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2014 DIGILAW 4202 (MAD)

Rajesh Kumar Balkrishan Agrawal v. S. Padmanabhan

2014-11-11

R.SUBBIAH

body2014
Judgment 1. Original Application No.847 of 2013 has been filed by the applicant/plaintiff praying to grant an ad-interim injunction restraining the respondents/defendants, by themselves, their partners/proprietors as the case may be, heirs, representatives, successors in business, assigns, servants, agents, distributors, stockists, transporters or any one claiming through or under them, from in any manner passing off or enabling others to pass off their safety matches as and for the applicant's safety matches by use of PADHAK label or any other label, which is identical to and/or deceptively similar to applicant's artistic work in the KADAK label with a similar colour scheme, placement of features, getup and layout or in other manner, whatsoever, pending disposal of the suit. 2. For the sake of convenience, the parties are referred to as per their rankings in the suit. 3(1) It is the case of the plaintiff that they are the well-reputed manufacturer of superior quality match boxes. The plaintiff adopted the distinctive trademark KADAK and KADAK label in respect of manufacturing and marketing safety matches since 1988. The plaintiff obtained registration of the marks KADAK under No.525374 and KADAK label under No.525373, both in respect of safety matches in class 34 of Trade Marks Act. The plaintiff's KADAK label consists of several distinctive features, which are as follows_ Front Portion i) The device of face of a kadakali dancer with a crown on the head with combination of red, yellow, white and green colours in the center of the label in green background with red coloured border, ii) The mark KADAK written in bold letters in white below the device of face of a kadakali dancer with a crown on the head. iii) The word laminated written in a small font below the mark KADAK in yellow colour; and iv) The word Matches written in hold letters in white below the word laminated; Rear Portion v) The words Safety Matches, quantity, price and address written in white colour in green background. vi) At the right hand side top portion of the label, five yellow straight lines drawn across each one below the other and parallel to each other, beneath which there is a diagonal thick red band, followed by a diagonal small white line, followed again by a diagonal thick red band and finally by a diagonal small white line. vi) At the right hand side top portion of the label, five yellow straight lines drawn across each one below the other and parallel to each other, beneath which there is a diagonal thick red band, followed by a diagonal small white line, followed again by a diagonal thick red band and finally by a diagonal small white line. 3(2) The plaintiff and its predecessor in title had, in order to protect its artistic work in the match box, obtained registration of the copyright in artistic work KADAK label under No.A-87488/2009, dated 18.11.2009 and the same is also valid and subsisting. Thereafter, the plaintiff and its predecessor in title adopted a variation of their registered trademark KADAK and label by changing/amending the get up and lay out of the label and obtained registration of its changed/amended label under No.694181 in class 34 of the Act in respect of match boxes. The said registration is valid and subsisting as on date. The changed/amended trademark of the plaintiff viz., KADAK label consists of several distinctive features, which are as follows : Front portion i) The device of face of a kadakali dancer with a crown on the head with combination of red, yellow, white and green colours in the center of the label in green background with read coloured border; ii) The mark KADAK written in bold letters in white colour with a rectangle shaped device in blue background and white border with the registered symbol; iii) The word Damp written in white colour in the left corner of the carton and the word Proof written in white colour in the right corner of the carton. Rear Portion iv) The words Safety Matches, quantity, price and address written in white colour in green background. v) The mark KADAK is written in Hindi. vi) At the right hand side top portion of the label, five yellow straight lines drawn across each one below the other and parallel to each other, beneath which there is a diagonal thick red band, followed by a diagonal small white line, followed again by a diagonal thick red band and finally by a diagonal small white line. 3(3) As on date, the plaintiff has claimed all the rights over the trademark KADAK and KADAK label and artistic works of KADAK label as a sole and absolute proprietor. 3(3) As on date, the plaintiff has claimed all the rights over the trademark KADAK and KADAK label and artistic works of KADAK label as a sole and absolute proprietor. The plaintiff has been manufacturing its match boxes under the trademark KADAK through its group company namely M/s.ESSKAY Match Works, Sattur. The trademark and copyright in the artistic work KADAK and KADAK label were created by the plaintiff's predecessor in title. The plaintiff has made extensive sales of safety matches bearing the trademark KADAK and KADAK label with a distinctive colour scheme, getup and layout all over India. The plaintiff has made wide spread use of the trademark and artistic work in KADAK and KADAK label for safety matches and has been selling the products all over India since 1988 continuously. 3(4) While so, the plaintiff came to know that match boxes with deceptively similar features to the plaintiff's earlier mark KADAK, are in circulation in Kovilpatti under an almost identical mark PADHAK, with identical artistic work as that of the plaintiff's earlier KADAK label, being manufactured and marketed by Vinayaga Match Enterprises, Kovilpatti. On further enquiry, the plaintiff came to know that the 1st defendant was the proprietor of the PADHAK label. The defendants are manufacturing and selling match boxes under an almost identical trademark PADHAK with identical artistic work. The defendants' PADHAK label has the following features, which are identical to that of the plaintiff's KADAK label, in colour scheme, get up and layout. The defendants are manufacturing and selling match boxes under an almost identical trademark PADHAK with identical artistic work. The defendants' PADHAK label has the following features, which are identical to that of the plaintiff's KADAK label, in colour scheme, get up and layout. Plaintiff's KADAK label Defendants' PADHAK label Front portion (a)The device of face of a kadakali dancer with a crown on the head with combination of red, yellow, white and green colours in the center of the label in green background with red coloured border The device of kadakali dancers' crown with combination of red, yellow, white and green colous in the center of the label in green background with red coloured border (b)The mark KADAK written in bold letters in white colour with a rectangle shaped device in blue background and white border with the registered symbol The mark PADHAK written in bold letters in white colour with a rectangle shaped device in blue background and white border with the registered symbol (c)The word Damp written in white colour in the left corner of the carton and the word Proof written in white colour in the right corner of the carton The word Damp written in white colour in the left corner of the carton and the word Proof written in white colour in the right corner of the carton Rear Portion (d)The words Safety Matches quality, price and address written in white colour in green background The words Safety Matches, quantity, price and address written in white colour in green background (e) The mark KADAK is written in Hindi The mark PADHAK is written in Hindi (f) At the right hand side top portion of the label, five yellow straight lines drawn across each one below the other and parallel to each other, beneath which there is a diagonal thick red band, followed by a diagonal small white line, followed again by a diagonal thick red band and finally by a diagonal small white line At the left hand side bottom portion of the label, five yellow straight lines drawn across each one below the other and parallel to each other, beneath which there is a diagonal thick red band, followed by a diagonal small white line, followed again by a diagonal thick red band and finally by a diagonal small white line. On account of the manufacture and sale of safety matches by the defendants in almost identical/deceptively similar labels, the plaintiff has suffered irreparable loss and injury and the sales of the plaintiff's product has been affected. The defendants have committed acts of infringement of trademark, infringement of copyright and trade dress passing off. Hence, the plaintiff has filed the present suit for permanent injunction against the defendants restraining the defendants themselves, their partners/proprietors as the case may be, their respective heirs, legal representatives, successors in business, assigns, servants, agents, distributors, stockists, transporters, representatives or any one claiming through or under them from in any manner infringing the plaintiff's registered trademarks KADAK and KADAK label by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in match boxes or any other product bearing the almost identical/deceptively similar trademark PADHAK and/or package, wrapper, containers, carton, label with colour scheme, getup, layout, which are similar to plaintiff' registered mark KADAK and KADAK label, and other consequential reliefs. 3(5) Pending the suit, the plaintiff has filed the original applications in O.A.Nos.846 & 847 of 2013 for the grant of interim injunctions against the defendant from infringing and passing off their products with deceptively similar trademark of the plaintiff. 4. When the said Original Applications came up for hearing, on 04.11.2013, this Court has granted interim injunction in O.A.No.847 of 2013 restraining the defendants from in any manner passing off or enabling others to pass of their safety matches as and for the applicant's safety matches by use of PADHAK label or any other label, which is identical or deceptively similar to applicant's artistic work in the KADAK label with a similar colour scheme, placement of features, getup and layout or in other manner, whatsoever, pending disposal of the suit. So far as the other Original Application in O.A.No.846 of 2013 is concerned, this Court has not granted any interim order and ordered only notice. 5. On appearance, the defendants have taken out an application in A.No.1913 of 2014 seeking to vacate the interim injunction granted by this Court in O.A.No.847 of 2013 on 04.11.2013. So far as the other Original Application in O.A.No.846 of 2013 is concerned, this Court has not granted any interim order and ordered only notice. 5. On appearance, the defendants have taken out an application in A.No.1913 of 2014 seeking to vacate the interim injunction granted by this Court in O.A.No.847 of 2013 on 04.11.2013. That apart, the defendants have also filed another application in A.No.1914 of 2014 seeking to grant stay of all further proceedings in C.S.No.741 of 2013 till the disposal of the Rectification Application filed by the plaintiff in ORA/344/2013/TM/AMD/9214, dated 13.11.2013 under Section 47/57 of the Trade Marks Act, 1999, before the Intellectual Property Appellate Board. 6. In the affidavit filed by the defendants in support of their applications viz., A.Nos.1913 of 2014, the defendants has stated that the defendants are the proprietors of the registered trademark PADHAK meant for the goods Safety Matches, included in Class 34 of the Schedule IV of the Trade Marks Act, 1999. The defendants have been using the PADHAK label mark since 01.08.2007 continuously and uninterruptedly. The defendants filed their trade mark application before the office of the Trade Mark Registrar, Ahmedabad for the registration of the label mark PADHAK vide Application No.2064783 for Safety matches included in Class-34 of the Trade Marks Act, 1999. The Registrar of the Trade Mark is the statutory authority in India to verify the eligibility and validity of any mark applied thereof for getting registered. The Trade Mark Registry had undergone the search of the marks in order to ascertain whether any phonetically, visually or deceptively similar mark existing in the Register and to ascertain the list of prior applicants having the said similarity thereof. After going through such scrutiny, no mark whatsoever has been found by the Trade Mark Registrar, objectionable to the mark of the defendants. In order to comply with the procedures enshrined under Section 20 in Chapter-III of the Trade Marks Act, 1999, advertisement of the mark PADHAK has been made vide Trade Mark Journal No.15230 on 13.02.2012, without any condition and limitation thereof for the public, to invite any opposition thereto. Admittedly, no opposition whatsoever has been reported by any person from the public, including the present plaintiff. Admittedly, no opposition whatsoever has been reported by any person from the public, including the present plaintiff. Consequently, after the lapse of the prescribed statutory period of four months, enshrined under Section 21 of the Trade Marks Act, 1999, the Registrar of Trade Marks issued the registration certificate of the label mark PADHAK vide Certificate No.1064721 dated 23.06.2012, in favour of the defendants. Therefore, by virtue of the Trade Mark Certificate awarded by the Trade Mark Registry, the defendants are having statutory right to use the label mark PADHAK in all of its essential features comprised in the label mark. But, suppressing all these material facts, the plaintiff has obtained the interim injunction from this Court in favour of them on the allegation of infringement and passing off against the defendants. The alleged trademark of the plaintiff is neither phonetically, visually nor deceptively similar to the mark of the defendants. The product of the plaintiff is manufactured and marketed in Tamil Nadu, whereas the product of the defendant is marketed only in the State of Gujarat. The present suit lacks the valid cause of action and necessary jurisdiction. Further, the plaintiff has filed an application for removal/rectification of the trademark of the defendant, in ORA/33/2013/TM/AMD/9214, on 13.11.2013, under Section 47/57 of the Trade Marks Act before the appellate Board viz., Intellectual Property Appellate Board, Chennai (in short IPAB). Since the said application is pending before Appellate Board/IPAB, there is a bar under Section 93 of the Trade Marks Act for this Court to exercise its jurisdiction. Thus, the defendants sought of vacating the interim injunction granted by this Court. 7. Apart from the above application to vacate the interim injunction granted by this Court, the defendant has also taken out an application in A.No.1914 of 2014 seeking to grant stay of all further proceedings in C.S.No.741 of 2013 till the disposal of the Rectification Application filed by the plaintiff in ORA/344/2013/TM/AMD/9214, dated 13.11.2013 under Section 47/57 of the Trade Marks Act, 1999, before the Intellectual Property Appellate Board. In the affidavit filed in support of A.No.1914 of 2014, the defendants have stated that they have received the copy of the Rectification Application filed by the plaintiff, registered vide No.ORA/344/2013/TM/AMD/9214, dated 13.11.2013, under Section 47/57 of the Trademarks Act, 1999, before the IPAB, seeking for the removal of the registered trademark PADHAK. In the affidavit filed in support of A.No.1914 of 2014, the defendants have stated that they have received the copy of the Rectification Application filed by the plaintiff, registered vide No.ORA/344/2013/TM/AMD/9214, dated 13.11.2013, under Section 47/57 of the Trademarks Act, 1999, before the IPAB, seeking for the removal of the registered trademark PADHAK. The plaintiff has indulged in the malpractice of filing multiple proceedings before different forums for the similar relief. The plaintiff one way filed the present suit before this Court and subsequently, they also filed the rectification proceedings before the IPAB for the relief of rectification on the similar prayer of infringement of the trademark. As per the provision of Section 124(1)(b)(ii) r/w Section 93 of the Trade Marks Act, 1999, the controversy can be adjudicated by the IPAB. Therefore, by necessary implication, by virtue of the specific provision enshrined in the Trade Marks Act, 1999, the pending rectification application made by the plaintiff, the present proceedings pending before this Court need to be stayed till the disposition of the pending rectification application under Section 47/57 of the Act, before the IPAB. Thus, the defendants sought for the stay of the suit proceedings. 8. The learned counsel for the defendants submitted that the defendants are the users of the registered trademark PADHAK since 01.08.2007 continuously and uninterruptedly. In this regard, the learned counsel for the defendants, by inviting the attention of this Court to the copy of the sale invoice in respect of the sale of goods under trademark PADHAK issued by one Rajendra Sales Agency, submitted that the said invoice was issued on 01.08.2007, which would show that the defendants have been using the label mark PADHAK since 2007. 9. The learned counsel for the defendants further submitted that as per Section 9(2) of the Trade Marks Act, a mark shall not be registered as a trade mark if it is of such nature as to deceive the public or cause confusion. He further submitted that as per Section 11 of the Trade Marks Act, a mark shall not be registered if it is identical with an earlier trademark and there is similarity in goods and services covered by the earlier trade mark. He further submitted that as per Section 11 of the Trade Marks Act, a mark shall not be registered if it is identical with an earlier trademark and there is similarity in goods and services covered by the earlier trade mark. In the instant case, before registering the trademark of the defendants, the Registry of Trade Marks had undergone a search of phonetically, visually and deceptively similar trade mark, but no such trade mark was found in the Registry of Trade Marks. Thereafter, by following all the procedures and in accordance with the provisions of Trade Marks Act, the Registrar of Trademarks has issued the certificate in favour of the 1st defendant. 10(1) That part, the learned counsel for the defendants, by placing the plaintiff's trade mark and defendants' trade mark side by side, made an elaborate argument, stating that absolutely the defendants' trade mark is neither phonetically, visually nor deceptively similar to the mark of the plaintiff. In this regard, the learned counsel for the defendants submitted that the mark of the defendants on the front side comprised of a distinctive crown with blue, yellow and green colour making the tomb of the crown. The base of the crown is encircled dots with yellow semi circle supported with pink circle beneath. In the back ground of the crown with five circles comprised of red, yellow, radiating green and finally the outer circle of red colour. The artistic work is distinctive and any consumer can distinguish the same. The word 'DAMP' is written in capital letter at the left side top corner and the word 'PROOF' is written in capital letter at the right side top of the front. The word 'PADHAK' is written in white colour in capital letter with blue background encircled in white colour joined with the base of the crown in centre. The whole label is in green back ground with two yellow rectangular lines covering the periphery. In the bottom part of the front side of the label 'Bada Size' is written in Hindi language. Further, on the rear side, the background is with green colour. On the left side the colourful crown, similar to the front side, is in smaller form with the word 'PADHAK' in Hindi language in white colour letter and blue background similar to the front side is reflected. Further, on the rear side, the background is with green colour. On the left side the colourful crown, similar to the front side, is in smaller form with the word 'PADHAK' in Hindi language in white colour letter and blue background similar to the front side is reflected. Beneath that the word Safety matches in green colour with 50 sticks, M.R.P.Re.1.00(IAT) and name of the manufacture 'M/s.Surya Match Works' in Tamil language is distinctively mentioned. In the right corner there are lateral colourful lines red two lines with intervening white lines and five yellow lines with intervening with green colour is distinctively reflected. 10(2) Whereas, the front portion of the mark of the plaintiff consists a face of a kathakali dancer with a crown on the head with combination of red, yellow, white and green colours in the centre of the label in green background with red coloured border. On the rear side also, there is no similarity between the marks of the plaintiff and the defendant. The learned counsel for the defendants further submitted that the defendants are selling their match boxes only in Gujarat and the plaintiff is manufacturing and selling their match boxes in Tamil Nadu. 11. The learned counsel for the defendants by inviting the attention of this Court to the certificate of sales figures dated 18.06.2013 issued by the Chartered Accountant in respect of the goods soled under the trademarks KADAK and KADAK label by the plaintiff, for the period from 1991-1992 to 2012-2013 and submitted that there was increase in turnover of the plaintiff's product under KADAK and KADAK label, which would prove that the presence of PADHAK in the market has no way affected the plaintiff's business. 12. Further, the learned counsel for the defendants, by relying upon the judgment reported in AIR 1965 SC 980 (Durga Dutt Sharma Vs. N.P.Laboratories), submitted that in the case of passing off, the defendant can escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiffs. In the instant case, by comparing the goods of the plaintiff and the defendants, it could be seen that the defendants' product is totally distinguished from the product of the plaintiff. Therefore, the question of passing off does not arise in this case. 13. In the instant case, by comparing the goods of the plaintiff and the defendants, it could be seen that the defendants' product is totally distinguished from the product of the plaintiff. Therefore, the question of passing off does not arise in this case. 13. The learned counsel for the defendants has also relied upon the judgment reported in AIR 1965 MADRAS 250 (T.M.Abdul Rahun and Co., Vs. Ahmed Basha) and submitted that in an identical set of facts, the Hon'ble Supreme Court has held that the observer can see the deference between the two label marks by keeping them side by side and if the deference is predominant and it cannot lead to deception, then there could be no objection for two different trademarks. 14. Further, the learned counsel for the defendants submitted that now the rectification petition filed by the plaintiff before the Appellate Board is pending and when the same is pending, the question as to whether there is any distinctiveness between the two marks? cannot be gone into at this stage. In support of his submission, the learned counsel for the defendants has relied upon the judgment reported in (2000)5 SCC 573 (S.M.Dyechem Ltd., Vs. Cadbury (India) Ltd), wherein it has been held as follows_ “In our view, any decision on the question of “validity” of the appellant's trade (sic mark) raised as a defence in the present application filed under Order 39 Rule 1 CPC will seriously jeopardies a decision of the same issue now pending in the rectification proceedings filed by the respondents in the Bombay High Court. We would therefore not go into the question of “validity” or “distinctiveness” of the plaintiff's trademark nor into the applicability of National Bell co. case (1990 Supp SCC 727) as those issues are to be decided in the rectification proceedings. We are of the view that the case before us can be disposed of by considering whether there is prima facie any deception and hence infringement and whether there is any 'passing off'.” The learned counsel for the defendants further by relying on the above judgment, submitted that when the existence of legal right of the defendant is assailed by the plaintiff, the same has to be decided only at the time of trial. Thus, the learned counsel for the defendants sought for vacating the interim injunction. 15. Thus, the learned counsel for the defendants sought for vacating the interim injunction. 15. Per contra, the learned counsel for the plaintiff submitted that it is incorrect to state that the plaintiff had applied for registration of the mark KADAK, subsequent to the issuance of the registration certificate in favour of the defendants. In fact, the plaintiff is using the trademark KADAK & KADAK label since 1988. The plaintiff's earlier trademarks were registered prior to the registration of the defendants' trademark. The present trademark of the defendants is almost identical and deceptively similar to the plaintiff's earlier trademarks. In this regard, the learned counsel for the plaintiff by placing the trademark of the plaintiff and the defendant side by side, has also made a detailed submissions stating that the label mark of the defendants is identical to the label mark of the plaintiff. He has also submitted that there is close phonetic similarity in the trademarks KADAK and PADHAK. In support of his contentions, the learned counsel for the plaintiff has also relied upon the judgments reported (i) AIR 1969 SC 142 (Corn Products Refining Co. Vs. Shangrila Food Products Ltd), (ii) 2011(5) Bom CR 588 (Ultra Tech Cement Ltd Vs. Alknanda Cement Pvt Ltd., and anr), (iii) AIR 1974 MADRAS 7 (K.R.Chinnikrisha Chetty Vs. K.Venkatesa Mudaliar and another). 16. The learned counsel for the plaintiff has further submitted that the registration of a trade mark does not provide a defence to the proceedings for passing off, as under Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user. In support of this submission, the learned counsel for the plaintiff relied upon the judgment of the High Court of Delhi reported in [1996 PTC (16) (N.R.Dongre Vs. Whirlpool Corp). Thus, the learned counsel for the plaintiff prays for dismissal of the application filed by the defendant to vacate the interim injunction. 17. In support of this submission, the learned counsel for the plaintiff relied upon the judgment of the High Court of Delhi reported in [1996 PTC (16) (N.R.Dongre Vs. Whirlpool Corp). Thus, the learned counsel for the plaintiff prays for dismissal of the application filed by the defendant to vacate the interim injunction. 17. Though the learned counsel for the plaintiff opposed the application filed by the defendants to vacate the interim injunction order, in respect of the Application No.1914 of 2014 filed by the defendants to stay the suit proceedings, till the disposal of the rectification application by the IPAB, the learned counsel for the plaintiff has no objection for the stay of the suit proceedings, till the disposal of the rectification application by the IPAB, and to that effect, the learned counsel for the plaintiff has also made an endorsement on the Application No.1914 of 2014. 18. I have carefully heard the submissions made by the learned counsel for the plaintiff as well as the learned counsel for the defendants, in Application No.1913 of 2014 filed by the defendants to vacate the interim order, and perused the materials available on record. 19. In view of the submissions made on either side, the question that arose for consideration is : Whether any prima facie case has been made out in support of the prayer of the plaintiff and whether balance of convenience is in favour of the plaintiff for continuation of the interim injunction order dated 04.11.2013 granted by this Court? 20. According to the learned counsel for the plaintiff, they have been manufacturing and marking the superior quality match boxes. In the said business, the plaintiff adopted the distinctive trademark KADAK and KADAK label since 1988 and they also obtained registration of the marks KADAK under No.525374 and KADAK label under No.525373, both in respect of safety matches in class 34 of the Trade Marks Act. Further, in order to protect their artistic work in the match box, they obtained registration of the copyright in artistic work KADAK label under No.A-87488/2009, dated 18.11.2009 and the same is also valid and subsisting. Further, in order to protect their artistic work in the match box, they obtained registration of the copyright in artistic work KADAK label under No.A-87488/2009, dated 18.11.2009 and the same is also valid and subsisting. While so, the plaintiff came to know that the match boxes with deceptively similar features to the plaintiff's earlier mark KADAK and KADAK labels are in circulation in Kovilpatti under an almost identical mark PADHAK, with identical artistic work as that of the plaintiff's earlier KADAK label, being manufactured and marketed by Vinayaga Match Enterprises, Kovilpatti. Hence, the plaintiff has filed the present suit for the reliefs as stated supra. Pending the suit, the plaintiff has filed Application No.847 of 2014 and obtained interim injunction in respect of passing off, on 04.11.2013. 21. But, according to the defendants, the plaintiff has discontinued their earlier trademark; whereas the defendants are using the mark PADHAK since 01.08.2007 i.e., for the past seven years. The 1st defendant filed an application before the Registrar of Trade Marks, Ahmedabad for the registration of the label mark PADHAK vide Application No.2064783 for safety matches included in Class 34 of the Trade Marks Act, 1999. After going through the scrutiny, since no mark was found phonetically, visually or deceptively similar to the mark of the defendants in the Registry of Trademarks, the Registrar of Trademarks issued Registration Certificate vide Certification No.1064721 dated 23.06.2012, in respect of the label mark PADHAK in favour of the defendants. But, suppressing all these factual aspects, the plaintiff has obtained the interim injunction order from this Court. 22. Keeping the submissions made on either sides in mind, I have carefully gone through the entire materials available on record. Though the plaintiff has been using the mark KADAK and KADAK label in respect of manufacturing and marketing the match boxes since 1988, they discontinued their earlier trademark. But, whereas the documents produced by the defendant before this Court, particularly, Sale Invoices issued by Rajendra Sales Agency, would show that the defendants have been using the trade mark PADHAK since 01.08.2007. The defendants had also applied for registration of their mark PADHAK, with the Registrar of Trademarks at Ahmedabad and after following the required procedures, Registration Certificate No.1064721, dated 23.06.2012, was also issued in favour of the 1st defendant. 23. The defendants had also applied for registration of their mark PADHAK, with the Registrar of Trademarks at Ahmedabad and after following the required procedures, Registration Certificate No.1064721, dated 23.06.2012, was also issued in favour of the 1st defendant. 23. It is the contention of the learned counsel for the plaintiff that since they are the prior users of the trademark KADAK, the plaintiff can maintain an action for passing off against any subsequent user of an identical trade mark including the registered user. According to the learned counsel for the plaintiff, though the 1st defendant is a registered user of the trademark PADHAK, still the plaintiff can maintain an action for passing off against the defendants, since the plaintiff is the prior user and as such, the plaintiff is entitled for injunction. 24. But, the evidence on record would show that though the plaintiff is the user of Trademark KADAK and KADAK label since 1988, the plaintiff had discontinued the use of their earlier trademark. Thereafter, , the 1st defendant has applied for registration of their mark PADHAK with the Registrar of Trademarks at Ahamedabad in respect of their label mark PADHAK on 08.12.2010 and the Registration Certificate was issued on 23.06.2012 in favour of the 1st defendant by the Registrar of Trademarks. Hence, the plaintiff, who had discontinued their earlier mark, now after issuance of the Registration Certificate in favour of the defendant, has filed the application for registering their trade mark vide application No.2404890 only on 03.10.2012. The defendant has also filed an objection to the application filed by the plaintiff, on 28.06.2013 before the Registrar of Trademarks at Ahamedabad. Similarly, the plaintiff has also filed an application for removal/rectification of the trademark of the defendant in ORA/344/2013/TM/AMD/9214, dated 13.11.2013, under Section 47/57 of the Trademarks Act, 1999, before the IPAB. But, I find that the plaintiff has conveniently suppressed these facts in the plaint about the registration of the trademark PADHAK of the defendant. As on date, legal right is in existence in favour of the defendant to use the mark PADHAK and PADHAK label. 25. But, I find that the plaintiff has conveniently suppressed these facts in the plaint about the registration of the trademark PADHAK of the defendant. As on date, legal right is in existence in favour of the defendant to use the mark PADHAK and PADHAK label. 25. It is the contention of the learned counsel for the plaintiff that though there is a legal right in existence in favour of the defendants, under Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user, since the remedy for passing off is a common law remedy. But, in my considered opinion, when a legal right is in existence in favour of the defendant and when said right has already been challenged by the plaintiff by filing rectification/removal applicable before the IPAB, this Court cannot go into detail with regard to distinctiveness of the plaintiff's trademark, since the said issue has to be decided only in the proceedings in rectification/removal pending before the IPAB. However, this Court can see as to whether there is a prima facie in disposition or whether any passing off. But on a glance of the labels of both the plaintiff and the defendant, I find that there is neither phonetic nor visual similarity with the marks of the plaintiff and the defendants. 26. The mark of the defendants on the front side comprised of a distinctive crown with blue, yellow and green colour making the tomb of the crown. The base of the crown is encircled dots with yellow semi circle supported with pink circle beneath. In the back ground of the crown with five circles comprised of red, yellow, radiating green and finally the outer circle of red colour. The word 'DAMP' is written in capital letter at the left side top corner and the word 'PROOF' is written in capital letter at the right side top of the front. The word 'PADHAK' is written in white colour in capital letter with blue background encircled in white colour joined with the base of the crown in centre. The whole label is in green back ground with two yellow rectangular lines covering the periphery. In the bottom part of the front side of the label 'Bada Size' is written in Hindi language. The whole label is in green back ground with two yellow rectangular lines covering the periphery. In the bottom part of the front side of the label 'Bada Size' is written in Hindi language. Further, on the rear side, the background is with green colour. On the left side the colourful crown, similar to the front side, is in smaller form with the word 'PADHAK' in Hindi language in white colour letter and blue background similar to the front side is reflected. Beneath that the word Safety matches in green colour with 50 sticks, M.R.P.Re.1.00(IAT) and name of the manufacture 'M/s.Surya Match Works' in Tamil language is distinctively mentioned. In the right corner there are lateral colourful lines red two lines with intervening white lines and five yellow lines with intervening with green colour is distinctively reflected. 27. Whereas, the front portion of the mark of the plaintiff consists a face of a kathakali dancer with a crown on the head with combination of red, yellow, white and green colours in the centre of the label in green background with red coloured border. On the rear side also, there is no similarity between the marks of the plaintiff and the defendant. The learned counsel for the defendants further submitted that the defendants are selling their match boxes only in Gujarat and the plaintiff is manufacturing and selling their match boxes in Tamil Nadu. 28. Therefore, I find that the label of the defendants is well distinguished in appearance from the label of the plaintiff. In this regard, a reference could be placed in the judgment delivered by this Court reported in AIR 1977 MADRAS 237 (A.V.Rajadurai Nadar Vs. P.Ayya Nadar and another), wherein in an identical circumstances, this Court held as follows_ “3. We may also observe that the labels on matches generally resemble each other and each trade mark is recognized by a prominent feature appearing in the middle, either in the form of an animal, or in the form of a bird or something else. 4. The expression 'deceptively similar' as defined in Section 2(d) of the Trade and Merchandise Marks Act, 1958, means that in order to be that, the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time, what readily strikes the eye must also be conclusive. But, when one looks at it especially from the standpoint of a person who is most likely to use a particular brand of matches, it is appears that the difference is prominent and it cannot lead to any similarity or a deceptive similarity or confusion, then there could be no objection to the two different trade marks. As we said, in our opinion, even a casual observer can see the difference between the camel and the ram and there could be no mistake between the one and the other made by any one even if they are kept side by side, or kept apart. On that view, we allow the appeal with costs throughout.” A reading of the above dictum would show that the labels on matches would generally resemble each other and the defendant by adding certain matters can distinguish his label marks from those of the plaintiff. In the instant case, by comparing both the marks of the plaintiff and the defendants, I find that prima facie the label mark of the defendants is well distinguished from the mark of the plaintiff. Further more, when a legal right is in existence in favour of the defendant, any alleged violation by the defendant could be established only during the course of the trial. 29. For the foregoing reasons, I am of the opinion that the plaintiff is not entitled to the continuation of the interim injunction order granted by this Court. In the result, Application No.1913 of 2014 is allowed and the interim injunction granted by this Court on 04.11.2013 is vacated. 30. So far as the Application No.1914 of 2014 is concerned, which is filed by the defendants to stay the suit proceedings till the disposal of the rectification application by the IPAB, since the learned counsel for the plaintiff has no objection for the stay of the suit proceedings, till the disposal of the rectification application by the IPAB, and to that effect, the learned counsel for the plaintiff has also made an endorsement, the said application deserves to be allowed. 31.Hence, Application No.1914 of 2014 is also allowed and further proceedings in C.S.No.741 of 2013 is stayed till the disposal of the Rectification Application filed by the plaintiff in ORA/344/2013/TM/AMD/9214, dated 13.11.2013 under Section 47/57 of the Trade Marks Act, 1999, before the Intellectual Property Appellate Board.