Manmohan Singh, J. (Oral)

1. The plaintiff has filed the suit for permanent injunction restraining infringement of trademark, passing off, rendition of account, delivery up etc. against the defendant – M/s Navodya Exim Pvt. Ltd.

2. The case of the plaintiff is that the plaintiff company is engaged in the business of manufacturing, marketing and selling of Aluminum composite Panel, Plywood, Block Boards, Wood Doors, Window Frames, Veneers, Flush Doors, Lumber Metallic Laminates, Sun Mica and Nuts, Bolts, Screws, Washers, Leaf Springs, Clips, U.J. Cross, Steel Balls, Control Cables, Locks, Spokes and Rings, Aldrops, Latches, Channel, Door Stops, Hinges, Window and Door Fittings bearing trade mark ALOMAX, which falls in the Class-6 & 19 of the classification of goods under Schedule IV of the Trade Marks Act, 1999. The said trade mark is being used by the plaintiff since 2000.

3. The plaintiff is the registered proprietor of the trade mark ALOMAX for Plywood, Block Boards, Wood Doors, Windows Frames, Veneers, Flush Doors, Lumber Mettalic Laminates, Sun Mica in Class-19 vide No.1321329. The plaintiff’s application for registration in Class-6 was pending at the time of filing of the suit.

4. The case of the plaintiff against the defendant is that the defendant has applied for registration of the trade mark ALOCOMAX in the same category of goods falling in Class-6 & 19 of the classification and both trademarks, ALOMAX and ALOCOMAX are deceptively similar and such use of the trade mark by the defendant would constitute infringement of registered trade mark of the plaintiff. It was stated in the plaint that the said trade mark ALOCOMAX, adopted by the defendant with the mala fide intention and ulterior motives with a view to calculate deception and confusion in the market, otherwise, the defendant can give no justification whatsoever to use the similar trade mark. The defendant is also, therefore, passing off its goods as that of the plaintiff.

5. In a nutshell, the case of the plaintiff is that both sides of goods are falling in the similar classification i.e. Class-6 & 19, consumers of these products are identical, channels of trade are also identical and, therefore, there is a connection in trade exists between the plaintiff and defendant.

6. The plaintiff, thus, sought a decree for permanent injunction in terms of the prayer made in para 22 of the plaint, which reads as under:-

“(a) A decree for permanent injunction restraining the defendant, their associates, sister concerns, dealers, distributors through themselves and through servants, agents, stockiest, assigns and representatives and all other acting, for and on their behalf, from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods falling in Class-19 bearing the trade mark ALOCOMAX as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff’s registered trade mark ALOMAX which results in infringement of trade mark of the plaintiff.

(b) A decree for permanent injunction restraining the defendant, their associates, sister concerns, dealers, distributors through themselves and through servants, agents, stockiest, assigns and representatives and all other acting, for and on their behalf, from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in goods falling in Class-19 bearing the trade mark ALOCOMAX as and/or any other trade mark, as may be identical with and/or deceptively and confusingly similar to plaintiff’s registered trade mark ALOMAX which results in passing off the defendants goods as that of the plaintiff’s goods.

(c) For an order for delivery by the defendant to the plaintiff, all the offending goods including the goods bearing the trade mark ALOCOMAX, its packing materials, advertising materials, stationary, account books and other incriminating materials under the possession and control of the defendants for destruction and/or erasure purpose.

(d) For an order for rendition of accounts as to ascertain the profits earned by the defendant on the sales made for goods bearing the offending trade mark ALOCOMAX and a decree for the amount so found due. On the amount being ascertained, the plaintiff undertakes to deposit the court fees as may be directed by this Hon’ble Court.

(e) For an order for costs of the proceedings.

(f) For such further order/orders/relief/reliefs as to which, this Hon’ble Court may deem fit and proper while looking into the facts and circumstances of the case be also passed in favour of the plaintiff.”

7. After service, the defendant filed the written statement, in which it is stated that the suit is without any cause of action; the defendant is not infringing the trade mark and, in fact, the defendant has not used the trade mark ALOCOMAX in question, except the defendant has merely filed the application for registration of the trade mark ALOCOMAX, in respect of the goods falling in Class-6.

8. By order dated 2nd August, 2010, the following issues were framed:-

(i) Whether the defendant is liable to be restrained from using in any manner the trademark ALOCOMAX or any other deceptively similar trademark for their goods falling in class 6 and 19 as the same constitutes infringement of registered trademark ALOMAX of the plaintiff falling in class 19 OPP

(ii) Whether the defendant is guilty of passing off its goods as that of plaintiffs by using the trademark ALOCOMAX OPP

(iii) Whether the plaintiff is entitled to permanent injunction against the defendant as prayed in clause (a) and (b) of the prayer clause OPP

(iv) Whether the plaintiff is entitled to a decree of rendition of accounts If so, the amount and the period for which the defendant is liable to render the account OPP

(v) Whether the plaintiff has equally efficacious remedy before the Registrar of Trade Marks If so, to what effect OPD

(vi) Relief.

9. Thereafter, the plaintiff produced the evidence by way of affidavit of PW-1, Sh.Sunil Kumar, Director of the plaintiff company. In the affidavit, the deponent had made the same statement as mentioned in the plaint and has produced the various documents, that is exhibited PW1/29, in order to prove the case of the plaintiff. PW-1, Sh.Sunil Kumar was cross-examined by the defendant after PW-2, Sh.Rajesh Oberoi, Assistant Examiner from Trade Mark Registry, Dwarka, New Delhi brought the record of the trade mark ALOMAX in class-19.

10. The defendant produced the evidence of DW-2 Sh.Amit Mittal, Director of the defendant company by way of affidavit. In the affidavit, the similar stand was taken by the defendant that the defendant company has not used the trade mark ALOCOMAX in question. The defendant had merely applied for registration of the trade mark ALOCOMAX in the goods falling in Class-6. Therefore, the question of infringement does not arise as the defendant company has not manufactured and marketed the goods as alleged by the plaintiff.

11. After the completion of the evidence, the matter was listed today for arguments. Both the parties have addressed their submissions. As far as the plaintiff’s case is concerned, the plaintiff has proved his case as per the statement made in the plaint. It appears from the material placed on record and the documents exhibited by the plaintiff, the trade marks ALOMAX and ALOCOMAX are deceptively similar.

12. It is also settled proposition of law that even filing of application for registration of the trade mark, shows the intention on the part of the person to use the same in due course. The suit for passing of an infringement is maintainable and in anticipation.

13. During the course of the arguments, learned counsel for the defendant has made the statement that the defendant is not interested to use the trade mark ALOCOMAX, in relation to any of the goods falling in Class-6 & 19 of the classification. According to him, the defendant is not using the said products bearing the said trade mark ALOCOMAX.

14. In view of the submissions made in the written statement, affidavit of DW-2, Sh.Amit Mittal and the statement made by learned counsel for the defendant, the suit of the plaintiff is accordingly dispose of, by passing a decree that the defendant is restrained from manufacturing, selling, offering for sale, advertising directly and indirectly dealing in any goods falling in Class-6 & 19 bearing the trade mark ALOCOMAX or any other trade mark, which is either identical or deceptively similar as that of the plaintiff.

15. As far as the relief (c) is concerned, since the defendant did not have any stock of offending goods as alleged by the plaintiff, the said prayer is rejected.

16. The plaintiff’s counsel does not press the relief mentioned in paras (d) and (e) of the prayer. The suit of the plaintiff is accordingly decreed in terms of prayers (a) & (b) of the plaint. Decree be drawn accordingly.

17. No order as to costs.