WHEELS INDIA Vs. NIRMAL SINGH

JUDGEMENT

(1.) The appellant filed a suit for infringement of trademark, passing off, rendition of accounts etc. against the respondents in respect of wheel covers for use in motor vehicles and other allied and cognate goods being used as accessories in such motor vehicles under the trademark PRINCE. The appellant also filed an application seeking interim relief under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (the said Code for short). The claim of the appellant was predicated on a registered trade mark since 27.09.2004 with the allegation that the respondents had come into the trade subsequently to tarnish the reputation and goodwill of the appellant. An interim order was granted in favour of the appellant on 02.06.2006. However, on the respondents moving an application under Order 39 Rule 4 of the said Code, interim order was modified on a statement of the counsel for the appellant that the appellant had no objection if the respondents continue using their firm name as PRINCE Auto Industries but they should not use the trademark PRINCE. The said two applications for stay and vacation of stay were, thereafter, decided in terms of the impugned order dated 15.10.2009. The application filed by the appellant under Order 39 Rules 1 and 2 of the said Code was dismissed and the interim orders were vacated. The present appeal has been preferred against the said order.

(2.) A reading of the plaint filed by the appellant shows that the appellant claims continuous, open and extensive use of the mark PRINCE since April, 2001 with huge sales though the mark PRINCE is stated to have been registered on 27.09.2004 in respect of the accessories used in cars included in Class 12. The appellant claims to have come to know in May, 2006 that the goods of respondents were in the market with the identical trade mark PRINCE. Respondents filed their written statement and contested the pleas raised by the appellant. The respondents claimed that R-2 had adopted the trade mark/trade name PRINCE Auto Industries in the year 1998 which was much prior to the alleged adoption of the trademark PRINCE by the appellant in the year 2001. The respondents alleged suppression of facts by the appellant. The most important suppression is stated to be non dis-closure of the fact that the appellant was one of the authorized stockiest of R-2 since the year 2001 and, in fact, subsequently had entered into the written agreements dated 19.08.2002 and 20.09.2002 in that capacity. The registration of the mark by the appellant is alleged to be fraudulent soon after R-2 ceased to have any business dealing with the appellant on account of the alleged defaults in payments due to R-2. The respondents have filed documents in support of the plea including the appellants application for registration to the sales tax authorities in September, 2001 as distributor of R-2 which fact is endorsed on the sales tax certificate of the appellant.

(3.) In order to arrive at the conclusion, learned Single Judge, in our considered view, has rightly framed the question as to whether the appellant being a prior user since 1998 of the business name PRINCE Auto Industries with emphasis on the mark Prince be deprived and divested of its rights to use the trademark/trade name PRINCE even though there is a close relationship and nexus between the trademark and trade name. The other aspect which the learned Single Judge has examined relates to the allegation of suppression of material facts. The factor which has weighed with the learned Single Judge is complete suppression in the plaint of the written agreements dated 19.08.2002 and 20.09.2002 whereby the appellant agreed to be the authorized stockiest of R- 2. There is neither a whisper of these agreements in the plaint nor these documents were filed with the plaint.