AGROMORE P LIMITED Vs. CHEMBOND CHEMICALS LIMITED

JUDGEMENT

(1.) THIS is a notice of motion taken out by the plaintiff. The plaintiff has filed this suit claiming therein that it is a company incorporated under the Companies Act and that it carries on business of the manufacture and sale of wide range of Industrial and Agro Chemical Products and in export market. The plaintiff claims that it is leading and well-known manufacturer and dealer in wide range of Industrial and Agro chemical products and are carrying on business for the last nearly 4 decades throughout the country and in export markets. It claims that it is manufacturing and marketing their products under the distinctive trade-mark. It claims that it has 90 products. It claims that the annual sale turnover of all the products of the plaintiff during the last ten year ranges between Rs. 1. 45 crores and Rs. 2. 58 crores respectively. It is claiming that one of the Industrial Chemical Products of the plaintiff is manufactured and marketed by them under the trade mark RODINE. The product of the plaintiff bearing the trade mark RODINE is used in the form of Acid Inhibitor for Pickling and for Industrial cleaning. It is claimed that the plaintiff has manufactured the product RODINE under strict international standard of quality and is marketing the said products continuously, extensively and uninterruptedly throughout the country and in certain export markets for the last nearly four decades. It is further claimed that the trade mark RODINE has come to be exclusively identified and associated by members of trade and consumers with the plaintiff and no one else. The plaintiff has annexed to the plaint a statement giving annual sales turnover of all the products and product bearing the trade mark RODINE for the period from December, 1960 to March, 1998. In the affidavit filed in support of the Notice of Motion, in paragraph (7) it is claimed that the plaintiff has been manufacturing and marketing the product bearing the trade-mark RODINE on extensive scale in India and export markets since 1959. The plaintiff further claims that on 8th April, 1994, the plaintiff made an application for registration of the trade mark RODINE in their name in Class-I under No. 626174 in respect of chemical product used in industries under the 4th Schedule to the Trade and Merchandise Marks Act, 1958. The plaintiff further claims that they are also proprietor of the trade-mark ROTODINE. The trade mark ROTODINE has been registered in India under No. 378342 dated 13th July, 1981 in Class 1 of the Fourth Schedule to the Trade and Merchandise Mars Rules, 1959. The plaintiff claims that in or about January, 1998, it came to the knowledge of the plaintiff that the defendant No. 1 was selling an identical product as that of the plaintiffs product RODINE under the trade mark RODINE 58. Therefore, the plaintiff issued a notice dated 12th January, 1998 to the defendant No. 1 pointing that use of the trademark RODINE by the defendant No. 1 amounts to passing off and calling upon the defendant No. 1 to discontinue the use of the trade mark RODINE. As the defendant No. 1 did not comply with the notice, the plaintiff filed this suit claiming that the plaintiff being the much prior user and the prior applicant for registration of the trade-mark RODINE and the prior registered proprietor of the trade mark of the ROTODINE and the defendant No. 1s trade mark being deceptively identical, phonetically, visually and structurally similar to the plaintiffs trade mark RODINE and the registered trade mark ROTODINE, the plaintiff has a right to prevent the defendants from manufacturing and selling its industrial chemical products under the identical trade mark RODINE. The action of the plaintiff, therefore in so far as the trade mark RODINE is concerned, is for passing off and in relation to their trade-mark ROTODINE, it is for infringement of their registered trade-mark. In substance, therefore, the case disclosed by the plaintiff in the plaint is that they are using the trade mark RODINE right from the year 1959. In 1994, they have applied for registration of that trade-mark and therefore they have acquired a common law rights to prevent the defendants from passing of its products by using the trade mark RODINE as that of the plaintiff. It is further the case of the plaintiff that the trade mark of the defendant RODINE 58 is deceptively similar to the registered trade mark of the plaintiff namely ROTODINE and therefore the defendants have infringed the registered trade-mark of the plaintiff and therefore, on both these counts the plaintiffs are entitled to a perpetual injunction against the defendants preventing them from selling their product under the trade mark RODINE.

(2.) THE plaintiffs by this notice of motion claim temporary injunction in the same terms in which a perpetual injunction is claimed in the plaint.

(3.) THE defendants filed their first affidavit in the notice of motion, which is dated 29th June, 1999. The defendants disputed the claim of the plaintiffs that it is using the trade mark Rodine exclusively in proprietary rights since 1959. The defendants contend that a U. S. based company having world wide presence by name Amchem Products Incorporated was the inventor and the proprietor of the know how and the trade name of the product since more than four decades. The said company was the proprietor in India of the registered trademark Rodine No. 117735 (Rodine) since 5th January, 1946. It is further claimed that the said company had invested in the plaintiff and had permitted the plaintiff in or about 1963 to use its knowhow and trade mark of the product in question and for that purpose, the company had on 15th May, 1963 formally assigned its trade mark with a right to obtain reassignment to the plaintiff. It is claimed that the plaintiff by an agreement dated 16th August, 1973 had reassigned the trade mark to the said company and by an agreement of the same date namely 16th August, 1973 the said company granted the plaintiff permissive right to use the trade mark Rodine along with other trade mark. It is further claimed that in or about 1980 World-wide operation of the said US company Amchem including the said product and other were acquired and taken over by Henkel product and since then. Henkel is the proprietor of knowhow and the trade mark of the said product. It is claimed that on or about 26th December, 1988, the formal merger took place of Amchem product and Parker Chemical Company into Henkel Corporation. It is further claimed that Henkel has formed a joint venture company in India with the defendant and has granted to the defendant No. 1 with Reserve Bank of India permission, rights to use the know how and trade name of the product in question by an agreement. It is claimed that the defendant No. 2 is thus exclusively entitled to the use of the knowhow and trade name of the said product under licence from the owner and proprietor. According to the defendants, it is the plaintiffs/company, which are pirating and are in default and are liable to be dealt with in accordance with law. The defendants along with their affidavit have filed a copy of an agreement dated 15th May, 1963, which shows that number of trade mark including the trade mark Rodine were assigned by the Amchem Corporation to the plaintiff. The defendants have also filed with their affidavit in reply a copy of an agreement dated 16th August, 1973, by which several trade-marks including the trade mark Rodine were reassigned by the plaintiffs to Amchem Corporation. After this affidavit in reply was filed, on behalf of the plaintiff rejoinder was filed, which is dated 6th August, 1999. In rejoinder, the plaintiffs admitted the fact of assignment of trademark by Amchem to the plaintiffs in the year 1963 and reassignment of the trade-mark by the plaintiff to the said Amchem Corporation. It was claimed, however, that the assignment deed has not been recorded with the Trade mark Registrar. It is also claimed that the plaintiff/company is the owner of the trade mark Rodine, which is being used by it for the last 40 years, without any obstruction and its application for registration of that trade-mark is also pending. One more affidavit-in-rejoinder came to be filed by the plaintiff dated 30th August, 1999. In that affidavit, it is claimed on behalf of the plaintiff that the said Amchem Corporation as also its successors are not the owner of the impugned mark Rodine in India since they have not used the said trade-mark and also in view of the fact that the registration of the said trade mark has not been renewed by them from the year 1977. The plaintiffs have reiterated that the plaintiffs have been using the trade-mark Rodine since the year 1959 continuously. The plaintiffs have filed one more affidavit dated 14th August, 2000 reiterating their claim that the plaintiffs have been using the trade mark Rodine from 1959. It is stated in that affidavit that Even after 1973 royalty statement continued to be sent to Amchem by the plaintiff and Amchem was well aware of the use of the trademark Rodine by the plaintiff even beyond 1978 i. e. even after royalty payments ceased. The plaintiffs claim that reassignment of the trade-mark by the plaintiffs to the said Amchem Corporation was merely a formality. In this affidavit, it is claimed that Amchem abandoned the trade-mark by it conscientious and deliberate act of non-renewal of the trade-mark Rodine in 1977 when it became due. The defendants have claimed in their reply that the plaintiff is guilty of suppressing relevant and material facts from the Court and therefore, it is not entitled to any temporary injunction, grant of which is in the discretion of the Court. According to the defendants, Henkal, which is a successor of Amchem Corporation is a necessary party to the suit and as Henkel Corporation has not been joined as a defendants in this suit, the suit is bad for non-joinder of necessary party and therefore for these reasons also the plaintiff is not entitled to temporary injunction, which it is seeking by this notice of motion.