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2018 DIGILAW 1247 (BOM)

Kantilal Premji Maru v. Madan Kumar

2018-05-04

S.J.KATHAWALLA

body2018
JUDGMENT S.J. Kathawalla, J. - The Plaintiff has filed the present suit seeking reliefs in respect of : i) infringement of the Plaintiff''s registered trademark "Classic Steels", bearing No. 1467897 in class 21 of the Trademarks Act, 1999 in respect of stainless utensils; ii) infringement of the Plaintiff''s copyright in its distinctive "Classic Steels" label; and iii) passing off by the Defendant of its products as and for that of the Plaintiff. 2. By an order dated 30th January, 2018 leave to the Plaintiff was granted under clause XIV of the Letters Patent Act to combine the cause of action for passing off with that of infringement of trademark and infringement of copyright. 3. By consent, the Notice of Motion is heard finally. 4. The Plaintiff''s case in the Plaint is as follows :- a) the Plaintiff is the registered proprietor of the distinctive mark "Classic Steels" bearing number 1467897 in class 21 of trademarks Act 1999 in respect of stainless utensils with effect from 7th July, 2006 (Exhibit A page 22 of the Plaint). b) The Plaintiff had incorporated the trading name and style of M/s. Classic Steels in 1985. c) the name and/or mark Classic Steels has been used by the Plaintiff in respect of its stainless steel products and also as a part of its corporate name from 1985 onwards. d) The Plaintiff is also the owner of copyright in the unique and distinctive "Classic Steels" label prepared by the Plaintiff, where "Classic Steels" is written in a distinctive form/pattern/font (Exhibit H pages 91-92 of the Plaint). 5. In the Plaint, in support of the Plaintiff''s case that the Plaintiff has used the name and mark "Classic Steels", continuously and extensively, the Plaintiff has relied upon the following documents: (i) Invoices dated 14th March 1986, 22nd September 1987, and 21st December 1988 (Exhibit D1 page 27, Exhibit D2 page 28 and Exhibit D3 page 29 of the Plaint) showing sales of products under the name/mark "Classic Steels". (ii) Certificate from Chartered Accountant certifying the turnover of the Plaintiff under the trading name M/s. Classic Steels, from 2008-09 to 2015-16. The cumulative turnover for this period is approximately Rs. 16,65,94,013/- (Exhibit C page 25 of the Plaint). (iii) Invoices showing monies spent in respect of publicity/print material for the mark (Exhibits E to E4 pages 30 to 34 of the Plaint). The cumulative turnover for this period is approximately Rs. 16,65,94,013/- (Exhibit C page 25 of the Plaint). (iii) Invoices showing monies spent in respect of publicity/print material for the mark (Exhibits E to E4 pages 30 to 34 of the Plaint). (iv) Brochure of the Plaintiff (Exhibit F2 page 39 to 81 of the Plaint). (v) Representative cartons showing the user by the Plaintiff of its "Classic" mark (Exhibit G1 to G5 page 86 to 90 of the Plaint). 6. In addition to the material set-out in the Plaint, the Plaintiff has also filed an Affidavit in Rejoinder/Additional Affidavit to show adoption and user of the mark and/or name "Classic and/or Classic Steels". The said material is as under: (i) Original Acknowledgement Receipt dated 6th December, 1985 in respect of another trademark "Classic" along with the Copy of the said trademark application (Exhibit A pages 21 to 23 of the Notice of Motion). (ii) Copy of the online status of the mark- "Classic Steels" bearing number 1467897 from the website of the Trademark Registry (Exhibit B pages 24 of the Notice of Motion) showing the user detail since 12th November 1985. (iii) Original letter dated 18th November, 1987 (Exhibit C page 38 of the Notice of Motion) addressed on the letterhead of M/s. Classic Steels to the Post Master, showing user of the said mark. (iv) Original receipts of Post office along with Tracking report from Post Office in pursuance of the above mentioned letter (Exhibit D pages 39 to 40 of the Notice of Motion). (v) An Original Article published in Hindi Newspaper "Navbharat Times" dated 21st September,1988 (Exhibit E page 41 of the Notice of Motion) showing the usage of the mark. (vi) Copy of the Trademark Journal Extract along with the relevant correspondence with the Trade Mark Registry (Exhibit F pages no 42 to 44 the Notice of Motion). (vii) Original/Duplicate Invoice cum delivery challans from 23rd November, 1985 to 12th June, 1989 (Exhibit G pages 47 to 81 of the Notice of Motion). (vi) Copy of the Trademark Journal Extract along with the relevant correspondence with the Trade Mark Registry (Exhibit F pages no 42 to 44 the Notice of Motion). (vii) Original/Duplicate Invoice cum delivery challans from 23rd November, 1985 to 12th June, 1989 (Exhibit G pages 47 to 81 of the Notice of Motion). (viii) Copy of Certificate of registration under central sales tax dated 2nd December,1985; Certificate of registration under Bombay sales tax dated 2nd November,1985; Original Authorization under Bombay Sales Tax dated 19th March, 1996; Certificate of registration under Bombay Sales Tax Act dated 1st April,2006; Original Certificate of registration under MVAT dated 1st April,2006; Original Certificate of enrolment under profession tax dated 29th January 1986 ; and Certificate of registration under MVAT dated 1st April, 2006 (Exhibit H pages 82 to 89 of the Notice of Motion). (ix) Copy of Income Tax Returns for the Assessment year 2003 - 2004 & 2004 -2005 (Exhibit I page 90 to 91 of the Notice of Motion). (x) Original Certificate of registration under Bombay Shops & Establishment Act, 1948 dated 13th August, 1990 showing extension and renewal from 1987 (Exhibit J page 92 of the Notice of Motion). (xi) Original certificate dated 22nd January, 2018 from Union Bank of India, Bhuleshwar Branch showing the Bank Account of the Plaintiff existing in the name of "Classic Steels" since 27-1-1985 (Exhibit K page 93 of the Notice of Motion). (xii) Original letter from Stainless Steel Merchant Association showing the membership since 28th February 1989 (Exhibit - ''K-1'' Page no. 94 of the Notice of Motion). (xiii) Original Invoices cum delivery challan from 18th January, 2012 to 3rd June, 2017 (Exhibit L page 95 -130 of the Notice of Motion). (xiv) Original Invoice of MOD Graphics dated 15th July,2014 (contract charges for catalogue, photography and website) for advertisement purposes, Original Invoice of Bright Prints to Classic Steels dated 7th October, 2014; Original Invoices of Indiamart to Classic Steels dated 10th May, 2016 & 29th May, 2017; Original Invoice of Forever news dated 30th June, 2017 along with receipt dated 29th June, 2017; Original Certificate dated 18th July, 2017 from Chartered Accountant - M/s. Dhiren Gosar & Co. (Exhibit M page 131 to 137 of the Notice of Motion). (xv) Copy of Computerised Invoices from 1st January, 2018 to 15th January, 2018 (Exhibit N Page no. 138 - 143 of the Notice of Motion). 7. (Exhibit M page 131 to 137 of the Notice of Motion). (xv) Copy of Computerised Invoices from 1st January, 2018 to 15th January, 2018 (Exhibit N Page no. 138 - 143 of the Notice of Motion). 7. Learned counsel for the Plaintiff submits that in or around March 2012, the Plaintiff had discovered that its mark Classic Steels was being pirated in the market. Therefore, the Plaintiff issued a public notice (Exhibit I at page 94 of the Plaint) calling upon the members at large to recognise the Plaintiff''s original products from the counterfeit products sold in the market by others. 8. It is submitted that by a letter dated 17th March 2012 (Exhibit J at page 95 of the Plaint), the Plaintiff wrote to one Mr. Ramcharit Pavankumar calling upon him to cease and desist from infringing the Plaintiff''s registered trademark and from passing off his product as and that of the Plaintiffs. By letter dated 28th March 2012 (Exhibit K page 100 of the Plaint), Advocate of Mr. Ramcharit Pavankumar responded to the same by stating that it was the Defendant who had incorporated a proprietorship under the name "5 Classic Care Corporation". By letter dated 14th April 2012 (Exhibit L at page 105 of the Plaint), the Advocate for the Plaintiff responded to the same letter and called upon Mr. Ramcharit Pavankumar as also the Defendant to cease and desist from pirating the Plaintiff trade mark. On 1st August 2014, the Plaintiff through his manager ''Himay Maru'' also filed a criminal complaint (Exhibit M at page 109 of the Plaint) before the Court of Chief Judicial Magistrate, Muzzafarpur in this regard. 9. It is submitted that the Plaintiff thereafter discovered that Mr. Ramcharit Pavan Kumar is in fact the father of the Defendant and that the said parties were acting in collusion with one another in pirating the Plaintiff''s mark. 10. The Plaintiff also discovered that the Defendant had fraudulently applied for and secured registration of its mark "5 Classic Care" which was identical and/or deceptively similar to the Plaintiff''s registered Trade Mark, in respect of identical goods and services. It is submitted that the Defendant had in fact also claimed a false date of user in its application. In the application for registration of the impugned mark the Defendant has claimed user from 21st September 1994 (Page 131 of the Plaint). It is submitted that the Defendant had in fact also claimed a false date of user in its application. In the application for registration of the impugned mark the Defendant has claimed user from 21st September 1994 (Page 131 of the Plaint). However, in the Affidavit in support dated 11th November 2014 (Page 138 of the Plaint) of the said application the Defendant has in fact contended that its user of the said mark is from 13th February 2012. 11. Learned Counsel for the Plaintiff submits that a bare perusal of the marks of the Plaintiff (Pages 22 and 23 and pages 92 and 93 of the Plaint) and the impugned mark (Page 130 of the Plaint) as also the brochure of the Plaintiff (Pages 39 to 81 of the Plaint) and the brochure of the Defendant (Page 148 to 151 of the Plaint) shows that the impugned marks are identical and/or deceptively similar. The Defendant''s brochure also makes it clear that the Defendant is engaged in manufacture and supply of counterfeit and spurious products and uses the impugned mark for the same. 12. Learned Counsel for the Plaintiffs submits that a comparison of the marks as a whole make it clear that the Defendant has copied the prominent and/or distinctive and/or essential feature of the Plaintiff''s registered marks and label. It is further submitted that the Defendant has himself applied for and secured registration in respect of the impugned mark and is now estopped from contending that the mark of the Plaintiff is common to the trade and/or is not distinctive. It is further submitted that there is no question of any delay in approaching this Court since the Plaintiff had objected to the use by the Defendant of the impugned mark at the very first instance and that since the adoption of the impugned mark itself is dishonest, any use after the said objection was at the Defendant''s peril. 13. It is further submitted that there is no question of any delay in approaching this Court since the Plaintiff had objected to the use by the Defendant of the impugned mark at the very first instance and that since the adoption of the impugned mark itself is dishonest, any use after the said objection was at the Defendant''s peril. 13. In support of the aforesaid propositions, reliance is placed on the judgments in the cases of (i) Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd. (2011) 5 BCR 588 : 2011(4) AIR Bom R 612, (ii) Brihan Karan Sugar Syndicate Pvt. Ltd. v. Lokranjan Breweries Pvt. Ltd. 2014 (5) BCR 767 (iii) Kamani Oil Industries Pvt. Ltd. v. Bhuvaneshwar Refineries Pvt. Ltd. 2014 SCC Online Bom 595 : 2014 (4) AIR Bom R 103: 2014 (4) Bom CR 487 and (iv) Midas Hygeine Industries P Ltd & Anr v. Sudhir Bhatia 2003 (3) SCC 90 . 14. In support of the proposition that relief in respect of infringement can be granted even against a registered proprietor when the registration of the Defendant is found to be one which shocks the conscience of the Court or one which is ex-facie illegal or fraudulent, reliance is placed on the judgments in the case of (i) Lupin Ltd. v. Johnson and Johnson 2015 (1) Mh. LJ 501 (ii) The Indian Hotels Company Limited v. Ashwajeet Garg & Ors. MIPR 2014 (2) 122 and (iii) Bloomberg Finance LP v. Prafull Saklecha& Ors I.A. No.17968 of 2012 in CS (OS) No.2963 of 2012 decided on 11.10.2013. 15. Learned Counsel for the Plaintiff submits that despite the registration obtained by the Defendant in respect of the impugned mark, such a registration is one which is ex-facie fraudulent and/or illegal and/or one which shocks the conscience of the Court. This submission is made on the basis of the following:- (i) The Defendant has filed "Affidavit-in-Reply to the Notice of Motion dated 15th January 2018." In the said Affidavit, the Defendant has not even sought to justify as to how it came to adopt a mark/name which is identical and/or deceptively similar to the Plaintiff''s registered trademark as also to the Plaintiff''s label for which the Plaintiff has secured a copyright registration. (ii) The manner in which the Defendant chooses to write "Classic" is identical and/or deceptively similar to the Plaintiff''s mark/label. (ii) The manner in which the Defendant chooses to write "Classic" is identical and/or deceptively similar to the Plaintiff''s mark/label. The uniqueness/distinctiveness manner in which the Plaintiff uses "Classic" is entirely copied/lifted by the Defendant. There is no doubt that the impugned mark is identical and/or deceptively similar to the Plaintiff''s registered trade mark and label. (iii) The impugned mark is used in respect of identical goods and services and therefore deception and confusion is bound to happen. That was in fact the intent of the Defendant. (iv) On account of the Plaintiff''s registered trade mark being on the register, it was not possible for the Defendant to secure registration in respect of a mark which is identical and/or deceptively similar to the registered trade mark. As such, the Defendant''s registration is clearly hit by section 11 of the Trade Marks Act , and such registration ought not to have been granted and is ex facie illegal and invalid. (v) While the Defendant has sought to call its label as "5-Classic Care", it is clear that the numeral 5 is written obscurely and "Care" in a much smaller font, and what is emphasised is the name/mark "Classic" itself. The essential feature of the Plaintiff''s registered trade mark is clearly copied and imitated. The registration applied for was thus clearly fraudulent. (vi) The Defendant has clearly made a false claim of user i.e. user from 21st September 1994. There is absolutely no material to show that the Defendant has used the said mark from 21st September 1994 as alleged or at all. In fact, the Affidavit in support of the application for registration of the impugned mark itself shows that the Defendant claims to be using the said mark from 13th February 2012. The said Affidavit also shows that on the Defendant''s own showing the monies expended on advertisement charges for the years 2011-12, 2012-13, 2013-14, and 2014-15 up to 31.10.2014 were paltry sums of Rs. 980, Rs. 1590, Rs. 3150 and Rs. 1250 respectively. This itself shows that the entire attempt is to essentially ride upon the goodwill of the Plaintiff and its mark. (vii) In fact, in paragraph 4 of the Affidavit filed by the Defendant, the Defendant contends as follows "I say and submit that the five classic care mark which is registered by me in U.P. is of 2015 for which we have applied in 2012. (vii) In fact, in paragraph 4 of the Affidavit filed by the Defendant, the Defendant contends as follows "I say and submit that the five classic care mark which is registered by me in U.P. is of 2015 for which we have applied in 2012. Our application itself mentions that this mark is used by us since 1994, which is prior in point of time as against this the certificate for registration of the Plaintiff does not mention any date, which can be seen from Exhibit ''A'' of his compilation, that shows the falsity of the claim of the Plaintiff." A very guarded statement is sought to be made that "Our application itself mentions that the mark is used by us since 1994, which is prior in point of time...". As such, the Defendant has not even asserted actual user from 1994 in the Affidavit filed and has merely stated that the said claim is made in the application seeking registration. The falsity of such claim is also evident from the fact that not a shred of material is produced by the Defendant in support of its case. (viii) The use by the Defendant of the impugned mark is clearly subsequent, and there is no manner of doubt as to why the Defendant adopted the impugned mark. The same was done to trade upon the goodwill and reputation of the Plaintiff and its marks. As such, the impugned mark ought not to have been registered. 16. Learned Counsel for the Plaintiff further submits that it is clear that the impugned mark and impugned trading name has been adopted to cash upon the goodwill and reputation of the Plaintiff and its marks and therefore a clear case of passing off is made out. Further, the rival labels and marks are clearly identical and/or deceptively similar and therefore a case of infringement of copyright is also made out. 17. On the other hand, the Learned Counsel for the Defendant has submitted as follows : (i) The Defendant is a registered proprietor of the impugned trade mark and therefore no relief in respect of infringement of trade mark can be granted. 17. On the other hand, the Learned Counsel for the Defendant has submitted as follows : (i) The Defendant is a registered proprietor of the impugned trade mark and therefore no relief in respect of infringement of trade mark can be granted. (ii) Even otherwise the Plaintiff''s registered trade mark is a label mark and the effect of registration of such a mark is that it did not confer any exclusive right in the matter forming only a part of the whole mark which is registered. Reliance is placed in this regard on Section 17 of the Trade Mark Act, 1999. (iii) The Plaintiff has not shown material in support of its user since 1985. The Plaintiff has not shown originals of all documents relied upon by the Plaintiff in support of its case of user from 1985. The invoices (Pages 47 to 81 of the Notice of Motion) being invoices from 1985 to 1989 are not genuine because they appear to be new and that the newspaper advertisement relied upon by the Plaintiff on 19th September 1988 (Page 41 of the Notice of Motion) reflects a phone number of the Plaintiff which is different from the one contained in the invoices for the year 1988.The Plaintiff has not produced a copy of the Sales Tax No. which would show the date of the user of the mark "Classic Steel" by the Plaintiff. (iv) The Plaintiff has no rights in the words "Steel", and the word "Classic" is generic and common to the trade. There are several other such marks in the market used by other manufacturers. (v) The rival marks are clearly distinct. The Defendants mark is "5 star Classic Care", which is different from the marks of the Plaintiff. Taken as a whole, the rival marks are different. (vi) There is no illegality nor does the Defendant''s registration shock the conscience of the Court and the injunction for infringement of trade mark cannot be granted. (vii) There is delay on the part of the Plaintiff to apply for reliefs and therefore no interim reliefs should be granted. 18. In support of his submissions Learned Counsel for the Defendant has relied upon the Judgment in the case of Ansari Bilal Ahmadlal Mohd v. Shafeeque Ahmed Mohammed Sayeed, Commercial Appeal No. 94 of 2017 in Notice of Motion (L) NO. 18. In support of his submissions Learned Counsel for the Defendant has relied upon the Judgment in the case of Ansari Bilal Ahmadlal Mohd v. Shafeeque Ahmed Mohammed Sayeed, Commercial Appeal No. 94 of 2017 in Notice of Motion (L) NO. 2311 of 2016 in Suit (L) No. 810 of 2016 decided on 12th January, 2018 . 19 I have considered the submissions advanced by the Counsel for the Plaintiff and the Defendant. 20. The Plaintiff''s registered trademark, registered copyright label and the impugned mark of the Defendants are reproduced hereunder :- Plaintiff ''s registered trade mark Plaintiff ''s registered copyright label Impugned mark of Defendants 21. A look at the above rival marks shows that the impugned mark is identical and or deceptively similar to the Plaintiffs'' registered trade mark and the Plaintiffs'' registered copyright. 22. This Court, in Ultra Tech Cement Ltd. v. Alaknanda Cement Pvt. Ltd. (Supra) observed as under: "25. The defendants have further submitted that the impugned mark ULTRATUFF is not deceptively similar to the Plaintiff''s registered trade mark ULTRATECH. This Court in its decision in M/s. Hiralal Prabhudas v. M/s. Ganesh Trading Co., reported in AIR 1984 Bom. 218 , has aptly summarized the principles for deciding the question of deceptive similarities in Paragraph 5 as follows:- "5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are imperfect recollection, (f ) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (g) the purchaser must not be put in a state of wonderment, (h) marks must be compared as a whole microscopic examination being impermissible, (i) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (j) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances." 26. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances." 26. In James Chadwick & Bros Ltd. v. The National Sewing Thread Co. Ltd., reported in AIR 1951 Bom. 147 , at 154 this court referring to the observations of the Master of the Rolls in Seville Perfumery case has reiterated that whilst comparing the two marks what is required to be considered are the essential features and has observed in Paragraph 13 as follows :- "[13] Reliance was also placed on June''s case ( Seville Perfumery Ltd. v. June Perfect Ltd., and F. W. Woolworth & Co. Ltd. (1941) 58 R.P.C. 147 ). In that case the distinguishing feature of the registered trade mark & the proposed trade mark was the word "June," & the Master of the Rolls in his judgment at p.162 observes: "Now the question of resemblance & the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any." The learned Master of the Rolls also says that (p.162): "In such cases the marks comes to be remembered by some feature in it which strikes the eye & fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark." "Therefore the test we must apply in this case is, what is the feature in the appellants'' trade mark which strikes the eye & fixes itself in the recollection, & the only answer to the question is that it is the Eagle which so strikes the eye & fixes itself in the recollection............" The above decision was upheld by the Hon''ble Supreme Court in the case of National Sewing Thread Co. Ltd., Chidambaram v. James Chadwick & Bros reported in AIR 1953 SC 357 wherein it was reiterated that the Court has to consider the question from the view point of an average man of ordinary intelligence. In Paragraph 22 of its decision the Hon''ble Apex Court observed:- "(22) The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. In Paragraph 22 of its decision the Hon''ble Apex Court observed:- "(22) The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing." 27. The Hon''ble Supreme Court in its decision in Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 SC 449 at 453 paragraph 8 while considering the marks Amritdhara and Lakshmandhara held that no microscopic examination is permitted nor any question arises of considering the etymological meaning of the word marks. The court observed in Paragraph 8 of its decision as follows:- "(8).....................An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ''current of nectar'' or ''current of Lakshman''. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between ''current of nectar'' and current of Lakshman''. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between ''current of nectar'' and current of Lakshman''. ''Current of Lakshman'' in a literate sense has no meaning; to give it meaning one must further make the inference that the ''current or stream'' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him, but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between ''Amritdhara'' and ''Lakshmandhara'' He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments." 28. The defendants have contended that the plaintiffs registered trade mark "Ultra Tech Cement The Engineers Choice" consists of 6 words and the impugned mark "Ultra Tuff Cement" contains only 3 words. Both the marks are therefore different and cannot be said to be deceptively similar. In my view, such a contention on the part of the defendant is baseless and untenable. The court is not required to conduct a microscopic examination of the two marks. As held in the aforesaid decisions the words other than the one which forms the essential feature are to be ignored. The essential feature of the two marks are the words Ultra Tech and Ultra Tuff. It is only these words which form the essential features of the two marks, which are to be compared, and I am prima facie satisfied that the same are phonetically, visually and structurally similar. From the advertisement expenses and sales figures produced by the plaintiffs and set out herein above the plaintiff has prima facie established the reputation of its mark and the defendants contention that the two bags are different and therefore there is no question of passing off is also unsustainable. Considering the nature of the goods and class of purchasers there certainly is likelihood of deception and confusion and also there is likelihood of association. Considering the nature of the goods and class of purchasers there certainly is likelihood of deception and confusion and also there is likelihood of association. As submitted by the Plaintiff, the Plaintiff''s registered trade mark having being fixed in the mind of the purchaser, it is bound to be recalled by an unwary purchaser when he sees the impugned mark particularly in respect of identical goods. The plaintiff is correct in its submission that the purchaser is bound to be put in the state of wonderment if totally not confused or deceived." 23. In the present case, comparison of the rival marks as a whole reveals that the Defendant has copied the prominent and/or essential and/or distinctive feature of the Plaintiffs'' registered trade mark. The word "Classic" written in a distinctive font appearing in the Plaintiff''s registered trade mark is bodily lifted and copied by the Defendant in the impugned mark. The addition of the numeral 5 and of 5 small stars makes no difference. In fact, the Defendant has sought to prominently use the copied mark "Classic" and highlight the same. The Defendant is using the impugned mark in respect of identical goods/services and therefore confusion is bound to take place. In fact the manner in which the Defendant has sought to actually use the impugned mark in respect of its stainless steel goods clearly shows that the Defendant has merely sought to highlight the name/mark "Classic". The adoption of the impugned trading name is also clearly deliberate and such as is liable to cause confusion and deception. 24. I am also in agreement with the submission of the Learned Counsel for the Plaintiff that despite registration of the impugned mark by the Defendant, a case for infringement of the Plaintiffs'' registered trade mark is made out and this squarely falls within the "window" kept open by the full bench of this Court in the case of Lupin Ltd. v. Johnson and Johnson (Supra). In the case of Lupin Ltd., the full bench was considering whether the Court could go into the question of validity of the registration of the Plaintiff''s trade mark at the interlocutory stage when the Defendant takes up the defence of invalidity of the registration of the Plaintiffs trade mark in an infringement suit. In the case of Lupin Ltd., the full bench was considering whether the Court could go into the question of validity of the registration of the Plaintiff''s trade mark at the interlocutory stage when the Defendant takes up the defence of invalidity of the registration of the Plaintiffs trade mark in an infringement suit. The Court inter alia concluded as under: "In a nutshell, our conclusions are as under: (1) The expression ''if valid'' in section 28 and the words ''prima facie evidence of the validity of the trade mark'' in section 31 of the Trade Marks Act , (the Act) must be given their plain and natural meaning. The plain and natural meaning is given to these phrases by various High Courts. (paras 24, 26, 29, 31, 35, 44, and 56) (2) ... (3) A challenge to the validity of the registration of the trade mark can finally succeed only in rectification proceedings before the Intellectual Property Appellate Board. However, there is no express or implied bar taking away the jurisdiction and power of the Civil Court to consider the challenge to the validity of the trade mark at the interlocutory stage by way of prima facie finding. (Paras 34 and 53) (4) There is nothing in the Act to suggest that any different parameters for grant of injunction are required to be applied when a plaintiff seeks injunction on the basis of registered trade mark. The relief of injunction being a relief in equity, when the Court is convinced that the grant of interim injunction would lead to highly inequitable results, Court is not powerless to refuse such relief. (Paras 35, 36 & 47) (5) However, a very heavy burden lies on the defendants to rebut the strong presumption in favour of the plaintiff on the basis of the registration at the interlocutory stage. The plaintiff is not required to prove that the registration of a trade mark is not invalid, but only in the cases where the factum of registration is ex facie totally illegal or fraudulent or shocks the conscience of the Court that the Court may decline to grant relief in favour of the plaintiff. (Paras 25, 27 & 55) (6) ... (7) ... (Paras 25, 27 & 55) (6) ... (7) ... (8) Though it is considered as a practice of this Court in granting injunction in favour of the plaintiff having a registered trade mark, the same cannot be treated as a total embargo on the power of the Court to refuse grant of interim injunction. In exceptional cases, that is in cases of registration of trade mark being ex facie illegal, fraudulent or such as to shock the conscience of the Court, the Court would be justified in refusing to grant interim injunction.(Para 33)" 25. The Learned Counsel for the Plaintiff is correct in his submission that while the aforesaid observations were made in the context of the Defendant raising the defence of the invalidity of the Plaintiff''s registered trade mark, the same observations would also apply to a case where the Defendant has secured a registration which is ex facie fraudulent and/or illegal or which shocks the conscience of the Court and the Plaintiff asserts invalidity of the Defendants registration. 26. In the past, injunction has been granted by courts even where the trade mark of the Defendant is registered. For instance, in the case of Bloomberg Finance LP v. Prafull Saklecha & Ors. (Supra), the Court inter-alia held as under: "58. While the Defendants may hold registration for the mark BLOOMBERG in Class 43, that by itself will not preclude the Plaintiff, which holds an earlier registration in other classes from seeking to restrain the Defendants from infringing the Plaintiff''s marks. While the case of the Plaintiff that the registration obtained by the Defendants is of doubtful validity will require a detailed examination, the manner of the Defendant obtaining such registration after a cease and desist notice was issued to it lends prima facie merit to the contention of the Plaintiff. In support of such submission the Plaintiff has in its written submissions referred to the decision of the Single Judge in Clinique Laboratories v. Gufic Ltd. 2009 (41) PTC 41 (Del) as well as the decision in Gufic Ltd. v. Clinique Laboratories 2010 (43) PTC 788 (Del) which did not interfere with the decision under appeal to the extent it held that where the Court is prima facie of the view that the registration of the Defendant was invalid an interim injunction restraining infringement could be granted." 27. In the case of Clinique Laboratories v. Gufic Ltd (Supra) the Court had observed as under: "8. In my view, Section 29 of the Act providing for infringement of the registered trademark does not contemplate infringement by another registered proprietor. Sections 29(1), (2) & (4) expressly provide that "registered trademark is infringed by a person who, not being a registered proprietor ..........." Though, Section 29(5) which has been newly introduced in the 1999 Act does not use the same language but in my view the same would be irrelevant for the present purposes. Section 30(2) (e) further fortifies the said position by expressly providing that the registered trademark is not infringed where the use being as one of two or more trademarks registered under the Act which are identical or nearly resemble each other and in exercise of the right to use of that trademark given by registration thereof. However, Sections 28(3), 29 & 30(2)(e) cannot be read in isolation. If the intent was that there could be no action for infringement against the registered proprietor, the legislature while giving the right for rectification before the Registrar would not have in Section 31 made the registration as only prima-facie evidence of validity thereof. If that had been the intention all that would have been said is that as long as the registration exists it is valid, without any question of prima-facie or not. Then the courts would have had to wait for the outcome of the rectification proceedings. 9. Registration has been made only prima facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28(1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, give to the registered proprietor" exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1) (b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. Section 124(1) (b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while further providing for stay of suit in such cases, in sub-Section (5) expressly provided that such stay would not preclude the Court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an un-escapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the Court is empowered in such case to pass any interlocutory order. The Court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124(5) has thus empowered the court under Section 124(5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof. Though in view of Section 31, the test would be much stricter; 10. In my opinion, unless the provisions are so read, effect cannot be given thereto. 11. Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the court is satisfied otherwise on the basis of material on record and in the facts of the case, the court is empowered to injunct use of registered trademark also. I do not find any reason to limit/restrict the applicability of sub-Section (5) as suggested by the senior counsel for the defendant, in the absence of the legislature providing so. If the legislature had felt that there could be no infringement by a registered trademark, there was no need to provide for such a suit as in Section 124(1)(b) and (i). In fact, sub-clause (i) of 124 (1) shows that the suit can be instituted even where the rectification proceedings are pending i.e. where the plaintiff is even at the time of institution of the suit aware of the defendant having a registered trademark. 12. In fact, sub-clause (i) of 124 (1) shows that the suit can be instituted even where the rectification proceedings are pending i.e. where the plaintiff is even at the time of institution of the suit aware of the defendant having a registered trademark. 12. I also find merit in the contention of the senior counsel for the plaintiff with reference to Section 31(2) of the Act. Section 31(2) suggests that the court notwithstanding registration being prima facie evidence of validity as provided in Section 31(1) can hold the registered trademark to be invalid. The court can hold the registration to be invalid, on any ground or for non compliance of any of the conditions for registration provided under the Act. It further provides that if the invalidity of registration is averred for the reason of non compliance of Section 9(1), i.e. of evidence of distinctiveness having not been submitted before the Registrar, then the party pleading validity of registration shall be entitled to give evidence in legal proceedings where validity is challenged, of the mark having acquired distinctiveness on date of registration. Section 32 permits evidence of acquisition of distinctive character within the meaning of Section 9(1) post registration, also being led in such proceedings. It follows that where validity of registration is challenged on grounds other than provided in Section 9(1) of the Act, the test is whether the criteria laid down in such other provisions of the Act, for registration has been satisfied or not. Since, Section 124 otherwise provides for stay of proceedings in such suit and only permits passing an interlocutory order, such finding of invalidity naturally has to be on the touchstone of principles for interlocutory order only and not as at the time of final decision of the suit, in as much as the finding in the rectification proceedings has been otherwise made binding in the suit and on all aspects of validity i.e. under Section 9 as well as under Section 11. 13. Neither counsel has cited any direct judgment on this aspect. Nor have I been able to find any. 14. 13. Neither counsel has cited any direct judgment on this aspect. Nor have I been able to find any. 14. I thus conclude that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit, while staying the further proceedings pending decision of the Registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the Defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant's mark." 28. Similarly, in the case of The Indian Hotels Company Limited v. Ashwajeet Garg & Ors. (Supra) an injunction for infringement of trade mark was granted against the Defendant who was a registered proprietor. After considering the law on the subject, the Court summarised the legal position as under: "The legal principles that thus emerge are the following: (i) Action for infringement is a statutory remedy conferred on the registered proprietor of a registered Trade mark. (ii) Registration of Trade mark gives the proprietor the exclusive right to the use of the Trade mark in connection with the goods in respect of which I say that is registered. American Home Products (Supra). (iii) If the essential features of the Trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly as trade origin different from that of the registered proprietor of the mark would be immaterial. (iv) Mere delay I filing of a suit for infringement is not fatal. (v) Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. (vi) The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of pronunciation if the rival marks are used. (vii) Resemblance between the two marks must be considered with reference to the ear as well as the eye. (viii) The rival marks have to be compared as a whole. The two competing marks must be judged by both by their looks and by their sound. All the surrounding circumstances must be considered. (vii) Resemblance between the two marks must be considered with reference to the ear as well as the eye. (viii) The rival marks have to be compared as a whole. The two competing marks must be judged by both by their looks and by their sound. All the surrounding circumstances must be considered. (ix) Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. (x) Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. (xi) Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences in the design and get up. (xii) A single actual use with intent to continue such use eo instanti confers a right to such mark as a Trade mark. (xiii) The Applicant has to establish user of the aforesaid mark prior tin point of time than the impugned user by the non-Applicant. (xiv) A suit for infringement is maintainable by a registered proprietor against another registered proprietor. (xv) While staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered Trade mark by the Defendant can be made by the Court. (xvi) A trade mark shall not be registered if it is identical or similar to an earlier Trade mark in respect of goods or services covered by the Trade mark and is likely to cause confusion amongst the public. (xvii) Registration of an identical or similar Trade mark shall also be refused for goods and services not covered by the earlier Trade mark if it is shown that the earlier Trade mark is a well known Trade mark. (xviii) The mere fact that the Plaintiff has not chosen to take any action against other parties cannot disentitle the Plaintiff from taking the present action." (footnotes omitted). 29. It must however be kept in mind that the Full Bench of this Court has kept a very limited window open in respect of assailing a registration at the interlocutory stage. The test is rigorous. 29. It must however be kept in mind that the Full Bench of this Court has kept a very limited window open in respect of assailing a registration at the interlocutory stage. The test is rigorous. The Court is required to be prima facie satisfied that the factum of registration is : (i) ex facie totally illegal; or (ii) fraudulent; or (iii) shocks the conscience of the Court. 30. In the present case, I am convinced for the reasons which are set out in paragraph 15 that registration secured by the Defendant in the present case is fraudulent and ex facie illegal and one which shocks the conscience of the Court. There is complete copying by the Defendant of the essential feature of the Plaintiff's registered mark. The registration secured by the Defendant is in respect of identical goods/services. The fact of copying itself clearly shows that the Defendant was aware of the Plaintiff's prior registration. The essential feature of the Plaintiff's mark is bodily lifted and copied by the Defendant. Prima facie, the subsequent registration ought not to have been granted, and is ex facie illegal. It also appears that a false claim of user was made to secure the impugned registration. While user is claimed from 21st September, 1994, the Affidavit in Support of user sets out the use as being from 13th February, 2012. There are serious doubts regarding the registration secured by the Plaintiff and the same appears to be fraudulent. The Defendant has not answered this question at all. All factors point out to the fact that the Defendant has illegally adopted an identical/deceptively similar mark to sell his products as if they were of the Plaintiff. Therefore, despite the registration of the impugned mark there is no legal impediment in maintaining an action in respect of infringement of a registered trade mark, and obtaining interim relief in that regard, in the peculiar facts of this case. 31. The contention of the Defendant that the Plaintiff has not been able to show user of its mark from 1985 and is inconsequential in so far as the claim for infringement of trade mark and infringement of copyright is concerned in this case. Learned Advocate for the Plaintiff correctly submits that the registration of a mark and the existence of copyright itself is sufficient to give rise to a cause of action for infringement. Learned Advocate for the Plaintiff correctly submits that the registration of a mark and the existence of copyright itself is sufficient to give rise to a cause of action for infringement. If the Defendant uses a mark which is identical and/or deceptively similar to the Plaintiff's registered trade mark and which is likely to cause confusion, the Plaintiff's registration itself is sufficient to maintain an action for relief in respect of infringement of a registered trade mark. It is trite that in an action for infringement of copyright, even registration of copyright is not required (although in the present case, the Plaintiff has secured a copyright registration as well). Copyright subsists in the said label by virtue of authorship/ownership and not on account of registration. In the present case, I have held that the rival marks are deceptively similar, and the Defendant has miserably failed to prove prior user. 32. Even otherwise, I am not in agreement with the submission of the Learned Counsel for the Defendant that the Plaintiff has not produced material in support of its user of its mark Classic/Classic Steels from 1985. The material produced by the Plaintiff, and referred to above is more than sufficient especially at the interim stage to support the case of the Plaintiff. In fact, the Plaintiff has produced copy of the Bombay Sales Tax registration dated 2nd December 1985 and Central Sales Tax registration dated 2nd December 1985. A large amount of invoices from 1985 onwards have also been produced alongwith the Shops and Establishment License dated 13th August 1990. 33. The submission with respect to the newspaper advertisement dated 21st September 1998 is wholly misplaced. The original advertisement itself was inspected by the Defendant and also considered by this Court. That by itself establishes that "M/s. Classic Steels" was using the mark/name "Classic" and "Classic Steels" on that date i.e. 21st September 1988. It is not even the case of the Defendant that this newspaper advertisement itself ought to be disregarded. The only argument made on the basis of this newspaper advertisement is that the said newspaper advertisement has a "phone number" which is different from the one appearing on certain invoices. This is an argument of desperation and by itself does not take the case of the Defendant any further as the said advertisement itself in the first-place shows user by the Plaintiff of the mark "Classic/Classic Care". This is an argument of desperation and by itself does not take the case of the Defendant any further as the said advertisement itself in the first-place shows user by the Plaintiff of the mark "Classic/Classic Care". Pertinently, the number of the Central Sales Tax registration and Bombay Sales Tax registration correctly appears on the invoices of the relevant period i.e. between 1985 and 1989. That being the case, the Plaintiff has discharged his onus in showing genuineness of the said documents. Apart from assailing the invoices the Defendant has very faintly assailed other documents relied upon by the Plaintiff in support of its users. Such a challenge is clearly insufficient. 34. Learned Counsel for the Defendant has submitted that in view of section 17 of the Trade Marks Act , the Plaintiff is not entitled to relief in respect of infringement of trade mark since the Plaintiff has secured a registration for a label mark and there is no right with respect to the word "Classic" alone. Section 17 of the Trade Mark Act 1999 was considered by this Court in the case of Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd. (Supra) where this Court observed: "29. The Defendants have next relied on Section 17 of the Trade & Marks Act, 1999 in support of their contention that the registration granted to the plaintiff does not confer any exclusive right in the matter "ULTRA" and "ULTRATECH" which form only a part of the whole of the plaintiff's registered trade mark. Section 17 of the Act is for the sake of convenience reproduced here under:- "17. (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusiveright to the use of the trademark taken as a whole. Section 17 of the Act is for the sake of convenience reproduced here under:- "17. (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusiveright to the use of the trademark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark - (a) contains any part - (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii)which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character; The registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered." From the language used in Section 17 it is clear that when a trade mark consists of several marks the registration confers upon the proprietor exclusive rights to the use of trade mark taken as a whole. As held in the aforestated decisions while comparing the marks, the Court has to consider and compare the essential features of both the marks. If the essential features are similar, then confusion and deception can be said to arise. As submitted by the plaintiff, all that Section 17 lays down is that the registration of a trade mark shall not confer any exclusive rights in the matter forming only a part of the whole of trade mark so registered unless the part is the subject matter of a separate application for registration or is separately registered or is distinctive. The provisions of Section 17 contained in Sub Section 2(a)(i) and 2(a)(ii) and Sub Section (b) show that the three things mentioned therein are disjunctive and not cumulative. In the present case the word ULTRATECH is distinctive. As submitted by the plaintiff the fact that the plaintiff's mark is registered without any disclaimers or limitations itself shows that the word ULTRATECH is a distinctive mark and the plaintiff have satisfied the criteria laid down in Sections 9 and 11 of the Trade & Marks Act, 1999. Therefore in the present case though the word ULTRATECH is not separately registered nor is a subject of a separate application, the same being distinctive shall not be hit by Section 17(2) as submitted by the defendants. Both the Ld. Therefore in the present case though the word ULTRATECH is not separately registered nor is a subject of a separate application, the same being distinctive shall not be hit by Section 17(2) as submitted by the defendants. Both the Ld. Advocates have relied on various paragraphs of the decision of the Calcutta High Court in the case of Three-N Products Private Ltd., V.Emami Ltd., GA Nos. 2951 and 3976 of 2007 and CS No.204 of 2007, Paragraph 35 of the said decision is relevant and is reproduced hereunder: "35. The words 'the registration thereof shall not confer any exclusive right" towards the end of Section 17(2) have to be understood in the context. The import of such words is that the registration of the composite mark will not ipso facto confer any exclusive right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade." In view thereof, the defendants' contentions/arguments with regard to reliance on section 17 of the Trade Marks Act , is misplaced." 35. This aforesaid Judgment was followed by another Ld. Single Judge of this Court in Brihan Karan Sugar Syndicate Pvt. Ltd. v. Lokranjan Breweries Pvt. Ltd. (Supra). 36. The Learned Counsel for the Plaintiff is correct in his submission that the fact that the Defendant has applied for and obtained registration in respect of an identical/deceptively similar mark does not permit the Defendant to contend that the said mark (being the essential or prominent feature of the registered mark) of the Plaintiff is not distinctive. In the present case the word "Classic" written in a peculiar form, which in itself is distinctive, is bodily lifted and copied by the Defendant. Once it is found that the word/mark which is copied is distinctive, Section 17 cannot come to the rescue of the Defendant. 37. The submission of the Defendant that the Plaintiff's mark is common to the trade is also liable to be rejected. Once it is found that the word/mark which is copied is distinctive, Section 17 cannot come to the rescue of the Defendant. 37. The submission of the Defendant that the Plaintiff's mark is common to the trade is also liable to be rejected. This Court has consistently held that if the Defendant himself applies for registration of an identical or deceptively similar mark of the Plaintiff, it is not open to such Defendant to contend that the Plaintiff's mark is common to the trade. Further, the Defendant has produced absolutely no material whatsoever in support of its case. In the present case, the Defendant is not only estopped from contending that the Plaintiffs mark is common to the trade, in fact, the Defendant has produced absolutely no material whatsoever in support of this contention. 38. I am of the view that the Defendant has copied the essential feature of the Plaintiffs mark and label. The Defendant has done so to encash upon the goodwill and reputation of the Plaintiff and its mark. The Plaintiff has had substantial sales under its marks and sufficient goodwill and reputation has accrued to them. In the circumstances, I am satisfied that a case for passing off is also made out. 39. In so far as infringement of copyright is concerned, the Defendant has not advanced any arguments in that behalf. A case therefore of infringement of copyright is also made out. 40. Lastly, insofar as the Defendant's contention as far as delay is concerned, the same is misplaced. The Plaintiff became aware of the infringing use in or around March 2012. The Plaintiff immediately issued a Public Notice and also a Cease and Desist Notice in March 2012 itself. The Plaintiff also filed a criminal complaint before the Court of Chief Judicial Magistrate, Muzzafarpur in respect of such infringement. I have come to the conclusion that the adoption by the Defendant of the impugned mark is clearly dishonest. The Defendant has not even attempted to give the circumstances in which the impugned mark came to be adopted. The Defendant has certainly adopted the impugned mark subsequently with full knowledge of the marks of the Plaintiff. Therefore, it is not open to the Defendants to raise a plea in equity. In this regard, this Court has in the case of Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd (Supra) observed as under: "33. The Defendant has certainly adopted the impugned mark subsequently with full knowledge of the marks of the Plaintiff. Therefore, it is not open to the Defendants to raise a plea in equity. In this regard, this Court has in the case of Ultra Tech Cement Limited v. Alaknanda Cement Pvt. Ltd (Supra) observed as under: "33. The defendants have submitted that the plaintiff has filed the suit one year after the first notice was served on the defendant and is therefore not entitled to any relief on the ground of delay. The defendants are certainly the subsequent adopter of the impugned mark. The defendants were therefore aware of the plaintiff's mark and adopted the impugned mark with full knowledge and once the impugned mark is found to be similar, the defendants cannot rely on the user made after knowledge of the plaintiff's mark. It is the defendant's case that they adopted the mark after full enquiry. Thus the defendants adopted the mark with full knowledge of the plaintiff's mark and therefore cannot raise any plea in equity. This view gains support from the decision of the Division Bench of this Court in Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. reported in 2002 (24) PTC 226 (BOM) (DB) . The relevant observations contained in paragraphs 9 and 11 of the said decision are reproduced hereunder:- "9. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, Learned Counsel appearing for the Respondent cites a judgement of the Supreme Court in Power Control Appliances and others v.Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448 wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v.Electirx and quoted a passage therefrom in Paragraph 34 of its judgement. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgement in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgement in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgement indicates that in a situation where the Defendant to an action has been using the mark, even if concurrently, even if making himself aware of the fact as to whether the same mark is the subject matter of registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently as much as he has not taken the elementary precaution of making himself aware by looking at the public record of the Registrar as to whether the mark in question is the property of another. If however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark then he runs the risk of the registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgement shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the Defendant or atleast to have lulled him into a false sense of security to continue to use the trademark in the belief of he was the monarch of all he surveyed. In our judgement, such are not the circumstances here. We are not satisfied from the records that a search was taken of the Registry by the Appellant to assure itself that there was no other person who owned the mark MICRODINE. Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way we do not think that the defence can succeed, at this stage at least." "11. Finally, that brings us to the question of balance of convenience. Even on balance of convenience, we are of the view that the Learned Single Judge is right. Either way we do not think that the defence can succeed, at this stage at least." "11. Finally, that brings us to the question of balance of convenience. Even on balance of convenience, we are of the view that the Learned Single Judge is right. The damage caused to the goodwill of the proprietor of a trade mark may be intangible and not computable in terms of money, but has long term effect of devaluing the trade mark itself which is the property of the registered proprietor.Another person, who consciously and without taking the necessary steps to assure himself of existence of such mark, uses it and invest money therein, does not obviously have the balance of convenience in his favour. At any rate, at this stage at least we are satisfied that the Judgement of the Learned Single Judge cannot be faulted on the ground of balance of convenience also............." 34. In the decision of Poddar Tyres Limited v. Bedrock Sales Corporation Limited. (supra) the learned Single Judge of this Court has relied on the following observations of the Division Bench of this Court in Express Bottlers Services Pvt.Ltd. v. Pepsico Inc. (Appeal No.436 of 1989 in Notice of Motion No.1920 of 1988 in Suit No.2903 of 1986) decided on 8th February 1991 which reads thus:- "Since, however, it was stated on behalf of the defendant that Kurdukar, J., was in error in declining to consider balance of convenience, we shall touch upon that aspect, though we must make it clear that, in our view, it is only in unusual circumstances that the balance of convenience should play a part in a matter where the plaintiff is the owner of a registered trade mark." (emphasis added) The learned Single Judge after referring to the above observations of the Division Bench held as follows:- "It is obvious that, in the present case there are no such 'unusual circumstances' which would impel the Court to go into the question of balance of convenience in the teeth of the fact that the plaintiffs are the registered proprietors of the trade mark." 35. A Division Bench of this Court in Schering Corporation & v. Kilitch Co. (Pharma) Pvt. Ltd. (1994-IPLR-1) has relied on the observations of the learned Single Judge of the Delhi High Court in Hindustan Pencils Pvt.Ltd. v. India Stationery Products Co. A Division Bench of this Court in Schering Corporation & v. Kilitch Co. (Pharma) Pvt. Ltd. (1994-IPLR-1) has relied on the observations of the learned Single Judge of the Delhi High Court in Hindustan Pencils Pvt.Ltd. v. India Stationery Products Co. and another (AIR-1990-Delhi-19) paragraph 39 of which reads thus: "39. ... ... ... Any infringer who uses or adopts some one else's mark must be aware of the consequences which may follow. The defendants run the risk in using a mark which belonged to some one else. It continued its business uninterruptedly for a number of years before any action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the plaintiff having been filed against it in the year 1985 for cancellation of registration of the copyright. The defendant should have been warned at that stage, that the plaintiff is not likely to accept the user of its mark by the defendant. If the defendant continued to do business by using the impugned mark, it did so at its own peril. The continued user cannot be set up as a defence under these circumstances." 41. The law in this regard is settled by the Apex Court also in the case of Midas Hygiene Industries (P) Ltd. & Anr. v. Sudhir Bhatia and Ors. (Supra)where it is observed as under: "5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest." 42. The judgment in the case of Ansari Bilal Ahmadlal Mohd v Shafeeque Ahmed Mohammed Sayeed (Supra) cited by the Defendant does not assist the case of the Defendant. In fact, in the said case the injunction granted by the Learned Single Judge was upheld by the Division Bench. The said judgment in fact supports the case of the Plaintiff. 43. In view of the above, I am of the opinion that Notice of Motion is liable to be made absolute in terms of prayer clauses a(ii) and a(iii) which read as under: ii. The said judgment in fact supports the case of the Plaintiff. 43. In view of the above, I am of the opinion that Notice of Motion is liable to be made absolute in terms of prayer clauses a(ii) and a(iii) which read as under: ii. Pending the hearing and final disposal of the Suit, this Hon'ble Court be pleased to restrain the Defendant and/or its servants and/or its agents and/or any person claiming through and/or under the Defendant by an order and injunction from infringing the Plaintiff's registered trademark "Classic Steel" (Label) bearing No. 1467897 by the use of the mark/label "5-Classic Care" and/or the trading name "M/s. 5-Classic Care Corporation" and/or any other mark which is identical and/or deceptively similar to the Plaintiff registered trademark; iii. Pending the hearing and final disposal of the Suit, this Hon'ble Court be pleased to restrain the Defendant and/or its servants and/or its agents and/or any person claiming through and/or under the Defendant by an order and injunction from infringing the Plaintiff's copyright mark/label bearing registration certificate No. A-103513/2013 at Exhibit "H" by the use of the impugned mark/label "5-Classic Care" and/or the trading name "M/s. 5-Classic Care Corporation" and/or any other mark which is identical and/or deceptively similar to the Plaintiff registered Copyright mark;" 44. In addition, pending the hearing and final disposal of the suit the Defendant and its servants, and/or its agents, and/or any person claiming through and/or are restrained by an order of injunction from passing off their products as and for that of the Plaintiff by the use of the "5-Classic Care" label and/or any other mark identical and/or deceptively similar to the Plaintiff's marks, and from trading in the name of "M/s. 5-Classic Care Corporation". 45. The above Notice of Motion is accordingly disposed off. The Defendant to pay costs of the Notice of Motion to the Plaintiff.