the plaintiff under the trade name "now" have never beensold in India and are not likely to be sold in the near future. ( 4 ) I was shown the packets of cigarette being marketed by the plaintiff asalso by the defendant-company under the trade name "now". It was notdisputed that the design, lettering, lay out, colour scheme and general getup of the packets in which the respondent has marketed its "now" brand isentirely defferent from the packets in which the plaintiff is marketing itscigarettes. In fact, no serious case of passing of, has been made out and itwas rightly not argued by the learned counsel for the plaintiff. The contentionswere confined to infringement of the trade mark. It is true that purity of theregister of trade Marks is of much importance to the trade in general but it isequally true that if a mark which exists on the Register, cannot be justified inlaw, it is the duty of the court to purify the Register and expunge the illegalentry in the interest of the trade itself. ( 5 ) IT is an admitted fact that an application for rectification filed by thedefendant is pending. Under Section 111 of the Trade and Mercantile Act (herein-after called "the Act") makes it mandatory for the Court to stay the suit. ( 5 ) IT is an admitted fact that an application for rectification filed by thedefendant is pending. Under Section 111 of the Trade and Mercantile Act (herein-after called "the Act") makes it mandatory for the Court to stay the suit. However, under sub-section 5 of section 111 of the Act, the Court is not debarred from dealing with the interlocutory matters including application for injunction, that is to say even if the trade mark on which the plaintiff sues or is underchallenge, it does not preclude theCourt from giving relief for the interveningperiod. Therefore, I have heard this application at length. The plaintiff-company got the mark registered in July, 1975 and has admittedly not used themark in India either before or after getting it registered. There has been a banon the import of foreign cigarettes in this country since around 1957 and isstill continuing. The mark was got registered after about 18 years of the banhaving been imposed. The question for consideration is whether in such asituation the mark is liable to be removed from the Register and if the defendant has a prima facie case for getting the mark removed then whether theplaintiff is entitled to an interim injunction during the pendency of the suit. Thelearned counsel for the plaintiff relied upon a judgment of this Court in Philiomorris Belgium v. Golden Tobacco Co. Ltd. , AIR 1986 Delhi 145. it is nodoubt true that the facts in that case are more or less similar to the facts in thepresent case. That was also a suit for the grant of permanent injunction andrendition of accounts filed by the plaintiff against the defendant-company. Inthat suit, an application for interim injunction was filed to restrain the defendant-company from using the trade mark visa in relation to cigarettes onaccount of its registration in India. The judgment supports the case of theplaintiff inasmuch as a learned Single Judge of this Court had granted thead-interim injunction restraining the defendant-company from using the trademark during the pendency of the suit. It was held that the non-use of thetrade mark by the plaintiff-company was due to the imports restrictions imposedby the Government of India and the same would constitute "special circumstances" within the meaning of section 43 (3) of the Act justifying non-use oftrade mark. It was held that the non-use of thetrade mark by the plaintiff-company was due to the imports restrictions imposedby the Government of India and the same would constitute "special circumstances" within the meaning of section 43 (3) of the Act justifying non-use oftrade mark. However, from the judgment, it is not clear whether it was a casewhere the trade mark was got registered during the period when the ban on theimport of cigarettes was in existence and whether the plainitff had never usedthe mark or never sold the cigarettes under that mark in this country. In thepresent case, it is an admitted fact that the mark was registered in 1975 i. e. much after the ban was imposed and the plaintiff has never marketed the cigarettes in this country under this mark whether before or after the registration ofthe trade mark. Further the learned Single Judge relied upon section 46 (3) ofthe Act which covers the cases under section 45 (1) (b) and is not applicable tosection 46 (l) (a ). It was strenuously urged by Mr. Nariman, the learned counsel, for the defendant that the case was covered by section 46 (l) (a) and not bysection 46 (l) (b) and as such the provisions of section 46 (3) of the Act were inapplicable. Section 46 (1) of the Act provides for two cases in which the registered trade mark may be taken off the Register in which it is registered. Thefirst case is set out in clause (a) of section 46 (1) and the second is in clause (b)of that sub-section. There are two conditions to be satisfied before the clause (a) can become applicable. These conditions are that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him and in a case towhich the provisions of section 45 apply by the company concerned and thatthere has been, in fact, no bona fide use of the trade mark in relation to thosegoods by any proprietor thereof for the packet being upto date one monthbefore the date of the application. As far as the second condition is concerned,it is fully covered inasmuch as admittedly there has been no use of the trademark in relation to those goods by the plaintiff up to dale one month before thedate of the application. As far as the second condition is concerned,it is fully covered inasmuch as admittedly there has been no use of the trademark in relation to those goods by the plaintiff up to dale one month before thedate of the application. It is the first condition which requires consideration. ( 6 ) ON the first condition, the contention of the learned counsel, for theapplicant, was that the applicant had got the mark registered in 1975 with thebona fide intention of using the same when and if the import restrictions wererelaxed by the Government of India. It cannot be disputed that the importrestrictions existed at least for 17 or 18 years prior to the registration of themark. A similar contention was raised before their lordships of the Supremecourt in American Home Product Corporation v. Mac Laboratories Private Ltd. and Another, AIR 1986 Supreme Court 137. While dealing with the question of"traffiking in Trade Mark" it was observed in paragraph 39 of the Report : "the intention to use a trade mark sought to be registered must be,therefore, genuine and real as pointed out by Tomlin, J. in reducker s Trade Mark (1928) 1 Ch. 405, 409, the fact that the markwas thought to be something which some day might be useful wouldnot amount to any definite and precise intention at the time of registration to use that mark. The intention to use the mark must exist atthe date of the application for registration and such intention must begenuine and bonafide. In fact, section 46 (l) (a) expressly speaks of"bona fide intention on the part of the applicant for registration"which would mean "at the date when such applicant makes his application for registration. "similar view was expressed by the Chancery Division in Imperial Group Ltd. V. Philip Moris and Co. Ltd. , 6 Fleet Law Reports 1980,146. Inview of theseauthorities, it cannot be said that the defendants have no prima facie case forgetting the mark removed from the register in their proceedings for rectification. When once a prima facie case has been made by the defendants for rectificationof the register, it is well settled that it will be inequitable to grant interiminjunction against the said defendants as it would be stopping their tradealtogether, particularly, when the plaintiff can be well-compensated by damagesif and when the plaintiffs succeed in its action. When once a prima facie case has been made by the defendants for rectificationof the register, it is well settled that it will be inequitable to grant interiminjunction against the said defendants as it would be stopping their tradealtogether, particularly, when the plaintiff can be well-compensated by damagesif and when the plaintiffs succeed in its action. A similar question was considered by a learned Single Judge of this Court in M/s. Sarwan Singh and Sons v. Mis. Mac Industries and Others. I A 4039 of 1978 in suit No. 880 of 1978 decidedon 19. 12. 1978. In that case, the mark had been discontinued for long and thelearned Single Judge of this Court refused interim injunction on the ground thatprima facie case existed for removal of the mark from the register in rectification proceedings, ( 7 ) NOW coming to the question of balance of convenience, the contention ofmr. Shanti Bhushan, the learned counsel, for the applicant, was that the applicants had acquired reputation for quality and as such if the defendants are permitted to carry onwith the use of the mark, their reputation would suffer inthe mark. It was further contended that their cigarettes had certain pecularities and as such the reputation was likely to suffer. I fail to understand as tohow can the reputation for quality suffer in a country where the cigarettes havenever been marketed by the applicant. The Division Bench of this Court in Synthesis v. Samperit Aktier Geselshaft, 1980 RLR 263 had the occasion to dealwith the question of balance of convenience in a case where the Import ofcombs was banned by the Government of India and the plaintiff had asked fortemporary injunction against the use of the name by an Indian manufacturer. Itwas observed: "firstly, according to the statement of law in Kerley on Trade Marksand Trade Names, 10th Edition, paragraph 15. 65 the balance of con-venience in granting temporary injunction is to be determined byrelative amount of damages which is likely to result after the injunction is granted and the plaintiff ultimately fails. The damages whichwould be caused to the appellant could be total. On the contrary nodamage would be caused to the respondent-plaintiff for the simplereason that from the 1954 on wards the import of the plaintiff-respondent s combs has been banned in India. The damages whichwould be caused to the appellant could be total. On the contrary nodamage would be caused to the respondent-plaintiff for the simplereason that from the 1954 on wards the import of the plaintiff-respondent s combs has been banned in India. The legal injury bythe infringement of the trade mark of the respondent is a question oflaw while the amount of damage that can be caused to the respondentis a question of equity. The strength of the plaintiff s case on theformer is not reflected in the latter. "respectfully following the decision of the Division Bench by which I ambound, I am of the opinion that the balance of convenience clearly lies in favourof the defendants. ( 8 ) FOR the reasons recorded above, I am not inclined to grant the injunction prayed for and consequently dismiss the application but leave the partiesto bear their own costs. However, the defendants would maintain accounts oftheir manufacturing and sale of the cigarettes under the brand name "now"and would file quarterly statements in this Court. The quarterly statementswould commence from the last quarter of 1986 and would be filed on or beforethe end of the quarter.