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2015 DIGILAW 576 (JHR)

Mongia Steel Limited v. Shree Khatu Shyamji Cement MFG Private Limited

2015-05-05

AMITAV K.GUPTA

body2015
ORDER : This appeal has been preferred against the order dated 15th March, 2012 passed by the learned District Judge Vth, Dhanbad in Title Suit Trade Mark No. 147 of 2011 whereby and whereunder the application under order XXXIX Rule 1 and 2 read with section 151 of the Code of Civil Procedure filed on behalf of the appellant i.e. M/s Mongia Steel Limited has been rejected and hence the appellant is praying for grant of injunction and restraining the defendant M/s Shri Khatu Shyamji Cement Mfg. private Ltd. from using manufacturing, marketing, selling, distributing, advertising of cement and TMT bars of all kinds or allied goods/products bearing the mark of Mongia and other mark deceptively similar to the appellant’s registered trade mark. 2. Learned counsel for the appellant has submitted that the appellant is a company registered under Companies Act, 1957 and has been incorporated as M/s Mongia Hi Tech Private Limited. It has been argued that the appellant has been manufacturing, marketing and selling TMT bars and cements of all kinds since 1995 under a valid licence and products and goods manufactured by the appellant is under the trade mark of Mongia, Mogia Steel, Mongia Cement and Mongia TMT Turbo having specific artistic get up and design and no objection/search certificate has been issued by the Registrar of Trade Mark to the appellant under the aforesaid registered trade mark of Mongia which has acquired substantive goodwill and reputation in the market. It is argued that the Court below has not appreciated the fact that the defendant has adopted the trade name of M/s Mongia Super Cement and have been selling, manufacturing and marketing the said cement on the basis of goodwill of the trade mark of Mongia. That the court below should have considered and appreciated the fact that the use of trade name of Mongia amounts to passing off action by the defendant and the court below has rejected the application of the appellant for grant of temporary injunction only on the ground that he has used the registered trade mark of Mongia Super Cement. It is argued by the learned counsel that just because the appellant did not have registration of Mongia Super Cement is not a ground for rejecting the prayer for injunction and in support of his argument, he relied on the decision, in the case of N.R. Dongre and Others Vs. It is argued by the learned counsel that just because the appellant did not have registration of Mongia Super Cement is not a ground for rejecting the prayer for injunction and in support of his argument, he relied on the decision, in the case of N.R. Dongre and Others Vs. Whirlpool Corporation and Another reported in (1996) 5 SCC 714 . On the above ground, it is submitted that the impugned order is fit to be set aside and the appellant deserves to be protected for infringement of the trade mark by issuance of injunction against the respondent for using the trade name of Mongia. 3. On the other hand, learned counsel for the respondent has submitted that, it is evident from the material available on record, it is manifest that the plaintiff-appellant has not produced the certificate of registration issued by the Registrar of Trade Mark with regard to the trade mark of Mongia Super Cement whereas the defendant-respondent had filed the certificate of registration of Mongia Super Cement registered in the name of Parvati Super Cement Private, Limited. The said certificate was issued by the Registrar of Trade Mark vide Trade Mark no. 1505239, Govt. of India. The defendant-respondent has also filed the photo copy of deed of assignment entered into by Parvati Super Cement Private Limited with regard to assigning the trade mark registered under Application No. 1505239 along with goodwill. 4. Learned counsel for the respondent further submitted that since the lower court which is in seisin of the case has rejected the prayer for injunction after considering the materials available on record, accordingly, the impugned order does not require any interference by this Court. 5. Heard. 6. It is the settled principle of law that for grant or refusal of temporary injunction, the court has to consider, firstly, whether the prima facie case is made out in favour of the party seeking injunction, secondly, whether the balance of convenience lies in his favour and thirdly, whether the refusal of such grant will cause irreparable loss or injury to the party. 7. The facts of the case of N.R. Dongre (Supra) relied on by the learned counsel for the appellant are not applicable to the present case. 7. The facts of the case of N.R. Dongre (Supra) relied on by the learned counsel for the appellant are not applicable to the present case. In the aforesaid case the plaintiffs were the proprietor of the trade mark ‘Whirlpool’ since 1956-57 and for some reason or the other the registration was not renewed after 1977 in India. The plaintiffs had been trading in ‘Whirlpool’ products in several countries throughout the world and the products were also being sent to India and they were involved in manufacturing the washing machines and other products in the trade name of Whirlpool. The defendants were doing their business in the name of Usha- Shriram, Usha-Lexus and they too were manufacturing washing machines. They applied for the registration of mark of ‘Whirlpool’ in 1986 and there was no material to show that the defendants were marketing their washing machines under this mark or trade name of ‘Whirlpool’ prior to 1994. Materials were brought on record to show that the defendants had been selling the washing machine products in other names. 8. It was also noticed that the plaintiffs had challenged the order of the Registrar granting the certificate of registration of mark of ‘Whirlpool’ before the High Court which was pending for rectification of entry on the register in grant of such certificate they had not abandoned the mark. 9. In the said circumstances it was held that weight of equity is in favour of the plaintiffs as the mark or name ‘Whirlpool’ was associated for long with the plaintiffs’ company much prior to the application by the defendants, the defendants were marketing the said washing machine at 1/3rd of the cost of the washing machine of the plaintiffs and the washing machines of the defendants were not of the same engineering quality or product as that of the plaintiffs. In such circumstances the interlocutory injunction was granted to the plaintiffs as the trade name Whirlpool was associated with the plaintiffs’ company many years prior to the use of the name of ‘Whirlpool’ by the defendants. 10. In the instant case it is not brought on record that the appellants had challenged the order of the Registrar granting certificate of registration under the trade name of Mongia Super Cement in favour of respondent company Parvati Super Cement, Pvt. Ltd. The said trade name/mark was granted to the defendant-respondent after no objection/search certificate. 10. In the instant case it is not brought on record that the appellants had challenged the order of the Registrar granting certificate of registration under the trade name of Mongia Super Cement in favour of respondent company Parvati Super Cement, Pvt. Ltd. The said trade name/mark was granted to the defendant-respondent after no objection/search certificate. No material was placed before the trial court to substantiate the fact that the word ‘Mongia’ is a specific word and not a generic word or the appellant has the right to use this word to the exclusion of others. 11. The trial court has considered the material on record and exercised its discretion in refusing to grant interlocutory injunction in the absence of any proof that the use of the mark/name ‘Mongia Super Cement’ by the defendant is a misrepresentation by the respondent-defendant to the public or the deceptive use of this mark/name has caused hurt to the goodwill or reputation of the appellant-plaintiff company. 12. It is evident that more than three years have elapsed after the passing of the impugned order dated 15.03.2012, thus if the trial has not been concluded, the trial court shall conclude the trial expeditiously. 13. With the said direction the appeal stands dismissed.