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2023 DIGILAW 494 (RAJ)

Baid Rotomoulders Pvt. Ltd. v. S. M. Industries

2023-02-13

SUDESH BANSAL

body2023
JUDGMENT : SUDESH BANSAL, J. 1. By way of instant Civil Miscellaneous Appeal, appellant-plaintiff (hereinafter referred to “the plaintiff”) is praying for grant of temporary injunction against the respondent-defendant (hereinafter referred to “the defendant”) for not using the trade name ‘POLYGON’ for manufacturing and sale of water tank and PVC pipes, container water storage, hose pipes, DHPE pipes, flexible pipes and conduit pipes, rigid PVC etc. because this trade name is deceptively and phonetically similar to its registered trade name of ‘POLYCON’ and has prayed to set aside the impugned order dated 12.10.2015 whereby and whereunder plaintiff’s application for temporary injunction was dismissed by the Trial Court. 2. Heard learned counsel for both parties, perused the impugned order and record placed before this Court. 3. It appears from the record that the plaintiff instituted civil suit for permanent injunction alongwith an application for temporary injunction on 13.02.2015 on the ground of infringement/passing off his registered trademark ‘POLYCON’ against the defendant alleging inter-alia that on 10.12.2014, it came to knowledge of plaintiff-company that defendant-company has started manufacturing and selling products of PVC pipes, hose pipes, DHPE pipes, flexible pipes and conduit pipes etc. by using the trademark ‘POLYGON’ after copying the trademark of plaintiff ‘POLYCON’ and since the trademark of plaintiff is registered; both trademark are deceptively and phonetically similar, the use of such trademark by respondent is illegal. Plaintiff alleged that the defendant has started to use the trademark ‘POLYGON’, dishonestly in order to gain the benefit of the goodwill of the registered trademark of plaintiff and thereby the defendant is misleading customers, traders and public. Plaintiff alleged that such action of defendant is infringement of registered trademark of plaintiff and since plaintiff is prior user of his trademark, ‘POLYCON’ therefore starting the business by the defendant in the trademark of ‘POLYGON’ is illegal and against provisions of Trademarks Act, 1999, accordingly, the plaintiff prayed for to restrain the defendant by way of permanent injunction and until decision of suit, by way of temporary injunction not to use trademark of Polygon for his business activities. 4. 4. In counter, defendant filed reply to the application for temporary injunction contending that the defendant had already applied for registration of trademark ‘POLYGON’ Class 17 and he is indulged and carrying out business using the trade name ‘POLYGON’ since years to sell Oil Seals, Gaskets, Ruber Parts, Gutta, Percha, Gum, Asbestos, PVC Pipes, Hose Pipes, HDPC Pipes, Flexible Pipes, Conduit Pipes, Rigid PVC Pipes, PVC Sleevings, Laminated Sheets, Packaging, Stopping & Insulated Material PVC Casing and Caping, Mudguard, Visor, Side Panel, Side Box for wheeler, Seat Cover & Plastics Parts, Mica and goods made from these materials etc. Defendants also stated that its sister concern firm through owner Manoj Agarwal has already got registration of the trademark ‘POLYGON’ Class-9. Counsel for defendant pointed out that the plaintiff has no registration in the trademark in the name of ‘POLYCON’ Class-17 and its application No. 2198072 dated 15.09.2014 for registration is yet pending before the Registrar of Trademarks, wherein the defendant has submitted an objection/opposition. It was pointed out that the plaintiff has misleaded the Court as Trademark ‘POLYCON’ No. 2198072 in Class-17 of plaintiff is still unregistered, therefore, claiming injunction on the ground of infringement of registered trademark, is against provisions of Section 27 (1) of the Trademarks Act, 1999. As far as registration of Trademark ‘POLYCON’ of plaintiff as indicated in para 6 of the application, the trademark ‘POLYCON’ No. 489207 and ‘POLYCONGOLD’ No. 808778 are device mark in Class 11 for molded water storage tanks and ‘POLYCON’ registration No. 2198070 is restricted by the Registrar for sale of goods in Rajasthan only. Defendant has clearly stated that the registered office of defendant is situated at Delhi and no cause of action within the jurisdiction of Jaipur Metropolitan City has arisen, therefore the suit is barred by territorial jurisdiction under Section 20 of CPC. 5. This Court finds that as far as infringement of the registration of plaintiff’s trademark ‘POLYCON’ is concerned, it is undisputed that the registration of plaintiff in the trade name of ‘ POLYCON’ in Class-17 registration No. 2198072 is still pending under objection and opposition by the defendant and the plaintiff wrongly claimed injunction on the ground of infringement. 5. This Court finds that as far as infringement of the registration of plaintiff’s trademark ‘POLYCON’ is concerned, it is undisputed that the registration of plaintiff in the trade name of ‘ POLYCON’ in Class-17 registration No. 2198072 is still pending under objection and opposition by the defendant and the plaintiff wrongly claimed injunction on the ground of infringement. The registration of plaintiff in the trade name ‘POLYCON’ and ‘POLYCONGOLD’ as referred in Para 6 of the application for temporary injunction are all different Class and device marks where the registration has been granted with condition/disclaimer and the registration No. 2198070 is in Class 21, which is restricted for sale of goods in Rajasthan only. 6. Learned counsel for appellant-plaintiff has argued that on the ground of passing off action, the plaintiff is entitled to seek injunction, although no detailed and specific pleadings in respect of passing off action are pleaded as he submits that the case of infringement of registered trademark should be treated to be included the action of passing off since same is intrinsic part of infringement. 7. In respect of passing off action, defendant has stated in his reply to the application for temporary injunction that the defendant is indulged in carrying on the business to manufacture and sale of Oil Seals, Gaskets, Ruber Parts, Gutta, Percha, Gum, Asbestos, PVC Pipes, Hose Pipes, HDPC Pipes, Flexible Pipes, Conduit Pipes, Rigid PVC Pipes, PVC Sleevings, Laminated Sheets, Packaging, Stopping & Insulated Material PVC Casing and Caping, Mudguard, Visor, Side Panel, Side Box for wheeler, Seat Cover & Plastics Parts, Mica and goods made from these materials etc. since years and its sister concern has registration of trademark ‘POLYGON’ in Class 9 since 11.01.2002. 8. Firstly, the issue in respect of passing off action and who is the prior user, is a matter of evidence and secondly, no material has been placed on record by the plaintiff to prove that the plaintiff is carrying on manufacturing and selling products in the name of ‘POLYCON’ in the open market since which year and since how long. Firstly, the issue in respect of passing off action and who is the prior user, is a matter of evidence and secondly, no material has been placed on record by the plaintiff to prove that the plaintiff is carrying on manufacturing and selling products in the name of ‘POLYCON’ in the open market since which year and since how long. There is no material on record that the plaintiff has acquired so much goodwill and reputation by using the trademark ‘POLYCON’ in the market that the respondent dishonestly in order to ride over the reputation of the plaintiff’s goodwill, started his business by using the trademark ‘POLYGON’ though for different type of products, and thereby caused any damage to the plaintiff either monetary or to its reputation. The law in respect of seeking injunction on the ground of passing off action is consistent that no one can be permitted to encroach upon the reputation and goodwill of other parties. Once the plaintiff failed to prove prima facie acquisition of goodwill of ‘POLYCON’ in market, temporary injunction on passing off action can not be granted. The business of defendant cannot be put at halt on the basis of assumptions & presumptions merely askance of plaintiff. This Court finds support to its findings, by the ratio decidendi of the celebrated judgment of Hon’ble Supreme Court in case of T.V. Venugopal vs. Ushodaya Enterprises Ltd. and Another, (2011) 4 SCC 85 . 9. Defendant has stated that its sister concern firm in the proprietorship of Shri Manoj Agarwal has registration of trademark ‘POLYGON’ in Class-9 and rather plaintiff copied the name of ‘POLYCON’ and sought to register the name of ‘POLYCON’ before the Registrar, however when the defendant came to know about it, he immediately submitted his opposition and thereafter the plaintiff has instituted the present suit and application for temporary injunction as a counterblast. Thus, at this stage, it may not be assumed that the defendant started its business by using the name of ‘POLYGON’ in the year 2014 only. However, it is all matter of evidence as to who is the actual prior user of their respective trade name, ‘POLYCON’ or ‘POLYGON’. 10. Thus, at this stage, it may not be assumed that the defendant started its business by using the name of ‘POLYGON’ in the year 2014 only. However, it is all matter of evidence as to who is the actual prior user of their respective trade name, ‘POLYCON’ or ‘POLYGON’. 10. Defendant has also pointed out that before the Trial Court, no ad interim injunction was granted in favour of plaintiff and after dismissal of his application for temporary injunction vide impugned order dated 12.10.2015, no interim injunction has been granted in favour of plaintiff till date and since the plaintiff has not proved prima facie that his reputation or business has suffered loss or damages in any manner by continuing and carrying out the business by the defendant company since years with the trademark of ‘POLYGON’ nor there is any evidence to show that the defendant copied the trademark ‘POLYGON’ dishonestly or malafidely nor it is established that the plaintiff is prior user of the trademark ‘POLYCON’, therefore at this stage, no prima facie case stands in favour of plaintiff and impugned order dated 12.10.2015 warrants no interference by this Court. 11. This Court finds force in the contention of learned counsel for defendant and does not find any material to hold prima-facie case of infringement/passing off action of plaintiff, against the defendant. The fact finding recorded by the Trial Court in the impugned order while discussing the issue of prima facie case are based on appreciation of the material on record and are well within its jurisdiction and parameters of law, as such this Court is not inclined to interfere with the such fact finding, moreso in absence of any additional or other material on record. 12. As far as ingredients of balance of convenience and irreperable injuries are concerned, loss or damages to plaintiff are in anticipation only and no material have been placed on record, which prima facie proves the actual loss or damages to the business and reputation of plaintiff, by continuing the business of defendant. The balance of convenience has a vital role to play in matters of injunction in respect of Intellectual Property Rights (IPR). On facts, neither balance of convenience tilts in favour of plaintiff nor there is any irreperable injury or loss to the plaintiff, if the temporary injunction is not granted. 13. The balance of convenience has a vital role to play in matters of injunction in respect of Intellectual Property Rights (IPR). On facts, neither balance of convenience tilts in favour of plaintiff nor there is any irreperable injury or loss to the plaintiff, if the temporary injunction is not granted. 13. As a final result, without interfering with the impugned order dated 12.10.2015, the instant misc. appeal is hereby dismissed. However, it is hereby observed that the finding recorded in the impugned order by the Trial Court or in the present order by this Court, would not affect the trial of suit on merits and the suit shall be decided independently on the basis of evidence adduced by both parties. The Trial Court is expected to expedite the trial of suit. 14. Stay application and any other pending application, if any, stand disposed of.