JUDGMENT : Soumen Sen, J. 1. The advent of summer with mercury rising and unusual heat wave notwithstanding nor’wester Ice cream makes its demand inevitable and with Kwality ice cream which has gained immense popularity over a period of time it is only natural that right over the trademark Kwality in one day or the other would become a contentious matter with all the stakeholders likely to claim as far as they could go to establish its right over the others in relation to the said brand name. 2. The instant suit is the outcome of a rivalry between the plaintiffs and the defendant in relation to the trademark Kwality. The plaintiff no. 1 is not the original owner of the trademark. The plaintiff no. 1 claims to an assignee of Kwality trademark from the original proprietor. The plaintiff no. 2 and its predecessors are claiming to have been using the trademark Kwality since 1995 under a licence granted by the plaintiff no. 1 and its predecessors and/or manufacturing and/or trading in a wide varieties of goods including ice cream/frozen desert. The petitioner has given narration of events and devolution of the trademark Kwality upon the petitioners. A detailed discussion on the devolution of the trademark upon the petitioners is not necessary at this stage, save and except that it has been acknowledged that Ghai and Lambas were the persons who conceived the mark Kwality and with the growth of business and the popularity gained over companies were incorporated and they have arranged their business amongst them with special emphasis on territories and they have accordingly re-arranged their business. It is stated that between 1982 and 1984 the shareholders of Kwality Frozen Foods Pvt. Ltd. agreed to bifurcate the business of the company into four territories and Kwality Ice Cream India Ltd. Calcutta became the proprietor of the original trademark nos. 178269, 255297 and 255298 since renumbered as 435334, 435335 and 435336 after bifurcation in respect of ice cream, ice cream on stick for eastern region. 3. 178269, 255297 and 255298 since renumbered as 435334, 435335 and 435336 after bifurcation in respect of ice cream, ice cream on stick for eastern region. 3. The petitioners contend that under the Strategic Alliance Agreement it was agreed that use of the Kwality/sub-zero name in the corporate name shall be subject to the condition that Kwality Dairy India Limited which was a subsidiary of Kwality Ice Creams (India) Limited and described in the Strategic Alliance Agreement as K. (East) shall at all times hold 1/3rd of the voting capital in companies 1 and 2 and 1/6th of such capital in companies 3 and 4 which includes Kwality Dairy India Limited and since K. (East) is no more holding 1/6th of share capital in Kwality Dairy India Limited since 2002-2003, the use of Kwality/sub-zero name in the corporate name by the defendant is unauthorized. The petitioner has made a further reference to deed of assignment of Kwality trademark between K. (East) and Digital Securities Private Limited to show that in the recital it has been specifically mentioned that on a consideration of Rs. 3 crores, K. (East) has assigned and transferred to digital their right, title, claim and interest benefit, goodwill in relation to the said trademark as fully recorded in the schedules in favour of Digital being the predecessors in interest of plaintiff no. 1. 4. On 2nd June, 1995, Kwality Ice Creams (India) Ltd. and Brooke Bond Lipton India Ltd. entered into a Strategic Alliance Agreement dated 2nd June, 1995 by which Kwality Ice Creams (India) Ltd. inter-alia, agreed to assign to Digital Securities Pvt. Ltd. the Kwality trade marks with logo, signs and designs set out in Appendix 1 to the Deed of Assignment of Trade Marks. 5. Prior to 2nd June, 1995 the respondent’s business in milk and dairy products was “b2b” business that is they were supplying/selling one or more of the said goods only to business houses as an ingredient used to manufacture and end product. For example, the respondent was selling milk/milk powder to the said Kwality Ice Cream (India) Ltd. for making ice cream. For example, the respondent was selling milk/milk powder to the said Kwality Ice Cream (India) Ltd. for making ice cream. Pradeep Wig and Neera Wig who executed the said Strategic Alliance Agreement dated 2nd June, 1995 for and on behalf of the said Kwality Ice Creams (India) Ltd. were also the Directors and shareholders of the respondent company and the respondent company was then a subsidiary of the said Kwality Ice Creams (India) Pvt. Ltd. On 2nd June, 1995, Kwality Ice Creams (India) Ltd. assigned and transferred to the said Digital Securities Pvt. Ltd. its entire right, title, claim, interest, benefit, goodwill in or to the trade marks Kwality. The said trade marks included the trade marks registered in India under registration nos. 435234, 435335, 435336 and 300824 all in Class 30 in respect of ice cream and the trade marks registered in Nepal and Bangladesh. On 1st March, 2013, the Bombay High Court allowed the amalgamation of Digital Securities Pvt. Ltd. of the petitioner No. 1. Thereafter pursuant to a request on Form TM-24 made by the petitioner No. 1 and Orders passed by the Registrar of Trade Marks thereon, the name of the petitioner No. 1 was entered in the Register of Trade Marks as the subsequent proprietor, inter-alia, of the aforesaid Registered Trade Mark Nos. 178269, 255298, 255297, 300824, 435334, 435335, 435336, 435340, 435341, 435342, 435338, 435339, 338502, 338503 and 337765 all in Class 30. 6. Between January, 1995 and March, 1997, Brooke Bond Lipton India Ltd. as a Licensee of Digital Securities Pvt. Ltd. continuously and extensively used in respect of ice cream/frozen dessert the aforesaid Kwality trade mark along with the trade mark Walls of Unilever Plc, the holding company of the petitioner No. 1, under supervision of Digital Securities Pvt. Ltd. Since March, 1997, the petitioner No. 2 as a licensee of the Digital Securities Pvt. Ltd. and later of the petitioner No. 1, has been continuously and extensively using the said Kwality-Walls trade mark in respect of the ice cream/frozen desserts, under supervision of the petitioner No. 1. The petitioner No. 2 claimed that due to continuous and extensive use of the trade mark Kwality-Walls ever since 1995 in respect of ice cream/ frozen dessert, large sales of the said goods bearing the said trade mark, wide publicity given to the said goods bearing the said trade mark and superior quality and taste of the said goods, the trade mark Kwality-Walls and the said goods bearing the said trade mark have acquired wide, immense enviable reputation and goodwill. The petitioners claimed that the said goods bearing the said trade mark are so widely and immensely popular that any use of the trade mark Kwality, which is the leading and essential feature of the petitioner’s said trade mark in respect of same or similar goods is bound to mislead the consumers to believe that the other goods bearing the trade mark Kwality are originating of petitioners or are in some way associated with the petitioners. 7. The petitioners and their predecessors have been vigilant in protecting their right to the exclusive use of the trade mark Kwality and in the past they have successfully stopped others from using the trade mark Kwality. 8. On January, 2016, the petitioners came to learn from an article published in The Economic Times dated 4th January, 2016 that one Gravis Holdings Pvt. Ltd. (formerly known as Kwality Frozen Foods Pvt. Ltd.) and another have filed a suit in the Delhi High Court against P.L. Lamba, Sunil Lamba and the respondent prayed inter-alia for a decree of declaration that the Copyright Agreement dated 24th August, 2015 between P.L. Lamba and Sunil Lamba is null and void. 9. The petitioners contend that the petitioners intervened at the Delhi High Court proceeding after they became aware of unauthorized using of the trademark Kwality by the defendant. 10. It is further submitted that the respondent was using until recently the trade name Dairy Best and has recently switched over to Kwality with a view to create confusion in the mind of the public. On the aforesaid basis, the petitioner prays for an order of injunction restraining the defendant company from using the trademark Kwality. 11. Mr. Ranjan Bachawat, learned senior advocate led by Mr. Jayanta Kumar Mitra, Senior Advocate representing the respondent submits that the respondent was incorporated in the year 1980 and they are no way connected with the plaintiffs. On the aforesaid basis, the petitioner prays for an order of injunction restraining the defendant company from using the trademark Kwality. 11. Mr. Ranjan Bachawat, learned senior advocate led by Mr. Jayanta Kumar Mitra, Senior Advocate representing the respondent submits that the respondent was incorporated in the year 1980 and they are no way connected with the plaintiffs. They have been using the mark Kwality in relation to dairy products since long without any interruption. The petitioners have been using the word Kwality as its corporate name openly since 1980. The defendant is not a party to the Strategic Alliance Agreement or the Deed of Assignment. The said agreement cannot affect the right of the defendant to use the word Kwality. The respondent has independent right. The plaintiffs were aware of the fact that the defendant was using the word Kwality at least since 2002. They unsuccessfully intervened in the Delhi proceeding which was filed by the defendant in relation to the use of iconic Kwality. The suit has since been withdrawn. At least for the last three years, the plaintiffs did not feel it necessary to question the right of the defendant to use the said mark which the plaintiffs have been using for at least 30 years. Mr. Bachawat has produced two documents of registration of the mark KDIL’s Kwality in class-29 dated 1st April, 2016 and 22nd September, 2016. Mr. Bachawat submits that the email dated 2nd December, 2017 was in relation to key design principle framework and the said correspondence between the parties would not show that at any point of time the petitioners have come up with its claim over the use of word Kwality as it corporate name. The said email has to be read and understood in the context of using the original writing style of Kwality. 12. Prima-facie it appears that the respondent is using the word Kwality in relation to its business name for at least 20 years. The petitioner is a registered proprietor of the KDIL’S Kwality in Class-29 in respect of milk and milk products. The respondent is also the registered owner of the device mark of KDIL’S Kwality as shown in the registration certificate dated 1st April, 2016. The marks have been in use for the last two years. 13. The petitioner is a registered proprietor of the KDIL’S Kwality in Class-29 in respect of milk and milk products. The respondent is also the registered owner of the device mark of KDIL’S Kwality as shown in the registration certificate dated 1st April, 2016. The marks have been in use for the last two years. 13. However it appears that there was discussion between the parties with regard to the writing style of Kwality in relation to its products and in its communication dated 2nd December, 2017 the defendant has offered the following: “1. Kwality Limited (Kwality) will not use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDIL’S Kwality. 2. Kwality will not get into Ice cream, Ice lollies and frozen desert categories with KDIL’S Kwality brand and HUL will not get into Dairy category with Kwality brand. 3. Kwality will make an annual payment of Rs. <x> with increase of <x%> afterevery <x> year period till 30 year period post which the annual amount will remain flat till perpetuity.” 14. The said communication shows that the plaintiff had raised its reservation with regard to the use of the original writing style of Kwality being used for products of the defendant as also with regard to the category of the products to which it should apply. On such consideration, the defendant had agreed not to use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDIL’S Kwality and further agreed not to get into Ice cream, Ice lollies and frozen desert categories with Kwality brand. The defendant, however, wanted the plaintiff not to get into dairy category with Kwality brand presumably since the defendant was in dairy category with its trade names. The defendant has also agreed to make annual payment with increase periodically for a period of 30 years beyond which the annual amount would remain flat for perpetuity. The grievance of the plaintiff appear to be that after December, 2017 the defendant did not make any effort to implement the said agreement and indicate the amount the defendant agreed to pay annually as also the percentage by which it would increase after certain period of time. 15. The grievance of the plaintiff appear to be that after December, 2017 the defendant did not make any effort to implement the said agreement and indicate the amount the defendant agreed to pay annually as also the percentage by which it would increase after certain period of time. 15. The defendant is not disputing the said agreement but wanted the court to read the said agreement with other matters which the defendant wants to bring on record by way of an affidavit. On a reading of the said email, prima facie, it appears that the defendant had agreed two things, firstly, not to use the original writing style of Kwality for any of its products and secondly, not to get into ice cream and frozen desert categories with KDIL’S Kwality brand. The defendant cannot wriggle out of its commitment. This email apart from anything else at least shows some superior right of the plaintiff in relation to the use of the word mark Kwality in relation to the categories mentioned in the said email. 16. Considering the fact that the defendant has been using the word Kwality in conjunction with other words and was incorporated much before the dispute arose with no objection from the plaintiffs or any of them for using the word Kwality as a part of its corporate name and an order of injunction at this stage would cause irreparable prejudice to the defendant compared to that of the plaintiff if not granted at this stage, the following interim order is passed: (a) Kwality Limited (Kwality) will not use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDIL’S Kwality. (b) Kwality will not get into Ice cream, Ice lollies and frozen desert categories with KDIL’S Kwality brand. 17. In addition to the aforesaid the defendant shall deposit with the Registrar, High Court, Original Side a sum of Rs. 1 crore by Friday as a condition precedent for using their impugned mark appearing at the petition, failing which there shall be an order of injunction restraining them from using the said mark. The Registrar, High Court, Original Side shall invest the said amount in a suitable fixed deposit account with a nationalised bank and shall keep the said amount renewed from time to time until the disposal of this application. 18. The Registrar, High Court, Original Side shall invest the said amount in a suitable fixed deposit account with a nationalised bank and shall keep the said amount renewed from time to time until the disposal of this application. 18. The respondent shall also maintain a separate account in relation to the sale of products under the KDIL’S Kwality brand and shall file quarterly accounts from December, 2017 with the Registrar, High Court, Original Side upon intimation to the advocate on record of the plaintiffs until further orders. 19. Affidavit-in-opposition shall be filed on 22nd June, 2018. Affidavit-in-reply thereto, if any, shall be filed on 6th July, 2018. The matter shall appear in the list under the heading ‘Motion Adjourned’ on 16th July, 2018.