JUDGMENT : [N.V. ANJARIA, J.] 1. Both these Appeals from Order preferred by the original defendants, arise from common order dated 17.0.2022 passed by learned 6th Additional District Judge, Commercial Court, Mehsana, below application exhibit 5 read with exhibit 5(A) in Trademark Suit No. 1 of 2021. The Appeals from Order were heard together and are treated for disposal by this common judgment. 1.2 By impugned order, the Commercial Court below granted injunction against the defendants-appellants herein restraining them from using trademark ‘Apollo’ or any identical or deceptively similar trademark for manufacturing, marketing, promoting, etc., the goods of the plaintiff as mentioned in paragraph 21 of the application and thereby restraining the defendants from infringing plaintiff's trademark ‘Apollo’. 1.2.1 Injunction was granted against the defendants-appellants also in respect of using the said trademark "Apollo" in respect of the goods in question, thereby, restraining them from committing the act of passing off by misrepresenting and causing deception amongst the purchasers and traders. 2. The appellants of Appeal from Order No. 51 of 2022 are Apollo Infratech Pvt. Ltd. and Patel Ajitkumar Tribhovandas (HUF)-original defendants no. 2 and 3 respectively. The appellant of the other Appeal from Order is Apollo Parker Construction Equipment Pvt. Ltd.-original defendant no.1. Reference of the parties in this judgment is as per their original status in the Suit-Exhibit 5 proceedings. Parties to the Suit 3. The plaintiff-respondent no.1 herein, is Ammann India Pvt. Ltd., a company registered under the Companies Act, 1956, on 16.02.1997. The plaintiff company changed its name to Apollo construction Equipment Pvt. Ltd on 06.01.2011, thereafter, became Ammann Apollo India Ltd. on 24.03.2013. It changed its name as Ammann Apollo India Pvt. Ltd. on 09.06.2013 and finally became Ammann India Pvt. Ltd. since 10.01.2017. 3.1 Defendant no.1 Apollo Parker Construction Equipment Pvt. Ltd., is also a private limited company engaged in the business of manufacturing of road construction equipment under the disputed trademark "Apollo". Defendant no.2-Apollo Infratech Pvt. Ltd. is a sister concern. The Promoters and Directors of both the said defendants are the same. Defendant no.3 is an HUF represented by Ajitkumar Patel who is Karta and owner of the trademark "Apollo". Said Ajitkumar Director of defendants no.1 and 2 companies has permitted them to use its trademark. Basic Facts About Registration 3.2 The plaintiff is registered proprietor of trade mark ‘Apollo’ under trade mark no. Defendant no.3 is an HUF represented by Ajitkumar Patel who is Karta and owner of the trademark "Apollo". Said Ajitkumar Director of defendants no.1 and 2 companies has permitted them to use its trademark. Basic Facts About Registration 3.2 The plaintiff is registered proprietor of trade mark ‘Apollo’ under trade mark no. 1598383 in class 7 registered since 06.09.2007 claiming use from 07.10.1986 in respect of 'construction, road construction machinery for maintenance equipment, earth moving machinery, asphalt paver finisher, drum type & batch type asphalt mixing, plants, soil stabilization plants, cold mixing plants, bitumen pressure distributors, kerb laying machines, compaction equipment, crushing & screening equipment, mobile construction equipment'. The said trade mark was assigned to plaintiff by Gujarat Apollo Industries Limited under Deed of Assignment dated 09.04.2013. 3.2.1 Defendant No.2 was the original registered proprietor of trade mark APOLLO under Trade Mark No.1698844 in Class 7 registered since 13.06.2008 claiming use from 18.04.2008 in respect of 'all type of construction machinery and construction equipment in relation to road and building construction included in class 7', which registered trade mark, by virtue of a Deed of Assignment dated 04.05.2013 came to be assigned in favour of defendant No.3. The registration of both the trade marks are in respect of all types of construction machinery in Class-7. 3.2.2 The aforesaid trade mark was not renewed as a result of which it was removed from the Register of Trade Marks upon expiry of 10 years from 13.06.2008. Application to register the said trade mark was opposed by Gujarat Apollo Industries Limited, the predecessor of the plaintiff; however, the said opposition was unconditionally withdrawn by Letters dated 10.04.2010 and 25.01.2011. The trade mark was registered in favour of Defendant No.2. 3.2.3 On 02.03.2020, appellant no.2, Ajitkumar by application no.4460435 applied for registration trade mark ‘Apollo’ in class 7 claiming use from 18.04.2008 in respect of 'construction machinery and construction equipment in relation to road and building construction', and succeeded in getting it registered without any opposition. 3.2.4 The plaintiff filed a rectification application dated 12.01.2021 under section 57 of the trade marks act, 1999, against trade mark ‘Apollo’ registered as trade mark no.4460435 in favour of defendant No.3 seeking cancellation of the said trade mark and also for seeking imposition of condition or limitation restricting defendant no.3 from claiming statutory rights over asphalt based construction machineries. The said rectification application is still pending. The said rectification application is still pending. Case of the Plaintiff 3.3 The suit was instituted by the plaintiff- respondent No.1 herein- Amman India Private Limited for infringement of trade mark and passing off with seeking of damages and accounts of profit under Sections 27, 28, 134, 135 of the Trade Marks Act, 1999. In the said suit application Exhibit 5 under Order XXXIX, Rule 1,2 of the Code of Civil Procedure, 1908 came to be filed seeking to injunct the defendants from infringing and from committing the act of passing off using trade mark ‘Apollo’ or any identical or deceptively trade mark in relation to the goods, that is, Asphalt based construction machines, culminating into the impugned order. Amended Exhibit 5 became Exhibit 5(A). 3.3.1 The principal prayers made in the suit were to restrain defendants and their agents by way of permanent injunction from using, etc., the trademark Apollo, from manufacturing, marketing, promoting, etc. the goods mentioned in paragraph 21 of the plaint to restraining the defendants from infringing the plaintiff's trademark. Second prayer was to permanently injunct defendants from using the trademark and restrain them from committing the act of passing off by misrepresentation to the traders and distributors. The third prayer was to direct the defendants to destroy sales and promotional materials containing the word "Apollo". It was further prayed to direct the defendants to pay jointly and severally damages to the tune of Rs.60 crores to the plaintiff for loss of business and reputation with 18% interest, and also to render the accounts of profit. 3.3.2 In the plaint as well as in injunction application, the plaintiff stated that it was one of the units of Ammann group and leading supplier of mixing plants and machines to the construction industry, claiming international reach. It was averred that there were 20 group of companies and as per the Memorandum of Understanding reached, the plaintiff company was engaged in the business of construction machinery for the entire product range of asphalt plants, asphalt pavers, etc. using trademark 'Apollo'. It was stated that the plaintiff Company along with its foreign based subsidiaries entered into a joint venture agreement dated 19.12.2012 whereunder, the companies decided to start the business of construction machineries and mutually decided to use the trademark 'Apollo' as the trade name in the said joint venture business. using trademark 'Apollo'. It was stated that the plaintiff Company along with its foreign based subsidiaries entered into a joint venture agreement dated 19.12.2012 whereunder, the companies decided to start the business of construction machineries and mutually decided to use the trademark 'Apollo' as the trade name in the said joint venture business. For the said trade mark, it was stated, the registration rights were vested with Gujarat Apollo Industries Pvt. Ltd. whose promoter and directors were of the family of Mr. Anil Patel. 3.3.3 The trademark 'Apollo' was registered by registration No.1598383 in class 7 of the NICE classification of goods and services. It was claimed further that the use of the trademark was since 1986 for the kind of goods including specific asphalt based construction goods. It was further the case that two branches of family, that is, Ajit Patel family and Anil Patel family entered into a non-compete agreement dated 01.08.2011. Thereunder, it was mutually agreed between the families that Mr. Anil Patel's family shall be dealing in the business of asphalt mixing plants, paver finishers, etc., whereas Mr. Ajit Patel's family would conduct the business of concrete batch plants, concrete road paver, etc. 3.3.4 The plaintiff purchased the registered trademark Apollo owned by Gujarat Apollo Industries Ltd., a company run by Mr. Anil Patel's family in the year 2013 and the assignment deed dated 09.04.2013 was executed. It was further the case that in view of the aforesaid joint venture entered into by Anil Patel group in form of the plaintiff company, the plaintiff entered into the product line. The assignment deed dated 09.04.2013 between plaintiff and Gujarat Apollo Industries Ltd., came to be amended in March 2016. The plaintiff company thereby allowed Gujarat Apollo Industries Ltd and Apollo Earth Movers Ltd. to use the word ‘Apollo’ for ongoing products. 3.3.5 The plaintiff company claimed that it was prior adopter and user of the trademark Apollo since the year 1986, and that, the defendant companies were aware about it. It was alleged that the defendants with knowledge and with malafide intentions, recently entered into identical business of Asphalt based construction machineries under the identical trademark 'Apollo' and that the said act on the part of the defendants tantamount to infringement of registered trademark of the plaintiff. It was alleged that the defendants with knowledge and with malafide intentions, recently entered into identical business of Asphalt based construction machineries under the identical trademark 'Apollo' and that the said act on the part of the defendants tantamount to infringement of registered trademark of the plaintiff. The plaintiff stated that it came across certain promotional advertising materials by the defendant that the defendant had been showcasing Apollo based construction machineries under the trademark Apollo which gave rise to cause of action to institute the suit. According to the plaintiff, the defendant no.1 company Apollo Parker Construction Equipment Ltd. was recent entrant in the market for the goods. 3.3.6 The trademark 'Apollo' used by the defendant companies stands in the name of Patel Ajitkumar Tribhovandas (HUF) - defendant no.3. As per the status of the Trademark Application No.16988144 for devise mark 'Apollo', it showed that said Patel Ajitkumar did not renew the trademark. Ajitkumar applied for registration of 'Apollo' by Application No. 4460435 on 02.03.2020 for broad class of goods like road and building construction machineries, wrongly associated the said application with Application No. 16988144, yet the same Application was accepted and the trademark was registered. It was the case that plaintiff is entitled to enjoy the exclusive right by virtue of registration No.1598383 in class 7. 3.3.7 It was alleged that the defendants had been using deceptively similar trademark ‘Apollo’ to market the product and that they had been eating up the goodwill and reputation of the plaintiff. It was prayed that the defendants were required to be permanently restrained from infringing the trademark as well as from committing the acts of passing off. It was averred that "defendants apart from using the word "Apollo" as trade name, are also using the label/device mark Apollo on its product, advertisement, brochures, etc. though they are not the owner of the said trademark". Stand of the Defendants 3.4 Defendant No.1, Apollo Parker in its written statement at Exhibit 46 denied the case of the plaintiff and claimed that the plaintiff was prior user of the device mark Apollo. though they are not the owner of the said trademark". Stand of the Defendants 3.4 Defendant No.1, Apollo Parker in its written statement at Exhibit 46 denied the case of the plaintiff and claimed that the plaintiff was prior user of the device mark Apollo. It was contended that the plaintiff suppressed the material fact that defendant No.1 had changed its name in December 2020 as Apollo Parker Construction Equipment Ltd. and that the said company was new company incorporated in December 2020, has not started any business activity and not used the said device mark in any sales. According to defendant no.1, the registration of the plaintiff was for device mark 'Apollo' and not for the word mark ‘Apollo’. The device mark was comprised of several matters and was registered as a whole. It was claimed that plaintiff's mark 'Apollo' was totally different from the impugned mark and that it was not deceptive. 3.4.1 It was contended that the mark 'Apollo' is in use by several persons other than defendants and multiple parties are registered with the word 'Apollo' in their marks with regard to class 7 goods even prior to plaintiff's adoption of the said mark. Producing list of registered proprietors of trademark 'Apollo' in respect of the same Class 7 and the names of other parties using the word 'Apollo' in respect of their machineries, it was contended further that against those parties, the plaintiff did not take any action. 3.5 Defendants no.2 and 3-appellants of Appeal from Order No. 51 of 2022 in their written statement at Exhibit 48 also disputed that the plaintiff had been using the device mark Apollo since several years or that it was the first adopter or user. It was contended that plaintiff had not produced Legal Proceedings Certificate evidencing its registration which was a prerequisite. It was pointed out that plaintiff did not disclose that its predecessor Gujarat Apollo Industries Ltd. had filed a notice of opposition in March 2010 against the Application No. 1698844 in registration of trade mark Apollo for all types of construction machineries and construction equipment in relation to road and building construction in Class 7, which opposition was subsequently withdrawn unconditionally as per letter dated 10.04.2010 and 25.02.2011 and that the notice of opposition was consequently dismissed by the Registrar. 3.5.1 Defendants Nos.2 and 3 stated that the trademark No. 1698844 was assigned by defendant no.2 in favour of defendant no.3 as per Deed of Assignment dated 04.05.2013. The said registration got expired on 13.08.2018 and inadvertently, could not be renewed by defendant no.3 at the relevant time. As a result, it was removed, however, before notifying of the same, Application dated 02.03.2020 was filed by defendant no.3 and the same mark ‘Apollo’ was registered as per Application No.4460435 and was published in the trademarks journal on 29.06.2020. These defendants submitted that plaintiff had allowed the third parties to use the registered trademark ‘Apollo’ with different logo for similar business thereby did not raise any objection by using the trademark ‘Apollo’ by anyone with different logo. 3.5.2 The defendants contended that promoter of defendant no.2 and Karta of defendant no.3 Mr. Ajit Patel originally started business of manufacturing and trading various machineries including road construction asphalt based machineries as back as in the year 1971-72 in the name of partnership firm M/s. Apollo Engineering Company under the Partnership Deed executed on 17.09.1976 made effective from 04.11.1975. 3.5.3 It was contended that said Mr. Ajit Patel was shareholder with large stakes and was also director in the companies such as Apollo Industries Pvt. Ltd. incorporated in the year 1973 and Apollo Earth Movers Pvt. Ltd. incorporated in the year 1980. It was stated that subsequently, Mr. Ajit Patel sold his stake from time to time in those companies and defendant no.2 Apollo Infra Tech Pvt. Ltd. was incorporated for manufacturing various construction related machineries in the brand Apollo wherein defendant no.3 were major shareholders. 3.5.4 It was contended that the term ‘Apollo’ was used for the asphalt based business since 1971-72 by Mr. Ajit Patel and that the defendant has been using the trademark Apollo having been recognised since the year 2008 as per its registration for construction machinery. It was averred that the impugned mark of the defendants became popular amongst the traders and customers and business of defendants witnessed significant growth. It was contended that the trademark ‘Apollo’ of the defendant was used independently, which established the reputation and that it was a distinct trade device than used by the plaintiff. It was contended that defendant no.2 entered into various joint venture agreements with foreign companies and other companies for manufacturing various kinds of construction machines. It was contended that the trademark ‘Apollo’ of the defendant was used independently, which established the reputation and that it was a distinct trade device than used by the plaintiff. It was contended that defendant no.2 entered into various joint venture agreements with foreign companies and other companies for manufacturing various kinds of construction machines. 3.5.6 It was further contended that the plaintiff's device mark 'Apollo' and the impugned device mark 'Apollo' were different and unlikely to cause any confusion or deception amongst the traders and users of the product. It was contended that the impugned device mark had have several distinguishing elements in style presentation and layout which make it distinct from the plaintiff's trademark. It was contended that the right of the plaintiff, if any, by virtue of registration of its mark was limited to the style of representation as depicted in the trademark and not in respect of word Apollo per se. It was contended that the plaintiff acquiesced in the usage of impugned mark for more than a decade. 3.6 The grievance of the plaintiff-respondent no.1 herein is to the use of registered trademark of the appellant no.2 or by either of the appellants herein, in respect of the asphalt based road construction machineries. Submissions of Appellants-Defendants 4. Assailing the order of the commercial court below whereby the injunction came to be granted against the appellants, both in respect of infringement as well as action in passing off, learned senior advocate Mr. Devang Nanavati with learned advocate Ms. Prachiti Shah raised following submissions, (i) Defendants are registered proprietors of their respective trademarks, they have statutory right to use them exclusively. (ii) Both the plaintiff and defendants since are registered proprietors, they deemed to have no rights against one another. They have however equal rights against the third parties, which may be infringing their trademarks. Section 28(3) of the Trademarks Act, 1999 (hereinafter referred to as the ‘The Act’) was relied on. (iii) The plaintiff-respondent No.1 cannot be said to have acquired against appellants, the exclusive rights to use the trademark ‘Apollo’ for asphalt based constructions materials in view of Section 28(3) since the trademark is registered in the same class for same class of machineries. (iii) The plaintiff-respondent No.1 cannot be said to have acquired against appellants, the exclusive rights to use the trademark ‘Apollo’ for asphalt based constructions materials in view of Section 28(3) since the trademark is registered in the same class for same class of machineries. (iv) The trademark of the plaintiff cannot be said to have been infringed in view of section 30(2)(e) of the Act as the use of the trademark of the appellants is in exercise of right to use registered trademark. (v) The plaintiff has no statutory right to maintain infringement action against appellant no.2 in view of section 28(3) read with section 29(1) and section 29(2) and section 30(2) (e) of the Act. (vi) Defendants' trademark is registered, hence it is prima facie valid. (vii) Since both appellant as well as respondents are registered proprietors, they both are entitled to use their mark in the goods and services of which they are registered and no injunction could be granted against statutory use of the respective trademarks. It is not the case that defendants' registration of trademark is fraudulent. (viii) The registered trademark of the plaintiff is label mark or device mark and has no exclusivity. Exclusivity cannot be claimed in respect of the word Apollo. What is registered is not the word Apollo. (ix) The two marks are distinct and distinguishable in respect of their style, shapes and designs. (x) The word ‘Apollo’ is a generic term. (xi) There are multiple users of mark Apollo in class 7 itself. Therefore, no statutory rights could be claimed in respect of the said word. 4.1 Calling in question the injunction granted by the Commercial Court below on the ground of passing off, further submissions were made on behalf of the appellants, contending that the following aspects have been either missed or misapplied, (a) There is a distinction between action for infringement and action for passing off. The passing off action is based on prior use and plaintiff shall have to establish on evidence. It has also to be established that the trademark of other side would create confusion vis-a-vis the impugned mark. (b) The defendants had been in business for asphalt equipment since 1971-72. The Court was taken through the corporate history of trademark Apollo as also the details of different companies wherein Mr. Ajit Patel and late Mr. Anil Patel were involved. It has also to be established that the trademark of other side would create confusion vis-a-vis the impugned mark. (b) The defendants had been in business for asphalt equipment since 1971-72. The Court was taken through the corporate history of trademark Apollo as also the details of different companies wherein Mr. Ajit Patel and late Mr. Anil Patel were involved. (c) The impugned mark and the mark of the plaintiff are distinct and there is no likelihood of confusion in recognising the either with their manifest differences. The likelihood of deception in the present case is to be ruled out also because the users of the product are not for general class of consumers. The goods are purchased and used by a specific class of consumers engaged in the business of road construction who are qualified persons. 4.1.1 In support of the submission that injunction could not be granted, and even if to be granted, could be only in rare and exceptional circumstances, the appellants relied on the decision of the Supreme Court in S. Syed Mohideen Vs. P.Sulochana Bai [ (2016) 2 SCC 683 ] by highlighting observations in paragraphs 25 to 33. On the basis of the decision of the Full Bench of Bombay High Court in Lupin Limited Vs. Johnson and Johnson [2014 (0) AIJ- MH169802], it was submitted that an unparalleled high degree of prima facie case ought to exists, which is not the case here, to justify the grant of injunction. 4.1.2 In order to buttress the submission that the class of consumers and the manner of purchase are also relevant factors in deciding likelihood of deception or confusion, decision in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. [(2001) 5 SCC 3], was relied on for observations in paragraph 35 thereof. Another decision also of the Supreme Court in Khodey Distillers Ltd. vs. Scotch Whiskey Association & Ors. [ (2008) 10 SCC 723 ], and further was pressed into service decision of Reliance Industries vs. Concord Enviro Systems Pvt. Ltd. [(2016) SCC Online Bom. 4557]. 4.1.3 Learned senior advocate next submitted that the plaintiff was guilty of suppressio veri and suggestio falsi by pointing out that opposition to the registration of mark ‘Apollo’ pursuant to application No.1698844 was withdrawn by the plaintiff, whereby the registration was applied for for all types of construction machinery in Class 7. 4557]. 4.1.3 Learned senior advocate next submitted that the plaintiff was guilty of suppressio veri and suggestio falsi by pointing out that opposition to the registration of mark ‘Apollo’ pursuant to application No.1698844 was withdrawn by the plaintiff, whereby the registration was applied for for all types of construction machinery in Class 7. The second material aspect, not disclosed, it was submitted was that Gujarat Apollo Industries Limited assigned trade mark No.1598383 in Class 7 by deed of assignment dated 9.4.2013 wherein other group companies were expressly conferred rights to use the word ‘Apollo’ in combination with logo not identical or deceptively similar to trade mark No.1598383. Submissions of Respondent No.1- the plaintiff's 4.2 Learned senior advocate Mr. Kamal Trivedi and learned senior advocate Mr. R.S. Sanjanwala assisted by learned advocate Mr. Adit Sanjanwala, learned advocate Mr. Jatin Trivedi, learned advocate Mr. Pratik Chaudhary, learned advocate Mr. Akshat Shah appearing on behalf of the respondent no.1-original plaintiff broadly submitted as under, (i) The plaintiff is registered proprietor of trademark ‘Apollo’ for goods including specific asphalt construction equipment and allied goods in class 7 of NICE classification. It uses its trademark since 07.10.1986. (ii) Plaintiff is entitled in law under Section 28 read with Section 124(5) of the Act, to restrain the defendants from using the identical or similar trademark for identical or similar goods or business. The trademark of the defendants is identical and deceptively similar. (iii) Defendant no.3 claims to be registered proprietor of trademark Apollo at registration no. 4460435 in class 7 which was applied on 02.03.2020 with user claim from 18.04.2008 for the goods-construction machinery and construction equipment in relation to road and building construction. The defendant has no right to use the trademark for the asphalt based construction equipment. (iv) The trademark Apollo registered for the defendant is invalid. The plaintiff has filed rectification application against the mark of the defendants. (v) The defendants have raised defence of section 30(2)(e) of the Act in the written statement, therefore, under section 124(1) read with section 124(5) of the Act, the suit for infringement is maintainable and injunction could be granted against the defendants even though the mark of the defendant is registered trademark. (v) The defendants have raised defence of section 30(2)(e) of the Act in the written statement, therefore, under section 124(1) read with section 124(5) of the Act, the suit for infringement is maintainable and injunction could be granted against the defendants even though the mark of the defendant is registered trademark. (vi) As the trademark of the defendants is deceptively similar and capable of creating confusion amongst the users and traders, as per the various provisions of sections 29(1), 29(2)(c) and 29(3) of the Act, the use of the trademark of the defendant amounts to infringement of the trademark of the plaintiff. The court has to presume that the confusion amongst the public is likely to occur. (vii) The mark of the plaintiff and that of the defendant are identical, that is, 'Apollo'. Both mark would be read and referred to as 'Apollo'. The adoption of word ‘Apollo’ by the defendants is therefore dishonest. (viii) The provisions of sections 29(5), 29(8) and 29(9) were referred to, to submit that using and advertising the goods by the defendants using their trademark is an act of infringement. (ix) The defendants have been using their trademark to pass off the goods of asphalt machines and are required to be restrained from committing the act of passing off. Invoices and advertising material like brochures, have been issued by the defendant in respect of asphalt based goods. (x) The act of passing off is committed also by creation of defendant no.1 company with tradename 'Apollo'. The plaintiff has earned goodwill and reputation by using its trademark. 4.2.1 In support of the various submissions raised above, learned senior advocates for the plaintiff pressed into service the decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceuticals Laboratories [ AIR 1965 SC 980 ] in which the Supreme Court held that where two marks are identical, no further question arise and that the infringement can be said to have been made out. For similar proposition, another decision also of the Supreme Court in Midas Hygienic Vs. Sudhir Bhatia [ 2004(28) PTC 121 (SC)] was relied on. It was next submitted that the Supreme Court in Ruston & Hornsby Ltd. vs. Zamindara Engineering Co. For similar proposition, another decision also of the Supreme Court in Midas Hygienic Vs. Sudhir Bhatia [ 2004(28) PTC 121 (SC)] was relied on. It was next submitted that the Supreme Court in Ruston & Hornsby Ltd. vs. Zamindara Engineering Co. [ (1969) 2 SCC 727 ] held that in an action for infringement, where the defendants trademark is identical with plaintiffs mark, the Court will not inquire whether the infringement is such which is likely to deceive or cause confusion. 4.2.2 Further relied on was the decision of the Supreme Court in Renaissance Hotel Holdings Vs. Vijaya Sai & Ors. [AIR online 2022 SC 44]. The decision of this Court in Rupa & Co. Ltd. vs. Dawnmills Company Ltd [ AIR 1998 Guj. 247 ] and in Vikram Stores vs. S.N. Perfumary and Anr. [ AIR 2008 Guj. 65 ] were referred to for observations in paragraph 42 and 4 respectively. In Rupa & Co. Ltd (supra), this court held that injunction cannot be denied solely on the ground of delay unless conduct of plaintiff leads to inference or acquiescence. In Vikram Stores (supra), the facts were that on the packet of Agarbatti, defendant used lable Rangili similar to size and color of mark Rangoli used by the plaintiff and held that a customer of average intelligence an imperfect recollection would be confused by such similarity between the two labels. 4.2.3 Another decision also of Supreme Court in N.R. Dongre vs. Whirlpool Corporation [ (1996) 5 SCC 714 ] was relied on for canvassing that action against the registered owner of the trademark by the instance of prior user of the same or similar mark is maintainable and that the injunction can be granted even against the owner of the trademark in appropriate case. It was submitted that the defendant's mark was colourable imitation by referring to decision of the Supreme Court in Kaviraj Pandit Durgadutt Sharma (supra). Decision of the Supreme Court in Rustan & Hornsby Ltd.(supra) was referred to, to explain the concepts of infringement and passing off. 4.2.4 Learned senior advocate for the respondent-plaintiff relied on the decision of Lakshmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1 SC], which was a case where plaintiff had been running the business of colour lab and studio in Ahmedabad in the name and style of Muktijivan Colour Lab and Studio. 4.2.4 Learned senior advocate for the respondent-plaintiff relied on the decision of Lakshmikant V. Patel vs. Chetanbhat Shah [2002 (24) PTC 1 SC], which was a case where plaintiff had been running the business of colour lab and studio in Ahmedabad in the name and style of Muktijivan Colour Lab and Studio. This name was adopted by the defendant who was having "Gokul Studio" but intended to commence business through his wife-defendant no.2 by adopting the name and style of Muktijivan Colour Lab and Studio. 4.2.5 With reference to it, for contending that the defendant in the instant case has been committing the act of passing off, learned senior advocate relied on following paragraph 10 to submit that the trading name or style of a person to sells the goods or services acquire reputation and goodwill for its trade name and that the law does not permit anyone to carry on his business in such a way as would pursuade that the the goods or services are somebody else, it is against fairplay and would lead to confusion no matter done fraudulently or otherwise. 4.2.6 With regard to the factors of class of consumers and manner of purchase in deciding the deception and confusion, following decisions were relied on by learned senior counsel for the plaintiff, (i) Avtar Sing & Ors. Vs. Sakshi Srivastava & Anr. [ 2021 (88) PTC 282 Del.], (ii) Prakash Roadline Ltd. vs. Prakash Parcel Service (P) Ltd. [PTC Suppl.(2) 177 (Del)], (iii) Dr. Reddy Laboratories Ltd. vs. Reddy Pharmaceuticals Ltd. [ 2004 (24) PTC 435 (Del.) and (iv) Jagdish Gopal Kamath & Ors. vs. Lime and Chili Hospitality Services [ 2015(62) PTC 23 (Bom)]. Aspects in the Controversy 5. Before proceeding further, certain relevant facts, aspects and events in the backdrop may be recapitulated. In the year 1971-72, Apollo Engineering Company- partnership firm existed in which Mr. Anil Patel and Mr. Ajit Patel both were partners. In 1973, Apollo Industrial Products Private Limited came to be incorporated, wherein both Mr. Anil Patel and Mr. Ajit Patel were shareholders and Directors. Apollo Earthmovers was incorporated wherein also the two were shareholders and Directors. Gujarat Apollo Industries Private Limited was incorporated in the year 1996, which company adopted the word 'Apollo' and claimed use of the said device mark since October, 1996. In this company, both Mr. Anil Patel and Mr. Ajit Patel were Directors. Ajit Patel were shareholders and Directors. Apollo Earthmovers was incorporated wherein also the two were shareholders and Directors. Gujarat Apollo Industries Private Limited was incorporated in the year 1996, which company adopted the word 'Apollo' and claimed use of the said device mark since October, 1996. In this company, both Mr. Anil Patel and Mr. Ajit Patel were Directors. In December, 1997 Everest Pumps Private Limited was incorporated whose name was changed to Apollo Construction Equipment Private Limited. In this company also both Mr. Anil Patel and Mr. Ajit Patel were Directors. The Apollo Infratech Private Limited defendant No.2 on 19.1.2007 was incorporated wherein Mr. Ajit Patel and Mr.Mitul Patel became the Directors. 5.1 The following may be highlighted at the cost of repetition, (a) The promoter of defendant no.2 Company and Karta of defendant no.3 company Mr. Ajit Patel, had started business of manufacturing road construction machinery including asphalt based products as back as in the year 1971-72 along with other partner by through partnership firm known as M/s. Apollo Engineering. (b) The mark ‘Apollo’ was used since then. It was thus originally coined, invented and adopted by said Shri Ajit Patel for the said product. (c) The business was expanded and different companies came into existence which were engaged in the road construction business where the product was same and the trademark was ‘Apollo’. (d) Defendant no.2 Infratech Pvt. Ltd. came to be incorporated on 19.07.2007 to manufacture and market the construction related machinery. Therein Mr. Ajit Patel-defendant no.3 was majority shareholder and the Director. (e) Defendant no.2 had applied in March 2010 for registration of trademark Apollo No. 1698844, which was for the goods "all types of construction machinery and construction equipment in relation to road and building construction included in Class 7". Against this, the predecessor in title of the plaintiff Gujarat Apollo Industries Ltd filed notice of opposition. The opposition was however unconditionally withdrawn and trademark came to be registered in favour of defendant no.2. (f) Defendant no.2 assigned the said trademark No. 1698844 in favour of defendant no.3 by Deed of Assignment dated 04.05.2013. (g) The said registration stood expired on 13.08.2018 as inadvertently it could not be renewed by defendant no.3. On 02.03.2020, defendant no.3 filed fresh application to the Registrar for the same trademark, which was application No.440435. (f) Defendant no.2 assigned the said trademark No. 1698844 in favour of defendant no.3 by Deed of Assignment dated 04.05.2013. (g) The said registration stood expired on 13.08.2018 as inadvertently it could not be renewed by defendant no.3. On 02.03.2020, defendant no.3 filed fresh application to the Registrar for the same trademark, which was application No.440435. The said application was filed before actual removal of the trademark in the trademark journal. (h) In that application, defendant no.3 claimed rights since 18.04.2008 in respect of same class of products, namely, the construction machinery and construction equipment in relation to road and building construction. (i) The aforementioned application was accepted by the Registrar of trademark and came to be published in trademark's journal at page no. 11953 on 29.06.2020. (j) In respect of the said application No.4460435 also, objections were invited, but nobody, even the plaintiff filed any opposition against the said registration, which was eventually granted and the trademark was registered granting rights since 18.04.2008. Legal Proceedings Certificate was issued. (k) Though it was the case of the plaintiff that plaintiff's mark ‘Apollo’ was assigned to Apollo Construction Equipment Ltd., but the Deed of Assignment was not produced, the defendant could secure the Assignment Deed dated 09.04.2013 in the trademark register. From the said Assignment Deed, it was learnt that the plaintiff had allowed third parties to use and register the trademark "Apollo" with different logo for similar business and that the plaintiff did not raise any objection to such use by the third parties. From the said Assignment Deed, it was learnt that the plaintiff had allowed third parties to use and register the trademark "Apollo" with different logo for similar business and that the plaintiff did not raise any objection to such use by the third parties. 5.2 Noticeably, the aforementioned Assignment Deed dated 09.04.2013 whereby Gujarat Apollo Industries Ltd. assigned the trademark in favour of the plaintiff, in its paragraph 2.2 provided thus, "The foregoing assignment of rights by the assinor in favor of the assignee is without reservation of any right, title, interest or use in any part of the territory, whether now existing or subsequently arising provided that the assigner or Apollo Equipment Manufactures Limited or any of their group companies shall have right to use the word ‘Apollo’ in combination with a logo which is not identical or deceptively similar to the trade mark and get the same registered in the name of the assigner or Apollo equipment manufactures Limited or any of their group companies, as the case maybe, with the Indian Trade Mark Authorities and the Amman Entity shall and shall cause the assignee to provide their / its written no objection or consent to the Indian Trade Mark Authorities to execute such other documents as may be required for the purpose of such registration.” 5.3 Defendant No.1- the appellant No.1 Apollo Infratech Pvt. Ltd. was already incorporated on 19.01.2007 much prior to the aforesaid Deed of Assignment. Appellant no.1 was a group company of Gujarat Apollo Industries Ltd. or Apollo Equipment Manufacturers Ltd. The submission on part of the appellant could not be brushed aside lightly, in view of the above receitals in the Deed of Assignment, that the plaintiff was not entitled to interfere with the rights obtained by appellant no.1 and subsequently by appellant no.2. It is to be recollected to be noted that the road construction machinery for asphalt based products was started by M/s. Apollo Engineering Company in the year 1971, which was a partnership firm, in which Mr. Ajit Patel as well as Mr. Anil Patel were partners. Class versus Category 5.4 A miscellaneous aspect maybe dealt with and disposed of at this stage. It was an attempt on part of the plaintiff to contend that the plaintiff enjoyed exclusively right in relation to the Asphalt based machinery. Section 7 of the Act, deals with Classification of Goods and Services. Anil Patel were partners. Class versus Category 5.4 A miscellaneous aspect maybe dealt with and disposed of at this stage. It was an attempt on part of the plaintiff to contend that the plaintiff enjoyed exclusively right in relation to the Asphalt based machinery. Section 7 of the Act, deals with Classification of Goods and Services. They are classified in accordance with international classifications, thereafter publication is done of classification of goods in alphabetical manner. The registration of the mark of the plaintiff as well as the registration mark of the defendants, are both in Class 7 of Nice Classification. Extracted from NICE classification eight edition which is classification of goods and services for the purposes of registration of marks which is published by world intellectual property organization, geneva (2001), class 7 includes ‘machines and machine tools; motors and engines; machine coupling and transmission components (both except for land vehicles); agricultural implements other than hand operator and incubators for eggs. The explanatory note suggests that Class 7 includes mainly machines, machine tools, motors and engines. 5.4.1 The trade mark of the plaintiffs in Class 7 machinery inter alia mentions Asphalt based machinery in construction equipment. The description of defendant’s trade mark is all types of construction machinery. The machines generally classified is construction machinery which is bound to include all kinds and types of machinery including the Asphalt based. Construction machinery is a class which would include categories to different kind of machinery and equipment with different make, the Asphalt based may be one of such category. It could not be said by any stretch of logic that the Asphalt based construction machinery does not become part of all type of construction machinery for which the registration for the defendant is given. 5.4.2 Therefore the submission to micro classify the goods of construction machinery and to assert thereby a separate right against the defendant is misconceived and not tenable. On such spacious plea, the plaintiff cannot claim in law exclusive right to use trademark in relation to product in question. Rights Flowing from Registration 6. 5.4.2 Therefore the submission to micro classify the goods of construction machinery and to assert thereby a separate right against the defendant is misconceived and not tenable. On such spacious plea, the plaintiff cannot claim in law exclusive right to use trademark in relation to product in question. Rights Flowing from Registration 6. Having set out the case, controversy and the contentions, adverting to relevant statutory provisions by focusing on the registration of trademark and the rights available to the registered trademark owner inasmuch as the striking aspect in the instant case is that the plaintiff has been complaining infringement and seeking injunction against the defendants who are also the registered owners of the registered trademark. The aspect that the defendants are the registered owners is vital factor considering the right to relief in respect of infringement for the plaintiffs. 6.1 Registered proprietor is defined in section 2(v), registered trademark is defined in section 2(w) and registered user is defined in 2(x) of the Trade Marks Act, 1999. The mark is defined in section 2(n) and the trademark is defined in section 2(zb) of the Act. The mark includes a device, label, name, signature, word, letter, etc. or combination of colours or any combination thereof. 6.2 Section 18 is regarding application for registration, section 19 deals with withdrawal of acceptance, section 20 is about advertisement, section 21 says about the opposition to registration, Section 23 is for registration and section 25 provides for duration for renewal, removal and restoration of registration. 6.3 Registration of trademark has its own importance and effect in law. The effect of registration is provided in Chapter IV of the Act. Section 27 says that no infringement action will lie in respect of unregistered trademark. At the same time, sub-section (2) recognises the common law rights of the trademark owner to take action for passing off. Section 27 reads as under, "27. No action for infringement of unregistered trade mark.—(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof." 6.4 Section 28 tells about the rights conferred by registration. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof." 6.4 Section 28 tells about the rights conferred by registration. This relevant provision is reproduced hereunder, "28. Rights conferred by registration.(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor." 6.4.1 A plain reading of the above provision would show that certain rights are given to the registered proprietor of trademark. Firstly, the registered proprietor has exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. In the second place, the registered owner has right to obtain relief in respect of infringement of trademark in the manner provided by the Trade Marks Act. 6.4.2 Sub-section (3) of section 28 contemplates a situation where two or more persons are registered proprietors of trade mark, which are identical with or nearly resembling each other. In the second place, the registered owner has right to obtain relief in respect of infringement of trademark in the manner provided by the Trade Marks Act. 6.4.2 Sub-section (3) of section 28 contemplates a situation where two or more persons are registered proprietors of trade mark, which are identical with or nearly resembling each other. In other words, a situation is postulated where same or similar trademark can be registered in favour of more than one person, as in the present case, it is registration of trade mark ‘Apollo’. 6.4.3 The effect of section 28(3) came to be explained by the Supreme Court in S.Syed Mohideen (supra), in the following words, "...on a plain stand alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of commonsense that the plaintiff can not say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act." (para 27) 6.5 Section 29 is about infringement of registered trade mark. It says that a registered trade mark is infringed by a person not being a registered proprietor by using in course of trade, a mark which is identical with or deceptively similar to the mark which is registered in relation to particular goods or services. The word 'deceptively similar' which is an omnipresent consideration in the concept of infringement and passing off action, is defined in section 2(h). The mark shall be deemed to be deceptively similar to another mark which if it so nearly resembles that other mark as to be likely to deceive or cause confusion. "So nearly resembles" to be a consideration. The word 'deceptively similar' which is an omnipresent consideration in the concept of infringement and passing off action, is defined in section 2(h). The mark shall be deemed to be deceptively similar to another mark which if it so nearly resembles that other mark as to be likely to deceive or cause confusion. "So nearly resembles" to be a consideration. The other aspects are that such other mark is 'likely to deceive' or 'cause confusion'. 6.5.1 The infringement action under section 29(2) is available against a person who is not a registered proprietor or a person using by way of permitted use, uses in course of trade, a mark which because of - (a) Its identity with the registered mark and the similarity of the goods or services covered by such registered trade mark; or (b) Its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; (c) Its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. 6.6 Also to be noticed is section 30 of the Act which mentions about the limits on the effect of registered trade mark. It says that nothing in section 29 shall prevent use of trade mark where the use is in accordance with honest practices and it is not for the purpose of taking unfair advantage or to be detrimental to the distinctiveness of the character of the mark. In such circumstances, there will be no infringement. Sub-section (2) of section 30 lists categories (a) to (e) in which the registered trade mark is not infringed. Clause (e) reads as under, “(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.” 6.7 Section 31 says that registration is an evidence of prima facie validity. Section 32 is about protection of registration on the ground of distinctiveness in certain cases. Section 32 is about protection of registration on the ground of distinctiveness in certain cases. Section 34 is about saving of vested rights to provide that nothing in the Act shall entitle the proprietor or registered user of registered trademark to interfere with use of trademark by any person who is identical with or nearly resembling in relation to goods or services if the person is being using the mark from the earlier date. Chapter V is in respect of assignment and transmission. The registered proprietor of the trademark is empowered to assign the trademark registered in his favour. Rectification and correction of register related provision are in Chapter - VII. After Quasi Judicial Process 7. The rights acquired for the proprietor of the trade mark upon the registration of the trade mark hold a stronger footing. The procedure laid down for registration of trade mark stands to be, or at least, is akin to a quasi judicial process leading to registration of the trade mark. 7.1 In Syed Mohideen (supra), the Supreme Court delineated this procedure emanating from statutory provisions, "Procedure for registration of the trade mark is provided from Sections 20 to 23 of the Act. As per Section 20, when such an application is accepted for registration, the Registry is supposed to advertise the same in the prescribed manner. The purpose of advertising is to afford the public at large an opportunity to oppose the registration of the mark. After the advertisement, such a right to oppose the registration conferred on every member of the public as 'any person' can file objections under Section 21 of the Act. An opposition is to be made within four months from the date of advertisement/re-advertisement. (para 20) 7.1.1 The procedure was further explained thus, “Once opposition(s) is/are received, the Registrar is to serve a copy of the same to the applicant and within two months thereof the applicant is entitled to file a counter statement of the grounds on which he relies for his application. In case the applicant does not file such a counter statement, it is deemed that he has abandoned his application. On the other hand, if the counter statement is submitted by the applicant, copy thereof is to be served upon the person giving notice of opposition. Thereafter, both the applicant as well as opponent are given an opportunity to file their respective evidence. On the other hand, if the counter statement is submitted by the applicant, copy thereof is to be served upon the person giving notice of opposition. Thereafter, both the applicant as well as opponent are given an opportunity to file their respective evidence. After receiving such evidence, the Registrar is duty bound to give an opportunity of hearing to both of them, if they so desire. (Para 20)” 7.1.2 The Registrar has to also examine the aspect whether the proposed mark is likely to create confusion, “After hearing the parties and considering the evidence, Registrar is to take a decision as to whether he would be permitting the registration or rejecting the application. At this stage, if the Registrar feels that the mark considered as a whole is likely to create confusion, he is empowered to refuse the registration. Once the application is accepted and either there is no opposition thereto within the time permitted to file such objections or objections, if filed, are decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said trade mark and this process is to be completed within 18 months of the filing of the application. (para 20)” 7.2 Thus, it is to be noticed that when the application for registration is received and accepted, a public notice is given by publishing an advertisement and an opportunity is extended to the public at large to file opposition. In the process of inquiry, if the Registrar finds that the mark as a whole is likely to create confusion, it may refuse registration. Therefore, the procedure for registration of trade mark has a quasi judicial character, involving inviting objections from public and going into consideration inter alia that the trade mark applied to be registered will not create a confusion amongst the users. When the trade mark is registered for the trade mark user, the registration has such sound basis and backing of quasi judicial process. 7.3 The defendants herein enjoy the exclusive rights to use their trade mark 'Apollo', having got the same registered in accordance with law, as per above procedure. The opposition to it once advances but subsequently withdrawn unconditionally by the plaintiff’s side has its own effect in law. Excepting Common Law, Rights are Exclusive 8. 7.3 The defendants herein enjoy the exclusive rights to use their trade mark 'Apollo', having got the same registered in accordance with law, as per above procedure. The opposition to it once advances but subsequently withdrawn unconditionally by the plaintiff’s side has its own effect in law. Excepting Common Law, Rights are Exclusive 8. In Syed Mohideen (supra), the respondent-plaintiff claimed prior user of the trade mark "Iruttukadai Halwa" claiming registration since 2007, stating that her father-in-law had started under the said trade name in 1900. The appellant against whom the said plaintiff filed suit for relief of permanent injunction etc., on the ground that the appellant had used similar trade mark to confuse the consumers under the trade name "Tirunelveli Iruttukadai Halwa", which was registered in the year 2008. The Court however observed that the appellant had also the trade mark registered and considered the implication of the registration of the appellant's trade mark. 8.1 The Court held that the owner of the registered trade mark has right to use the trade mark to the exclusion of others but such right is subject to common law remedies available under passing off action. It was held that between the two registered owners of the same or similar trade mark, exclusive right to use the trade mark is not available to one registrant against the other registered owner. The plaintiff cannot say that its registered trade mark is infringed only on the ground of registration of its trade mark when defendant is also enjoying registration of the trade mark. Such registration, it was held, also gives right to defendant to use the same as provided in Section 28(1) of the Act. 8.2 Before the Supreme Court in S. Syed Mohideen (supra),one of the arguments on behalf of the appellant was that the trade mark with specific name ‘Tirunelveli Iruttukadai Halwa’ which was duly registered under Section 25(2) of the Act and once the Registrar had accepted the registration and the certificated dated 9.4.2008 was issued, there was no reason to injunct the appellant from using the trade mark. 8.2.1 The Supreme Court said, ‘... we find formidable force in the arguments of learned counsel for the appellant predicated on the rights accrued to him as a result of the trade mark of ‘Tirunelveli Iruttukadai Halwa’ having being duly registered by the Registrar under Section 25 (2) of the Act. 8.2.1 The Supreme Court said, ‘... we find formidable force in the arguments of learned counsel for the appellant predicated on the rights accrued to him as a result of the trade mark of ‘Tirunelveli Iruttukadai Halwa’ having being duly registered by the Registrar under Section 25 (2) of the Act. This is the aspect which cannot be downplayed at all. An owner of registered trade mark is given certain invaluable rights including to right to use the said trade mark to the exclusion of others.’ (para 16) 8.3 In S.Syed Mohideen (supra) the Apex Court ruled that the decree passed by the court below and confirmed by the High Court in favor of plaintiff- respondent was justified as the respondent was able to establish its prior user while holding that the prior user has superior right over registered owner, the Supreme Court in process emphasized and underlined the proposition that but for prior user right proved, the registered proprietor of trade mark has right to use his trade mark to be exclusion of others. No Injunction Against Registered Owner 9. A conjoint reading and interpretation of provisions of Section 28(3), 29(1), 29(2) and 30(2)(e) of the Act leave no room for escapement from conclusion, in the facts of the case succinctly, in absence of any exceptional prima facie case as discussed herein, the plaintiff has no right to maintain infringement action against defendants. There is unanimity of judicial opinion in respect of this proposition of law about exclusive right of registered owner. 9.1 In M/s. Jindal Industries Ltd. vs. M/s. Nirmal Steel Tubes Pvt. Ltd. [ AIR 1995 Del 42 ], the device of the plaintiff, which was registered mark, comprised of oval shape within which there was a map of India, and upon it the word Jindal was written. The word trademark appeared in the oval outlines. The defendant's mark which was registered had also oval outlines, had a map of India and word Nirmal written across the map of India. The Court dealing with injunction application granted injunction restraining the defendant from using the said trade mark and devise of map of India with oval shape on the ground that it was identical or deceptively similar to the device of the plaintiff. The Court dealing with injunction application granted injunction restraining the defendant from using the said trade mark and devise of map of India with oval shape on the ground that it was identical or deceptively similar to the device of the plaintiff. The Delhi High Court observed that section 28 of the Trade and Merchandise Marks Act gives the exclusive right to the use of registered trademark, therefore, there was no reason that by an order of injunction, the defendant could be restrained from using his registered trademark. Rectification proceedings were also pending in that case. The injunction was vacated. 9.2 In P.M. Diesels Pvt. Ltd. vs. Thukral Mechanical Works [1988 (2015) PTC 47], before Delhi High Court the plaintiff was registered proprietor of trademark "Field Marshal" in respect of diesel oil engines or the parts thereof. On the other hand, the defendants were also the registered proprietor of the trade mark Field Marshal, but it was in respect of centrifugal pumps, etc. It was held that as the plaintiff as well as the defendant both were registered proprietors of the trademark which were identical, namely, Field Marshal, the provisions of section 28(3) of the Act would apply. It was held that they would be entitled to take action against anybody if the trademark was infringed. However, neither the plaintiff nor the defendant could take action against each other because both of them were registered proprietors of identical trademark, even though it was in respect of different types of goods. 9.2.1 The Delhi High Court discussed the provisions of section 33 of the Trade and Merchandise Marks Act to proceed to observed in para 14, “The perusal of the aforesaid provision clearly shows that an exclusive right to the use of the trade mark has been given to the registered proprietor by Section 28(1) in relation to the goods in respect of which the trade mark is registered. It is the registered proprietor who is also given the right to obtain relief in respect of the infringement of the trade mark. It is true that Section 28(1) confers the right on the registered proprietor if the registration is valid. This provision has, therefore, to be read along with Section 31(1) which, inter alia, provides that the registration of the trade mark shall be the prima facie evidence of the validity thereof. It is true that Section 28(1) confers the right on the registered proprietor if the registration is valid. This provision has, therefore, to be read along with Section 31(1) which, inter alia, provides that the registration of the trade mark shall be the prima facie evidence of the validity thereof. Reading the two provisions together, namely Section 28(1) and Section 31(1), the implication would be that as long as a trade mark stands registered in the name of a proprietor, the said registration shall be deemed to be valid and the registered proprietor would have an exclusive right to use the said trade mark.” 9.2.3 With reference to provisions of Section 28(3) of the Act it was highlighted by the Delhi High Court that said provision protects the proprietary rights of both the registered owners and that each of them would be entitled to exclusively use the trademark registered in their favour extracting from paragraph 15, “In the present case the plaintiff is the registered proprietor of the trade mark "Field Marshal" in respect of diesel oil engines or parts there of. The defendants, on the other hand, are also the registered proprietor of the trade mark "Field Marshal", but in respect of centrifugal pumps etc. Inasmuch as both the plaintiff and the defendants are the registered proprietors of the trade marks which are identical, namely, "Field Marshal", the provisions of Section 28(3) of the Act would be applicable to the present case. By virtue of this provision, the exclusive right to use the trade mark "Field Marshal" shall not be deemed to have been acquired either by the plaintiff or by the defendant as against each other, but both the plaintiff as well as the defendant have otherwise the same rights as against other persons as they would have if they were the sole proprietors. Section 28(3) therefore, protects the proprietory rights of both the plaintiff as well as the defendant. They would be entitled to take action against anyone, if the trade mark is infringed, but neither the plaintiff nor the defendant are entitled to take action against each other because both of them are registered proprietors of identical trade mark, though in respect of different types of goods.” 9.3 The law was further stated that the defendant who were registered proprietor of the trademark were entitled to use that trademark till the registration stands. It was observed that these rights were conferred on the defendants by virtue of the provisions of section 28 of the Act even though the marks may be similar. 9.4 The Bombay High Court in Essel Propack Ltd. vs. Essel Kitchenware Ltd. [2016 (66) PTC 173 (Bom)], both the parties had got registration of their respective trademarks. The Bombay High Court observed in para 42. "Both parties have registrations. Between them, herefore, the exclusive right to use the trade mark is unavailable one against the other. This is the more so where a plaintiff has not opposed or, having opposed, has abandoned its opposition to the defendant's registration application." Rectification Application No Avail 10. It was a faint attempt on part of the respondent-original plaintiff that it had filed rectification application against the registered trademark of the defendants, therefore, he had a good ground to seek injunction. 10.1 Similar situation was obtained before the Bombay High Court in Poddar Tyres Ltd. vs. Bedrock Sales Corporation Ltd. [ AIR 1993 Bom. 237 ]. What the Bombay High Court observes in paragraph 41 of the decision, is an answer, "Mr. Rahimtoola then contended that Santosh Kumar Poddar has filed an application with the Registrar, in his capacity as a shareholder of the second defendants, for holding that the plaintiffs are not entitled to be the registered proprietors of the trade mark, as the assignment of the proprietary rights in the said trade mark by the second defendants to the plaintiffs is invalid. Whatever the worth of the said application, it is not possible to accept the contention that such an application can prevent the registered proprietor from asserting his rights as registered proprietor of the trade mark under S.28 of the Act as long as the trade mark continues on the register. ...I am unable to accept the contention that the pendency of the rectification application prevents the plaintiffs from exercising the statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon." 10.2 The Delhi High Court also observed and held same in P.M. Diesels Pvt. Limited (Supra), quoted from paragraph No.14. ...I am unable to accept the contention that the pendency of the rectification application prevents the plaintiffs from exercising the statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon." 10.2 The Delhi High Court also observed and held same in P.M. Diesels Pvt. Limited (Supra), quoted from paragraph No.14. “If the registration is cancelled by an action being taken under Section 56 of the Act, then the protection and right afforded under Section 28(1) read with Section 31(1) would no longer be available, but till the Register of Trade Mark is corrected and the name of a person holding a trade mark is deleted, that person who is shown as the proprietor of the registered trade mark would continue to have all the rights and privileges which are conferred by the Act on the registered owner of the trade mark. Therefore, even though the plaintiff has filed an application in this Court being C.O. 6/87 for rectification of the Trade Mark Register for deletion of the name of the defendants there from, the registration of the trade mark in the name of the defendants is prima face evidence of the validity thereof because of the provisions of Section 31(1)." Prima facie validity 11. As the trade mark of the defendant is a registered trade mark, straightway comes into picture Section 31 of the Act, which says that the registration of trade mark indicates prima facie evidence of its validity. When the trade mark of the defendant is stated to be prima facie valid, the said aspect will have material bearing in considering the prayer of the plaintiff to injunct the defendants from using the trade mark. The sequetor of Section 31 vis-a-vis essential aspect of Order XXXIX Rule 1, 2 of the CPC, for grant of injunction would be that, the question of granting injunction only arises if the prima facie validity contemplated in law for the registered trade mark can be dislodged on cogent grounds and considerations tenable in law. 11.1 At this stage, Section 124 of the Act may be referred to which provides for stay of the proceedings where the validity of registration of trade mark is questioned. The stay of the proceedings is contemplated inter alia where the rectification application is pending. 11.1 At this stage, Section 124 of the Act may be referred to which provides for stay of the proceedings where the validity of registration of trade mark is questioned. The stay of the proceedings is contemplated inter alia where the rectification application is pending. However, as per Sub section (5) it is provided that the stay of the suit shall not preclude the court from passing interlocutory order granting injunction. Against the submission of the appellants that since the appellants-defendants were the registered owner, they could not be injuncted for infringement, the response of the respondent No.1 plaintiff was that Sub section (5) of Section 124 empowers the court to grant injunction. 11.2 For successfully claiming relief of injunction on the count of infringement owner against registered trade mark owner, a very strong prima facie case with certain pre requisites is emphasized. What are the stringent criteria to be applied for injuncting the registered trade mark owner from using the registered trade mark, is highlighted hereinbelow, 11.3 The full Bench of the Mumbai High Court in Lupin Limited Vs. Johnson and Johnson [2015 (1) Mh. L.J 501], considered the effect of this prima facie evidence of validity while granting injunction in suit for infringement of trade mark. Precisely stated the Full Bench considered this question of law : Whether the Court can go into the question of the validity of the registration of the plaintiff’s trade mark at an interlocutory stage when the defendant takes up the defence of invalidity of the registration of the plaintiff’s trade mark in an infringement suit? The issue as to whether in what circumstances the injunction could be granted against the trade mark owner whose trade mark is registered was examined in extenso. 11.4 The Division Bench of Delhi High Court in Merico Vs. Agro Tech Foods Limited [ 2010 (43) (PTC) 39 (Delhi)], which was referred to by the Full Bench of the High Court in Lupin Limited (supra) held that as per Section 31, the registration was only prima facie evidence of validity of registration, hence it is open to the court to go into the question of tentative validity of the registration while consideration the application for grant of injunction, although the onus would lie on the person who challenges the validity of mark, that the mark is not valid. 11.5 The Full Bench of the Mumbai High Court even while agreeing with the aforesaid view of the Delhi High Court, observed that at an interlocutory stage the court is not required to call upon the party to prove that the registration of his trade mark is not valid. It was stated that in view of the scheme of the Act whereunder the application for registration of the trade mark is required to be advertised with an opportunity to the world at large to submit that opposition to such application and in such process the opportunity to lead evidence and hearing is given before registration, there will be a strong presumption in favor of the plaintiff. 11.6 Here is a case where the defendant has also got its trademark registered and the registration stands prima facie valid. The plaintiff seeks to injunct the defendant from using the prima facie valid registered trademark. No Exceptional Grounds Exists 12. The Full Bench of the Mumbai High Court, therefore observed in para 57, “Hence, at the interlocutory stage, the Civil Court is not to embark upon and evolve factual inquiry, but … is only permitted to consider whether the registration is totally illegal or fraudulent or shocks the conscience of the Court. It is not sufficient for the defendant resisting the application for interim injunction to show that the defendant has an arguable case for showing invalidity of the trade mark registered in the name of the plaintiff.” 12.1 In same paragraph it was added by the court, “Such "low threshold prima facie case" may be sufficient for the defendant to get an opportunity under Section 124(1) and (2) of the 1999 Act to get the trial of the suit stayed for the purpose of enabling the defendant to apply to the Appellate Board for rectification. Such prima facie satisfaction of the Civil Court at the lower threshold will not be sufficient to refuse interim injunction in favour of the plaintiff who has filed the suit for infringement. Such prima facie satisfaction of the Civil Court at the lower threshold will not be sufficient to refuse interim injunction in favour of the plaintiff who has filed the suit for infringement. But if the defendant is able to show, without Civil Court being required to embark upon detailed inquiry, that the registration granted in favour of the plaintiff is totally illegal or fraudulent or such which shocks the conscience of the Court, the Civil Court will refuse to grant interim injunction.” 12.2 Some of the conclusions drawn by the Full Bench of the Mumbai High Court, and those would apply here reverse as the defendants have been opposing the grant of injunction against them and the footing of prima facie validity of their registered trade mark, were, (i) 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, 1999 (the Act) must be given their plain and natural meaning. (ii) Though the object of providing registration of trade mark is to obviate the difficulty in proving each and every case the plaintiff's title to the trade mark, the object is achieved by raising a strong presumption in law to the validity of the registration of the trade mark and heavy burden is cast on the otherside to question the validity of the trade mark (iii) 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, though there is no bar taking away the jurisdiction 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. (iv) 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 (v) A very heavy burden lies on the defendants to rebut the strong presumption in favour of the party on the basis of the registration. (iv) 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 (v) A very heavy burden lies on the defendants to rebut the strong presumption in favour of the party on the basis of the registration. 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 (vi) It is not sufficient to show that the defendant has an arguable case for showing invalidity. It is only in exceptional circumstances, such as, the registration being ex facie illegal or fraudulent or which shocks the conscience of the Court that Court will refuse the interim injunction in favour of the registered proprietor of the trade mark. 12.3 In the conclusion it was held, extracting from paragraph No.60 that a very high threshold of prima facie proof is required, “In cases where the registration of trade mark is ex facie illegal, fraudulent or shocks the conscience of the Court, the Court is not powerless to refuse to grant an injunction, but for establishing these grounds, a very high threshold of prima facie proof is required. It is, therefore, open to the Court to go into in the question of validity of registration of plaintiff’s trade mark for this limited purpose, to arrive at a prima facie finding.” 12.4 The case for the plaintiff even remotely does not exist where the registration of the trademark could be said to be ex facie illegal. Before registration was granted, the opposition was filed by the plaintiff, which was later withdrawn. The registration otherwise stands prima facie valid under Section 31 of the Act. In the pleadings also and even indirectly as well, it is never the case of the plaintiff that the registration of the trademark is fraudulent. The test laid down by the Full Bench of the Bombay High Court in Lupin India Ltd. (supra) that the injunction could be considered against the registered owner of the trademark if the registration is fraudulent, ex facie illegal or shocks the conscience of the court is evidently absent. The test laid down by the Full Bench of the Bombay High Court in Lupin India Ltd. (supra) that the injunction could be considered against the registered owner of the trademark if the registration is fraudulent, ex facie illegal or shocks the conscience of the court is evidently absent. Conceptual Difference 13. As the case of the plaintiff is on the score, both of infringement of its trade mark as well as passing off action, and the Court below has granted the injunctive relief to the plaintiff on twin counts, while considering the merits of the grantability of such relief, it is useful to consider the conceptual distinction between the infringement and passing off. 13.1 The infringement is a statutory concept. Right not to get the trade mark infringed is a right emanating from statute law. In Kaviraj Pandit Durga Dutt Sharma (supra), the Supreme Court laid down the certain principles to be relevant while considering the action for infringement. Firstly, when two marks are identical, without anything further, the infringement can be said to have been made out. Secondly, when two marks are not identical, the plaintiff would have to establish that defendant's mark nearly resembles plaintiff's mark. It is also to be shown that it is likely to deceive or cause confusion in relation to goods in respect of which the mark is registered. It was observed that the onus is on the plaintiff to prove these aspects. Thirdly, what degree of resemblance should exist to cause deception, is not something capable of definition or possible to be measured by set standards. The essential features of both the marks would have to be compared to judge whether the persons who would use the product would land in confusion. It was fourthly observed that the ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of plaintiff's registered mark. The resemblance may be phonetic, visual or in the basic idea which is represented by the mark. If the mark is comprised of with several features, their distinctiveness or the generic nature of the word used, also assumes importance, in the fifth place. In the ultimate analysis, the identification of the essential resembling or distinguishing features is a question of fact. 13.2 On the other hand, the passing off is a common law right. It is a tort. In the ultimate analysis, the identification of the essential resembling or distinguishing features is a question of fact. 13.2 On the other hand, the passing off is a common law right. It is a tort. It is an action in deceit. Registration of the trade mark is irrelevant when it comes to passing off action. In passing off action, the plaintiff will have to prove that his mark has by user acquired such a reputation to be come distinctive for the goods for which the mark is registered and that if it is used in relation to any goods of the kind dealt with by the plaintiff, it would be understood to be plaintiff's goods. 13.3 In today’s highly competitive commercial world, the goodwill gained and reputation earned matters much. The passing-off is an action which passed the goods of one as that of another in deceptive way and manner and thus strikes at reputation and goodwill of the trader. In American Home Products Corporation vs. Mac Laboratories Pvt. Ltd.,[ AIR 1986 SC 137 ], the Supreme Court observed that in an infringement action, plaintiff is not required to prove the reputation of his mark. In order to prove the passing off action, the element of reputation and goodwill comes into play. Also becomes prominent, the concept of 'prior use', when it comes to passing off. 13.4 In Wander Ltd. vs. Antox India Pvt. Ltd. [1990 Supp. SCC 727], the Apex Court observed, "Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trade to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damage to the business or goodwill of the other trader.” (Para 16) 13.5 In Ruston & Hornsby Ltd. (supra), the Supreme Court observed that apart from the importance of distinction between the two concepts, the issue involved in an infringement action is quite different from the issue in passing off action. In passing off action, the question would arise: Is the defendant selling the goods so marked has to be designed or calculated to lead purchasers to believe that they are plaintiff's goods. In the infringement action, the issue would be: Is the defendant using a mark which is same as or which is colourable imitation of the plaintiff's registered trade mark. 13.5.1 The Supreme Court stated, "It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods may be so different from the get up of the plain-tiffs goods and the prices also may be so different that there would be no probability of deception of the public." (para 5) 13.6 In Kaviraj Pandit Durga Dutt (supra), the distinction was explained by observing, “The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered. trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark.” (para 28) 13.6.1 It was explained that the similarity would cease, But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants 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 plaintiff's rights are violated. Expressed in another way, 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 in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; (para 28) 13.6.2 The Apex Court pointedly stated, "whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff." (para 28) 13.7 The test to determine the passing-off action came to be summarized by the Apex Court also in Cadila Health Care Limited Vs. Cadila Pharmaceutical Limited [ 2001 (5) SCC 73 ], by observing thus, "Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered: (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 13.7.1 It was stated that weightage shall be given to each of the aforesaid factors depending upon facts of each case and that the same weightage cannot be given to each factor in every case. (para 35, 36, 37) Element of Deceptivity Essential 14. 13.7.1 It was stated that weightage shall be given to each of the aforesaid factors depending upon facts of each case and that the same weightage cannot be given to each factor in every case. (para 35, 36, 37) Element of Deceptivity Essential 14. The situation where the plaintiff and defendant both happen to be registered proprietors of their respective trade marks and question of passing off arises, was considered by the Supreme Court in S. Syed Mohideen (supra), "In a given case, if both plaintiff and defendant are registered proprietors and, for that reason, no relief in infringement is available to the plaintiff, is relief in passing off to be granted to such a plaintiff merely because the defendant is using his registered mark? Or must there be some additional material shown in relation to the defendant's use of his own registered mark but distinctly decipherable from the mark itself.” (para 42) 14.1 The court proceeded to state, ".........colours, fonts, presentation, prominence of a particular feature and so on? I do not believe that the law requires that, as between two registered proprietors, relief in passing off one against the other must follow axiomatically. The action in passing off is certainly maintainable, just as the action in infringement is not. But the essence of 'passing off', as the term itself implies, is masquerade, deception, misdirection; of the three established probanda, it is misrepresentation that is the keystone. This means misrepresentation as to ownership, source and a shared origin and provenance." (para 42) 14.1.1 The Supreme Court explained by giving example, Y has obtained registration of a mark that is, for illustration, very similar to that of X, also a registered proprietor. Neither can sustain an action in infringement against the other. But to obtain relief in passing off against Y, X must show something more than the existence of Y's registration. X must show that Y is misrepresenting his products as those of X, or as those likely to have emanated from X. How this is demonstrated is, necessarily, fact-dependent; but it is clearly not sufficiently demonstrated by pointing only to the existence of a registration of a rival mark. This is where the Cadila test comes into play. In this case, that test is not met." (para 42) 14.2 In Mahendra and Mahendra Paper Mills Limited Vs. This is where the Cadila test comes into play. In this case, that test is not met." (para 42) 14.2 In Mahendra and Mahendra Paper Mills Limited Vs. Mahendra and Mehendra Limited [ 2002 (2) SCC 147 ], it was observed inter alia that the parameters to be applied for considering the grant of injunction on the ground of passing off is whether there is likelihood of deception or confusion and the factors which may lead to deception or confusion have to be considered in combination including the nature of market, the class of customers, the extent of reputation, the trade channels, existence in connection in course of trade and others. 14.3 In SM Dychem Limited Vs. Cadbury India Limited [ 2000 (5) SCC 573 ], it was observed that in passing off action it is the relative strength of the parties which play relevance. It was stated that the proof of resemblance or similarity in case of passing off and infringement are different. The Supreme Court observed, ‘in a passing off action, additions, get up or trade dress might be relevant to enable the defendant to escape’. 14.4 It could be concluded from the above enunciation that along with the other necessary aspects, the causing of confusion amongst the users and the deceptive similarity of the mark are the considerations to be carefully applied in judging the action for passing off. Two Marks in the present case 15. As the criteria to be applied is deceptive similarity and the likelihood of creation of confusion, it is pivotal to know as to what type of the mark registered for the plaintiff, and on the other hand, what are the features of the registered mark of the defendants. Even though both marks use word 'Apollo', they possess conspicuous features to become distinct from one another. 15.1 The plaintiff's trademark 'Apollo' and the impugned trademark 'Apollo' held by the defendants as registered trademark, were shown to the Court in their original form. The had their own different style, colour and impression. In addition to that, in the two marks, the word 'Apollo' has been projected with two different unmatchable fonts, the impugned mark is having blue colour used for its fonts. Furthermore, it has a curve above it. Inside the curve, pink coloured triangle is drawn. 15.2 On the other hand, the mark of the plaintiff is made of black coloured font. Furthermore, it has a curve above it. Inside the curve, pink coloured triangle is drawn. 15.2 On the other hand, the mark of the plaintiff is made of black coloured font. Inside the font A in plaintiff's black coloured mark, a small triangle filled with red colour is inserted as design and as part of the letter A. These are the different features and characteristics of the two marks. When in the subsequent part of this judgment, the tests of judging the deception, similarity and capability of creation of confusion is discussed, the features in the two marks highlighted above assume significance. Label Mark, Not Word Mark 16. Admittedly the trade marks of the plaintiff and the defendants are label or device marks. The word ‘Apollo’ is used in both but they are not the word marks, nor the word Apollo is registered as trade mark to be exclusive to the use of the plaintiff. Neither of the party is registered user of word Apollo. The registration of the device and not the word Apollo per se. Undoubtedly the word Apollo is, even otherwise a generic term used by for the purpose of identifying several other goods and services, besides the goods of the parties herein. 16.1 In Registrar of Trademarks v. Ashokchandra Rakhit Ltd.[ AIR 1955 SC 558 ], the Supreme Court observed, “It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in Pinto v. Badman(2): (1) [1951] 68 R.P.C. 103 at p. 106. (2) 8 R.P.C. 181 at p. 191.” "The truth is that the label does not consist of each particular part of it, but consists of the combination of them all" 16.2 A device mark or label mark would be recognised and identified in its total projection and the characteristics it globally possesses, and not just by its phonetic version. It could be said to be also a criteria to be applied of giving least importance to phonetic similarity, when the word in the mark to be spoken is publici juris, like ‘Apollo’. Label Versus Phonetic 17. It could be said to be also a criteria to be applied of giving least importance to phonetic similarity, when the word in the mark to be spoken is publici juris, like ‘Apollo’. Label Versus Phonetic 17. In many cases, more often than not, the visual effect and protective appearance surpasses the phonetic similarity. It is the visual difference and distinction of the mark which would leave a lasting and un-obliterating imprint in the minds of consumers. They would remember the mark not by its phonetic version but by virtue of its look which would be be demonstrated by, totality of lable or look of device inclusive of the style of the mark, the font used, the color scheme employed, design and the companion characteristics. 17.1 The phonetic version, as a criteria to judge the deceptive similarity, is not only to be applied uniformally or in isolation but it is more reliable yardstick where the trade mark consist of a word, unlike in the present case which is device mark. In label mark or device mark, mere phonetic similarity may become misleading or may lead to misjudgment. Further more, when the trade mark consists of the word of common use or generic word, the phonetic similarity is to be ignored. 17.2 Deceit is more often than not, a question of first image and maiden impression. It is the visual impression and impression at the first look. If distinctiveness between the two marks appeals to the beholder at first sight, the impression will remain for long and forever, notwithstanding the phonetic similarity of the word used. The phonetic similarity or even phometic unity would get erased from one’s mind, if the ‘mark’ as a whole, with its style, color combination form and overall projection leaves an imprint of its own. This is perhaps the essence of deceptivity or similarity or deceptive similarity of trade mark perceived in the Trade Marks Law principles. 17.3 The statement of law that the question whether the two marks are similar as likely to cause confusion is of first impression, was mentioned by the Supreme Court in Corn Products Refining Company Vs. Shangrilla Food Products [ AIR 1960 SC 142 ]. Generic Word 18. The device or label mark of the parties has only common feature, which is the word 'Apollo'. It is generic in nature. Shangrilla Food Products [ AIR 1960 SC 142 ]. Generic Word 18. The device or label mark of the parties has only common feature, which is the word 'Apollo'. It is generic in nature. Several companies engaged in the construction activity itself, have got their trade mark differently projected, but with word 'Apollo'. The defendant has produced list of such companies. Therefore, there is no exclusivity for 'Apollo', for the plaintiff. The word 'Apollo' is not even separately registered for the plaintiff. Both the sides have got registered the label 'Apollo' with its distinct projective features as a whole. 18.1 The principle is that if a trade mark consists of several aspects, its registration would confer exclusive right on the owner for use it as a total, as a whole. But when a trade mark contains any part which is not subject of a separate application or which is not separately registered or it is a common and of non-distinctive feature, the registration shall not confer any exclusive right in respect of such part not separately registered or which figures as common or is generic. The right of the plaintiff, therefore, extends to only, and limited to the artistic way of projection of 'Apollo' or its stylised representation as depicted. The right would not extend to word 'Apollo' per se. 18.2 Even in relation to other activities, one hears the word 'Apollo' quite often, such as Apollo pharmacy, Apollo hospital, Apollo tyres or Apollo space mission. It is a universally used word for the purpose of naming the product, services or activities. Therefore, by itself, the word 'Apollo' cannot be an identification to claim that it is a feature showing deceptive similarity with other mark 'Apollo', more particularly when the scheme of the label of both is manifested quite different, in the style of writing, font, colour combination and the total characteristics taken as a whole. In this context, even the criteria of phonetic similarity could be said to be taking a backfoot. 18.3 The Supreme Court in M/s. Nandhini Delux Vs. M/s. Karnataka Cooperative Milk [ AIR 2018 SC 3516 ], dealt with the case where the conflicting marks Nandini and Nandhini were under consideration. The Apex Court observed, “Though there is phonetic similarity in so far as the words Nandhini/Nandini are concerned, the trade marks with logo adopted by the two parties are all together different. M/s. Karnataka Cooperative Milk [ AIR 2018 SC 3516 ], dealt with the case where the conflicting marks Nandini and Nandhini were under consideration. The Apex Court observed, “Though there is phonetic similarity in so far as the words Nandhini/Nandini are concerned, the trade marks with logo adopted by the two parties are all together different. The manner in which the appellant had written Nandhini as its mark is totally different from the style adopted by the respondent for its mark Nandini.” 18.4 In S.K.Sachdeva and Others Vs. Shri Educare Limited [ 2016 (65) PTC 614 (Delhi)], which was the case where the word ‘Shri Ram’ was a formulative mark in respect of same services, that is of schools. In that case also opposition was withdrawn and it was held that the conduct of the party disentitled him to have the injunction granted. In consideration of such controversy the court observed that the word Shri Ram was the name of popular figure and deity in common use by public and that several Shri Ram formulative marks has been peacefully coexisting in the register of trade mark. It was observed that the appellants had prima facie shown that there were several schools existing in the name Shri Ram. Judging Similarity 19. The yardstick is that whether similarity is deceptive, causing confusion. For deciding what constitutes similarity for making the two marks deceptively similar or causing confusion, the tests are judicially laid down. In Cadila Healthcare Ltd. (supra), the Supreme Court stated that for the purpose of deciding the question of deceptively similar in passing off action, the following aspects will have to be considered, “(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.” 19.1 In Khodey Distilliries Ltd. (supra), the Apex Court provided elaborate tests after referring with approval, an American decision in E.I. DuPont DeNemours & Co., as under, (i) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. (ii) The similarity or dissimilarity of and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. (iii) The similarity or dissimilarity of established, likely-to-continue trade channels. (iv) The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing. (v) The fame of the prior mark (sales, advertising, length of use). (vi) The number and nature of similar marks in use on similar goods. (vii) The nature and extent of any actual confusion. (viii)The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. (ix) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark). (x) The market interface between applicant and the owner of a prior mark: (a) a mere "consent" to register or use. (b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. (c) assignment of mark, application, registration and good will of the related business. (d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion. (xi) The extent to which applicant has a right to exclude others from use of its mark on its goods. (xii) The extent of potential confusion, i.e., whether de minimis or substantial. (xiii) Any other established fact probative of the effect of use. 19.2 The Supreme Court in Milmet Oftho Industries vs. Allergan Inc. (xi) The extent to which applicant has a right to exclude others from use of its mark on its goods. (xii) The extent of potential confusion, i.e., whether de minimis or substantial. (xiii) Any other established fact probative of the effect of use. 19.2 The Supreme Court in Milmet Oftho Industries vs. Allergan Inc. [ (2004) 12 SCC 624 ], dealt with the two marks relating to pharmaceutical products or medicinal products. In that context, the principle was propounded that in such cases, it would require exacting judicial scrutiny inasmuch as there is likelihood of possibility of confusion over the marks of medicinal products because, stated the Supreme Court, the potential harm may be far more higher than that in case of ordinary consumer products. It was stated that in respect of drugs marketed, which looked alike and sound alike in their names, they become prone to confusion to do harm to have perilous effect on the health of the public. Such consideration is not present in case of construction machinery goods involved in the present controversy. 19.3 The similarity has to be judged just looking at the entirities of the two marks in their appearance, etc. The number and nature of other similar marks for similar goods in the market is also the criteria to be applied. The other criteria mentioned in Khoday Distilleries Ltd. (supra), is the conditions under which and the buyers to whom the sales are made. It become relevant whether it is a raw purchase activity by commoners or it is by sophisticated purchasers or traders. This aspect provides the litmus test in the facts of the present case. Special Class of Users 20. The purchasers and dealers in the construction equipment and in respect of asphalt base construction machineries are indeed the special class of persons engaged in the field of construction activity. They are the separate segment of businessman, who are experienced and educated persons in their field. They can be said to be always indulging into exact and sophisticated purchase with a distinguished sense of purchase. 20.1 In Reliance Industries (supra), while refusing the interim injunction it was held that the logo of the defendant was not deceptively similar. The impugned logo of defendant was in shape of a drop as contrasted from round circular shape of the logo of the plaintiff. The Bombay High Court stated in para 3.2. 20.1 In Reliance Industries (supra), while refusing the interim injunction it was held that the logo of the defendant was not deceptively similar. The impugned logo of defendant was in shape of a drop as contrasted from round circular shape of the logo of the plaintiff. The Bombay High Court stated in para 3.2. “That the rival marks are as different as chalk and cheese and there is no similarity between the two in any manner whatsoever. This is apparent to the naked eye itself. Once it is apparent to the naked eye itself that there is no similarity at all between the rival marks, this by itself ought to disentitle the Plaintiff from any reliefs whatsoever. No further inquiry of any nature is therefore required. ” 20.1.1 The concept of class of customers was highlighted in the following observations in para 3.18. “That the customers and/or purchasers who would buy the Defendant's products are such that would not buy them without any deliberation. The Defendant is engaged in the business of development, manufacturing and installation of waste water treatment and reuse systems as well as solid waste re-cycling. Such products are not sold across the counter. This is also a factor which ways against the Plaintiff being granted any relief.” 20.2 A United States decision in Interpace Corporation Vs. Lapp. Inc. (F.2d 460, 3rd Circuit) set out the standards of likelihood of confusion about the goods amongst the class of consumers who may use the product. Such products are not sold across the counter. This is also a factor which ways against the Plaintiff being granted any relief.” 20.2 A United States decision in Interpace Corporation Vs. Lapp. Inc. (F.2d 460, 3rd Circuit) set out the standards of likelihood of confusion about the goods amongst the class of consumers who may use the product. They are known as Lapp factors : (i) The degree of similarity between the owner's mark and the alleged infringing mark; (ii) the strength of the owner's mark; (iii) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (iv) the length of time the defendant has used the mark without evidence of actual confusion; (v) the intent of the defendant in adopting the mark; (vi) the evidence of actual confusion; (vii) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (viii) the extent to which the targets of the parties' sales efforts are the same; (ix) the relationship of the goods in the minds of consumers because of the similarity of functions; and (x) other facts suggesting that the consuming public might expect the prior owner to manufacture a product in the defendant's market or that he is likely to expand into that market. 20.3 The aforesaid decision was referred to in another decision of United States, Court of Appeals, 3rd Circuit, in Checkpoint Systems, Inc., vs. Check point Software Technologies, Inc. (269 F.3d 270). The facts were that the provider of security product and services for business under the trademark 'Cheekpoint' brought an infringement action against provider of computer network security services operating under the trademark 'Checkpoint'. The Court of Appeals found that there was no likelihood of direct market place confusion and that initial interest confusion was minimal and that the computer company had failed to establish reverse confusion. 20.4 The principle was highlighted that "where a relevant buyer class is composed solely of professional, or commercial purchasers, it is reasonable to set a higher standard of care than exist for consumers. Many cases state that where the relevant buyer class is composed of professional or commercial buyers, familiar with the field, they are alert enough not be confused by trademarks that are closely similar. Many cases state that where the relevant buyer class is composed of professional or commercial buyers, familiar with the field, they are alert enough not be confused by trademarks that are closely similar. That is, it is assumed that such professional buyers are less likely to be confused than the ordinary consumers. 20.5 The Court noted that in that case, the products of the defendants were expensive and the purchasers of those products were, for the most part, highly sophisticated and sale process was lengthy. It was further observed that the plaintiff's and defendant's products were not to be the impulse purchases, but were subject to long sales efforts and careful customer decision making. 20.6 Dealing with the judgments relied on on behalf of the plaintiff on this count, Dr. Reddy Laboratries Limited (supra) related to medical preparations which require extra care and the repercussions on account of confusion would be far reaching. The decision in Avtar Singh (supra) pertained to ready made garments and that of Jagdish Gopal Kamath (supra) was in respect of restaurant business. All these products were services were the products sold on counters or purchased by persons of average intelligence. The test applicable there could not be the tests to be applied in the present case where the goods for which the mark is registered and the class of persons would be the users are specialized one where likelihood of deception would be almost nil. Deception Ruled Out 21. There will be no gainsaying that aforestated principles would apply to the class of traders, purchasing and using the product in question, that is, the Asphalt based construction machinery. Both in terms of product and the buyers of the product, they constitute a class by themselves. 21.1 When the class of purchaser comprises of qualified and technical persons, the likelihood of easy deception stand obviated. The asphalt based machinery is a product with technical specifications. It is of customised road construction machinery. They are not the goods sold at the counter to be purchased by anyone and everyone. The placing of order of machines, it was stated, a detailed market research preceeds. Furthermore, the purchase is done by the securing finance from the financial institutions which would check the credentials of the person and the products both and would also verify the parameters of the product for which finance is sought for. The placing of order of machines, it was stated, a detailed market research preceeds. Furthermore, the purchase is done by the securing finance from the financial institutions which would check the credentials of the person and the products both and would also verify the parameters of the product for which finance is sought for. The process of buying these goods therefore, involve stringent parameters. It is doubtless that for deciding the possibility of deception, as also the degree of deception, the kind of class of persons who would purchase the product, become crucial. 21.2 This Court in Nirma Chemical Works Private Limited Vs. Nirman High School being Appeal from Order No.272 of 2009 decided as per judgment dated 19.7.2010, before the Division Bench of this court the appellant contended that the defendant Nirman Foundation Charitable Trust, by using the word 'Nirman' had infringed its trade name Nirma. 21.2.1 With reference to such controversy, the Division Bench blended the concept of the class of consumers or users with the criteria of phonetic similarity in concluding that the two words were not to operate as deceptive, "In comparing two words phonetic and visual similarity have to be ignored when one of the words or both the words have definite meanings or are in common use. If the words have no meaning i.e. they are either coined words or fancy words, phonetic and visual similarity plays a major role in determining whether the two so nearly resemble each other as it likely to deceive or cause confusion." 21.2.2 The Court having so stated, thereafter observed, "One of the aspect which is required to be considered is class of customers / consumers. In the present case, customers / consumers would be parents. They would seek admission of their children not only on the basis of name but also on the basis of reputation acquired by the institution. Parents do not walk into the school and admit their children to the school in hurry. Purchasing goods from the counter / shop cannot be compared with process of admission in educational institution. Both cannot be treated on the same footing. the students and parents who are potential end users of such activities are reasonably likely to make inquires about the management and the persons behind such activities. Their decision for taking admission in one or other institution is not going to be instantaneous or quick decision. Both cannot be treated on the same footing. the students and parents who are potential end users of such activities are reasonably likely to make inquires about the management and the persons behind such activities. Their decision for taking admission in one or other institution is not going to be instantaneous or quick decision. They are not taken on the spur of the moment. Therefore, though it is held that both 'Nirma' and 'Nirman' are not identical, even there is no scope for confusion or deception in using the word 'Nirman' by the defendants." Non-compete agreement 22. Pausing at this stage, the submission and aspect of non-compete agreement referred to by the plaintiff may be dealt with and disposed of. 22.1 Reliance was heavily placed by the trial court for granting injunction to the plaintiff in respect of both infringement of the trade mark and passing off action which agreement was executed in the year 2011, whereunder the appellant- defendant had agreed not to continue with the Asphalt based construction equipment. It was contended that the two segments of Patel family- Anil Patel and Ajit Patel agreed in respect of their area of commercial product in the construction related machines, thereby dividing the family business. This agreement contains an arbitration clause. The arbitration proceedings have been initiated by Mr.Ajit Patel by filing petition for appointment of arbitrator under the Arbitration and Conciliation Act, 1996. IAAP No.79 of 2021 is pending. 22.2 When it was submitted that in view of the above arbitration, the trial court would not have entered into merits of the non-compete agreement and could not have recorded finding in relation to its operation, the submission had substance. The trial court was not justified in entering into merits of the said agreement and amendment therein to decide in respect of entitlement of the appellant to use trade mark ‘Apollo’. 22.3 It was also the submission to be noted for its merit that even assuming that the appellants were not carrying on the business of Asphalt construction equipment since 2011, the prior use of the appellants from 1971 does not stand erased. 22.4 Not only that, noticeably, respondent No.1 plaintiff is not party to the non-compete agreement. He does not want to be bound by the terms of the agreement. The plaintiff is yet seeking to enforce the agreement. 22.4 Not only that, noticeably, respondent No.1 plaintiff is not party to the non-compete agreement. He does not want to be bound by the terms of the agreement. The plaintiff is yet seeking to enforce the agreement. From an instant point thereof, the existence of non compete agreement between the parties would not have a precluding effect on the statutory rights of the defendants to exclusively use its registered trade mark in relation to the goods in the nature of all construction machinery, and to enforce statutory rights available in that regard. Origin of use 23. The preceding discussion propounds that the two registered label marks 'Apollo' used by the plaintiff and the defendant are distinct in their impression, projection and the look, and that having regard to the kind of goods for which they are registered and the class of purchasers and users, there is no possibility of causing of confusion and elements of deceptive similarity are not present. Having so held, though may not be necessary, the aspect of prior user of the trade mark may be delved into. 23.1 The origin of the use of trademark ‘Apollo’ is traced since the year 1971-72. The appellants through Mr.Ajit Patel had been using the mark Apollo in course of the business of very product Asphalt based equipment. It was at that time, there was a partnership firm in the name of Apollo Engineering Company. Thereafter came to be incorporated companies such as Gujarat Apollo Industries Limited, Apollo Earthmovers Limited and Apollo Construction Equipment Limited. 23.2 The prior use of the defendants, therefore could be said to have been established through such evident aspects, even though the plaintiff may be claiming the use since 1986 and the registration accordingly. The point of time was much earlier when the side of the defendant started the use of Apollo for the product in question which business gradually bifurcated with passage of years, in the two segments of one family. 23.3 The trial court indeed recorded thus, “The said partnership was entered into on date 17.9.1976 and Patel Ajit Tribhuvandas seems to be one of the partners. However this court could not find that the said partnership firm was dealing with Asphalt based construction equipment. Although it appeared that the said partnership firm used the word Apollo but again nowhere it transpires that the firm registered word ‘Apollo’.” Shared User 24. However this court could not find that the said partnership firm was dealing with Asphalt based construction equipment. Although it appeared that the said partnership firm used the word Apollo but again nowhere it transpires that the firm registered word ‘Apollo’.” Shared User 24. In Halsbury’s Law of England, 4th Edition, Volume 48, in Chapter Title ‘Trade Marks, Trade Names and Designs’ recognises in para 179 the concept of concurrent use and shared reputation. It says that "in certain circumstances two or more traders may acquire independent rights to carry on trade side by side using the same or similar names or marks, when the use of such names or marks by third person without any such special right would undoubtedly constitute passing-off." 24.1 It necessarily follows from the above dictum that concept of shared reputation and continuance of such reputation over the period of time, is more akin and truth bearing, where the both the users of the trade marks are registered owners. They enjoy concurrent proprietary rights in using their trade mark which may in general stance, could be said to be apparently similar from standpoint of a commoner’s understanding. Two registered owners may share the goodwill of business by independent use of their trade marks and achieve a natural expansion of their respective business. The use of trade marks by both the owners could be said to be an honest use, where the element of deceit from either side to the other side would be nil. Both carry on their business on the basis of their trade mark independently, honestly, to acquire goodwill and reputation in the market. 24.2 The Halbury’s laws explained on the basis of decision of Habib Bank Limited Vs. Habib Bank AG Zurich [(1981) 2 All England Reports 650], which observed, “A plaintiff’s acquaintances in a defendant’ use of a name or mark can result in the defendant acquiring goodwill of his own in the name or mark so that i.e. becomes unconscionable to allow the plaintiff to bar the defendant’s continued use of that name or mark in a passing-off action.” 24.2.1 In Habib Bank Limited (supra), the court of appeal lucidly discussed the submission about the shared reputation or goodwill as of an honest and unchallenged concurrent user. In that case, two companies both connected with well known Habib Banking Family were, perfectly, honestly and properly making a concurrent user of that family name in the manufacturing of substance which was champagne, on the basis of recognised description. 24.2.2 The doctrine highlighted was, “Where you find that two traders have been concurrently using in the United Kingdom the same or similar names for their goods or businesses, you may well find a factual situation in which neither of them can be said to be guilty of any misrepresentation. Each represents nothing but the truth, that a particular name or mark is associated with his goods or business.” 24.3 On appreciating certain facts in the present case, it is possible to apply the concept of concurrent use and shared reputation of the trade mark Apollo, even if considered on demurrer as regards the similarity or otherwise of the two marks, for the defendant. The origin of the trade mark Apollo is traceable to joint family business of Mr.Anil Patel and Ajit Patel since 1971-72. The different construction companies and sister companies came to be found in the family business in which the said family persons had their shares. The device mark Apollo came to be assigned by one of such company in favor of the defendant company. The defendant Apollo Infratech Limited had applied for registration of mark Apollo to which the Gujarat Apollo Industries had filed opposition which was withdrawn, the trade mark ‘Apollo’ was registered in favor of the defendant company and since then it has been using the same in its market operations. 24.4 Having been granted the device mark 'Apollo' from the year 2008, thus, in the sequence of events relating to the grant and use of the trade mark 'Apollo' by the parties, there exist acquiesense as well as long continued user by the defendant, of the trade mark 'Apollo', alongwith the plaintiff. An element of misrepresentation could be said to be missing on part of the defendant when at particular juncture, the opposition by the plaintiff to the registration of the mark in favor of the defendant was given up by the plaintiff. An element of misrepresentation could be said to be missing on part of the defendant when at particular juncture, the opposition by the plaintiff to the registration of the mark in favor of the defendant was given up by the plaintiff. In view of the acquiescence as well as the conduct on part of the plaintiff and in the total facts obtained above, the present case obtained is the state of shared goodwill between the two parties- the registered owners of the trade marks. 24.5 An English decision in Gor-Ray Ltd. Vs. Gilray Skirts Ltd. [(1952) 69 RPC 99], the proposition of law was stated that where two or more persons are registered concurrently as proprietors of the same mark or similar marks, any of the registered proprietors by himself sue for infringement against any person who is not so registered. The use of mark by another concurrently registered proprietor is not an infringement. This proposition is akin to what flows from Section 30(2)(e) of the Trade Marks Act, 1999. Acquisence, Waiver 25. Section 33 of the Act mentions about the effect of acquiescence. Not only under the Trade Mark Act, even in terms of general principle, where a person is found to have acquiesced in something, he would not be entitled to turn around subsequently. Acquiescence is a kind of estoppel. 25.1 In M/s. Power Control Appliances and Others Vs. Sumeet Machines Private Limited, [1994 (2) SSC 448], the Supreme Court discussed about the applicability of doctrine of acquiescence as defence under the Trade Marks Act, "26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White, Sr. John Romilly said: "It is important to distinguish mere negligence and acquiescence." Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J. G.) & Co. v. Boehm". If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J. G.) & Co. v. Boehm". The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill." (para 26) 25.2 A proprietor of the trade mark would be distentitled to contest the validity of registration of subsequent trade mark if he has acquiesced in the use of subsequent trade mark. Acquiescence is also a waiver. It was stated that waiver may sometimes resemble a form of election, and sometimes be based on ordinary principles of estoppel. The Supreme Court in Indu Shekhar Singh Vs. State of Uttar Pradesh [ (2006) 8 SCC 129 ] observed as to what would amount to respondent waiver, they, therefore, their right of option. Once they obtained entry on the basis of election, they cannot be allowed to turn round and contend that their conditions are illegal. The term waiver is also explained in the context of trade mark law by the Supreme Court in Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel[ (2006) 8 SCC 726 ] quoting Halsbury's Laws of England [4th Edn., Volume 16, 1471]. 25.3 The above principles apply to the conduct of the plaintiff in this case and stand to further discount its entitlement to seek the relief of injunction. The plaintiff could be said to have acquiesced and abandoned his right when the opposition from its side to the registration to the trade mark No. 1698844 of the defendant, came to be unconditionally withdrawn in the year 2010 and 2011. When Application No. 4460435 of defendant no.3 was considered and granted, at that time also, there was no opposition from the plaintiff's side. The plaintiff abandoned all opposition from his side to accept the label mark 'Apollo' as coined and used by the defendant. Secondly, the defendants have been using the label mark 'Apollo' since more than a decade. When Application No. 4460435 of defendant no.3 was considered and granted, at that time also, there was no opposition from the plaintiff's side. The plaintiff abandoned all opposition from his side to accept the label mark 'Apollo' as coined and used by the defendant. Secondly, the defendants have been using the label mark 'Apollo' since more than a decade. The style and format of label 'Apollo' used by the defendants is very well known to the plaintiff who did not took any action for long time. Suppression of Fact 26. The case of suppression of material facts against the plaintiff could be successfully demonstrated by the defendants. The plaintiff could be said to be guilty of suppressio vari by not disclosing that Application No. 1698844 for registration of trade mark ins Class 7 made on 13.06.2008 was not opposed by the plaintiff and that its predecessor had withdrawn the opposition unconditionally, as stated above, as per letters dated 10.04.2010. The opposition which was made and withdrawn was on the same range of grounds, now sought to be agitated. 26.1 The second non-closure was with regard to para 2.2 of Deed of Assignment dated 09.04.2003 wherein Gujarat Apollo Industries Ltd. or any of their group companies came to be expressly given right to use the word 'Apollo' in combination with a logo not identical or deceptively similar to trade mark 1598383. The appellant no.1 was incorporated in the year 2007 and was entitled to benefit of the said clause. While putting forth case in the plaint and in the injunction application, did not reveal, it could be submitted by the appellants. 26.2 It is thus trite principle that conduct of suppression of facts which have bearing on the rights of the parties, will also be a dis-entitling factor. Neither Infringement, Nor Passing Off 27. While concluding the discussion basic proposition law may be recapitulated with regard to the infringement and passing-off and the criteria to be applied thereto. In Ruston and Hornsby India Limited (supra), the Supreme Court laid down, “In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. In Ruston and Hornsby India Limited (supra), the Supreme Court laid down, “In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions.” (para 7) 27.1 In Renaissance Hotel Holdings Inc. (supra), it was thus stated, “It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which is a colourable imitation of the plaintiff’s registered trade mark. It has further been held that though the get up of the defendant’s goods may be so different from the plaintiff’s goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e., in an infringement action, an injunction would be issued as soon as it is proved that the defendant is improperly using the plaintiff’s mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases. This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant’s trade mark is identical with the plaintiff’s trade mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion.” 27.2 The law that deceptively similar or colourable imitation of the trade mark becomes basis of infringement plaint and with further degree couples with the deceit element, becomes ground for action in passing-off, has different triggers when it is to be applied against a registered trade mark owner. In case of registered trade mark, the concept of colourable use may not arise, as the registered owner is entitled to use the trade mark, which is registered for him, as of right and with exclusive right. In case of registered trade mark, the concept of colourable use may not arise, as the registered owner is entitled to use the trade mark, which is registered for him, as of right and with exclusive right. In this case the infringement is not established. 27.3 Passing-off action is also not established taking the two marks as a whole, lacking in deceptivity in relation to the goods and class of consumers. It is not possible to view that the class of consumers and traders would be deceived while purchasing the product in question. The principle is that name of the defendant on its goods in an indication that there is no case of passing-off even if the trade dress is similar. In the present case the defendants have been identifying themselves with various distinguishing features in the mark to trade their goods. A further condition on this count could also be considered. 27.4 It is to be also stated that the respondent No.1- plaintiff has not been able to show any actual proof of confusion. As against this, the appellants have placed on record from its consumers showing that the respondent has its own niche in the market. It could be said that record did not establish the case of confusion amongst the competing products, resultantly, discarding the merits in the case of the plaintiff. Conclusions 28. Both on facts and in law, neither the case of infringement is made out by the plaintiff nor could be said to establish the act of passing off on the part of the defendants. No prima facie case is made out. The trial court could not have granted injunction in favour of the plaintiff. 29. In light of the foregoing reasons and discussion and propositions of law highlighted, following conclusions are drawn, (i) The defendants are registered owners and users of the trademark "Apollo", for which they have exclusive statutory right to use. (ii) The registration of the trademark for the defendants is prima facie valid under section 30(1) of the Act. (iii) Non compete agreement will not have the effect of obliterating exclusive statutory right available to the appellants-defendants to use their registered trade marks. (iv) No exceptional circumstances such as the trademark having been registered by fraud exist to doubt the prima facie validity of the registration. (iii) Non compete agreement will not have the effect of obliterating exclusive statutory right available to the appellants-defendants to use their registered trade marks. (iv) No exceptional circumstances such as the trademark having been registered by fraud exist to doubt the prima facie validity of the registration. (v) Applying the test enumerated in Lupin India Ltd. (supra), no injunction could have been granted against the defendant from exercising their statutory right to use the trademark. (vi) The mark of the plaintiffs and the defendants are registered as a whole, no separate parties separately registered. The plaintiff cannot claim exclusivity to a particular part, more particularly, the word ‘Apollo’ which is not separately registered. (vii) The registered trademark of the plaintiff on one hand and registered trademark of the defendants on the other hand, since are device or label marks comprising of the generic word "Apollo", the tests to determine about their deceptive similarity would have to be accordingly applied. (viii) As held above, the total projection of two trademarks in their style of presentation, style of fonts, colour combination as well as other attendant features become clearly distinguishable. (ix) The two registered trademarks are not capable of causing confusion in the minds of the users and traders, more particularly, having regard that the goods to which they relate are specialized goods of the kind of construction machinery to be purchased and used by a special technical class of purchasers and users engaged in the construction activity. (x) In the cumulative facts obtained as discussed above, the defendants could also be said to have acquired reputation in respect of use of their registered trademark for the goods in question, use for the parties would be said to be concurrent. (xi) Their exist an element of shared reputation. In this view, clear case of prior user by the plaintiff of its mark is not established. (xii) The two marks are not deceptively similar so as to create confusion amongst the class of users, so as to entitle plaintiff to seek relief on the count of passing off. No element of dishonesty is shown on the part of the defendants. (xiii) The conduct whereby the predecessor of the plaintiff holding the plaintiff's registered mark gave up the opposition to the registration of the trademark of the defendants, it amounted to act of acquiescence and waiver. 30. No element of dishonesty is shown on the part of the defendants. (xiii) The conduct whereby the predecessor of the plaintiff holding the plaintiff's registered mark gave up the opposition to the registration of the trademark of the defendants, it amounted to act of acquiescence and waiver. 30. The impugned order dated 7.1.2022 below Exhibit 5 read with Exhibit 5(A) in Trade Mark Suit No.1 of 2021 passed by learned 6th Additional District Judge- Commercial Court, Mehsana is hereby set aside subject to observance of the above conditions by the defendants. 31. Even as the Court has held that two device marks of the plaintiff and defendants are distinct in their appearance and resemblance, not capable of creating confusion amongst the class of persons who would use the product labelled with the said trademarks, in order to obviate and rule out and such possibility, in order to balance the rights of the parties further, pending the outcome of the suit, it will be proper if the following conditions are imposed by the appellant. 32. Resultantly, while setting aside the impugned order, following conditions are imposed, (i) The appellant shall mention the name of their firm while promoting or advertising the product "Asphalt base construction machine" while using their trade mark device. (ii) The appellant shall maintain proper accounts of the sale of the said goods, namely, Asphalt Base Construction Machinery under the trademark device "Apollo" and shall file such accounts in the Commercial Court below. Both the appeals are allowed in the aforesaid terms. Civil Applications does not survive. FURTHER ORDER At this stage, learned senior advocate Mr. Mihir Thakore for respondent No.1-original plaintiff submitted that interim order granted by the Commercial Court below was operated between 10.01.2022 to 8.2.2022 and thereafter during the pendency of the present Appeal from Order before this court. In that view and in order to enable the respondent to approach the higher forum, the interim order of stay granted by the court below and operated as above may be extended for six seeks. The prayer was objected to on behalf of the appellants. In the facts and circumstances of the case, it is provided that the directions given hereinabove and operative part of this judgement, shall remain in abeyance till 23.01.2023.