Oral Judgment:

This is an action for infringement and passing off.

2. The plaintiff is the registered proprietor of the mark "ROFOL". The plaintiff claims to be the proprietor of the mark "PROFOL". Its application made on 14th August, 1995, for registration of the mark "PROFOL" is pending.

The defendant also claims to be the proprietor of the mark "PROFOL".

As a result of the orders passed by the City Civil Court at Ahmedabad and the Gujarat High Court in a suit filed by the respondent on the basis that it is the proprietor of the mark "PROFOL", the plaintiff is restrained from using the mark "ROFOL".

3. This interlocutory application is, therefore, restricted to the claim for infringement of the plaintiffs registered mark "ROFOL" by the defendants use of the mark "PROFOL". The application, in as far as it relates to passing off must await a modification, if any, of the orders of the Gujarat High Court and the City Civil Court at Ahmedabad and in so far as it is based on the trade mark "PROFOL" it must await the result of the plaintiffs application for the registration thereof.

4. It is common ground that the impugned mark "PROFOL" is deceptively similar to the plaintiffs registered mark "ROFOL". This, indeed, is the basis of the respondents suit filed in the City Civil Court at Ahmedabad and this suit.

FACTS :

5. On 19th October, 1992, the plaintiff applied for registration of its mark "ROFOL" under class 5. The application was made on the basis of its proposed use of the mark. On 14th August, 1995, the defendants applied for registration of the mark "PROFOL" under class 5 also on the basis of its proposed use of the mark. The defendants started using the impugned mark "PROFOL" from April, 1998. The plaintiffs started using the mark "ROFOL" from about 16th October, 2004, i.e. after the plaintiffs mark was registered. On 14th September, 2001, the plaintiffs application for registration of the mark "ROFOL" was allowed. The registration of the plaintiffs mark is, however, as of the date of the application i.e. 19th October, 1992. On 13th October, 2006, the plaintiff filed an opposition to the defendants application for registration of the impugned mark, which is pending.

6. Mr. Dwarkadas opposed the Notice of Motion on the following grounds:-

I. The action for infringement is not maintainable although the plaintiffs mark was registered prior to the defendants use of the impugned mark as the plaintiff used its mark only after the defendants used the impugned mark.

II. The injunction ought to be refused in view of the interim order passed by the City Civil Court at Ahmedabad and the order of the Gujarat High Court confirming the same.

III. The grant of an injunction would render the marks sterile .

IV. The plaintiff had not applied for registration of its mark with the bona-fide intention of using it at the time of making the application or soon thereafter, but solely with the view of trafficking in it.

7. Mr. Dwarkadas submitted that the defendants use of the impugned mark being prior to the use by the plaintiff of its registered mark, the plaintiff is not entitled to maintain successfully, an action for infringement. According to him, the plaintiffs mark having been registered with effect from a date prior to the defendants use of the impugned mark does not entitle the plaintiff to an injunction against infringement.

8. The main question, therefore, is whether the plaintiff is, by virtue of its mark having being registered prior to the impugned mark being used by the defendant, entitled to an injunction against infringement although it used its mark after the defendants started using the impugned mark.

9. The following facts are important in relation to this question.

- 19th October, 1992 - The plaintiffs application for registration of the mark "ROFOL" under class 5. This application, though allowed on 14th September, 2001, relates to the date of the application for registration viz. 19th October, 1992.

- April 1998 - The defendants commenced use of the impugned mark "PROFOL".

- 14th September, 2001 - The plaintiffs application for registration of their mark "ROFOL" was allowed.

- 16th October, 2004 - The plaintiffs started using the mark "ROFOL".

10. The question is decided in favour of the plaintiffs in several judgments of this Court which are binding on me. In Drums Food International Private Limited v. Euro Ice Cream & Anr. 2011 (4) Bom.C.R., 691, and in Merck Kga & Anr. v. Natro Pharma Limited & Anr., dated 9th October, 2011, in Notice of Motion No.182 of 2010 in Suit No.16 of 2010. I decided this very question against the defendant on authority and on principle. I dealt with the question in considerable detail in the first judgment and followed it in the second judgment.

11. I have not accepted Mr. Dwarkadas submission that the judgments are per incuriam. Nor have I been persuaded to take a different view even if it was open for me to do so. In fact, after hearing Mr. Dwarkadas, I am even more firmly of the opinion that a view to the contrary would virtually erode one of the most important aspects of the Trade Marks Act, 1999, viz. the purpose and benefit of registration of trade marks.

12. I would normally have left it at that, as the question is covered by authority and as I think that the answer to it is quite simple and obvious. However, as Mr. Dwarkadas submitted that the judgments of this Court and of the Madras High Court are per incuriam, as he attempted to persuade me, albeit on nothing more than illustrations to take another view and in view of the interim orders of the Gujarat High Court in the defendants suit, I will go through the otherwise unnecessary exercise of repeating most of what I said in those judgments.

13. Sections 18(1), 23(1) and 34 of the Act read as under :-

"18. Application for registration.- (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for registration of his trade mark."

"23. Registration.-(1) Subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either -

(a) the application has not been opposed and the time for notice of the opposition has expired, or

(b) the application has been opposed and the opposition has been decided in favour of the applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within eighteen months of the filing of the application and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration."

"34. Saving for vested rights. - Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior -

(a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his, whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark."

14. In Williams Ltd. v. Massey Ltd. (1911) 28 RPC 512, the plaintiff applied for registration of a mark on 21st October, 1910. Upto that time, the defendants had not used the mark in connection with the class of business under which registration was sought. It was held :-

"I am not sure - the point is a new one - that user within Section 41 means user by the sale of a single piece, or of a very few pieces of goods, with the Trade Mark on. I am not at all sure that the Section means that; I am inclined to think that under section 41 substantial user is meant, and that there must be something like substantial user. But, supposing, as Mr.Rutherford was bound to put it, that the sale of halfpenny piece of toffee, before the Plaintiffs had sold any at all, is sufficient, then I am not sure that that sale must not be a sale preceding the date on which the registration takes effect -that is to say preceding the date of the Application, because under the Act of 1905 the registration, when the Certificate is granted, relates back to the date of the Application. If I am wrong in that point of view it gives rise to a very extraordinary state of things. Under the Act of 1905 registration may precede user. User is not necessary to obtain registration of a mark under the Act of 1905. You can register a new mark and you get rights which the old Acts did not give you. You get proprietary rights, and not merely a block in the way of litigation; you get, under the Act of 1905, rights which you had not before. I think that user in Section 41 must mean user prior to the Application. If it does not mean that, then it must bring about this extraordinary state of things. A man applied on the 1st of January for registration, and he does not get the Certificate of Registration untill the 31st of March. . Then if "user" for the purposes of Section 41 means user at any time after the Application, user on the 2nd of April by another will prevent the registered proprietor from attacking him if the registered proprietor has not in fact used it before the 2nd of April. It seems to me that is not the meaning of the Act of Parliament."

I am entirely in agreement with the above observations. They apply under our Act as well as is clear from a plain reading of section 34.

15A. The case in Mohan Goldwater Breweries (Private) Limited v. Khoday Distilleries Private Limited & Anr., 1977 IPLR 83 (Madras) was of two appeals under section 102 of the 1958 Act against the order of the Assistant Registrar of Trademarks rejecting the appellants opposition to the respondents application for registration of its mark. The respondents had filed applications for registration on 10th November, 1969. The appellant filed a notice of opposition contending that it had adopted a similar trademark since June, 1970; that they had not used the mark and that a mere intention to use the same was not sufficient to confer a proprietary right in the mark on the respondent. The learned Judge held that under section 18 even a person who intends to use a trademark can apply for registration and that, therefore, the actual user of the mark is not necessary for acquisition of a proprietary right in a trademark and an intention to use and register the trademark is sufficient.

Following the judgment in Jellineks application (1946) 63 R.P.C. 59 at p. 78, and Ciba Ltd. v. M. Ramalingam A.I.R. 1958 Bombay 58 at p.61, it was held that for the purpose of registration of a trade mark the rights of the parties have to be usually determined as on the date of the application. This view was also taken by a Division Bench of this Court in Sunder Parmanand vs. Caltex (India) Ltd., AIR 1969 Bom. 24 [LQ/BomHC/1965/133] (paragraph 34).

The learned Judge at page 92 posed the following question and answered the same as under :-

"The question then is, as between the applicants who have proposed to use the mark and have sought registration of the same in November, 1960 and the appellants who have chosen, to use the mark subsequent to the date of such application for registration, who has got a preferential right to use or the proprietary interest in the trade mark. ........"

"Since the applicants entitlement to registration of a trade mark has to be decided with reference to the facts as on the date of the application for registration, the evidence of user by the opponents subsequent to the said date cannot be relevant and will not entitle them to put forward the plea of user in answer to the earlier application for registration."

15B. I am entirely in agreement with the judgment that the applicants entitlement to registration of a trade mark has to be decided with reference to the facts as on the date of the application for registration and that the evidence of user by the opponents subsequent to the said date cannot be relevant and will not entitle them to put forward the plea of user in answer to the earlier application for registration.

16. The question was considered by a learned single Judge of this Court in Sun Pharmaceutical Industries Limited v. CIPLA Limited, (2007) 109 BLR 59. That was a passing off action where the plaintiff contended that as it had used the mark before the defendant had used its mark, it was entitled to an injunction although the defendants mark was registered prior to the plaintiffs use of its mark. Thus the rights of the plaintiff and the defendant were converse to the rights of a plaintiff and a defendant in an infringement action. In other words, the plaintiffs and the defendants rights in the present case correspond to the defendants and the plaintiffs rights respectively in that case. The learned Judge noted the submissions and held as under :-

"10. Dr.Tulzapurkar, the learned counsel for the plaintiff submitted that the plaintiff is entitled to an injunction against passing off only on the ground that their user on 1.12.2000 is prior to the defendants user in July 2006. According to the plaintiff, in such a case of passing off, the defendants registration with effect from 26.2.1998, though prior to the plaintiffs user, is liable to be ignored, since the only right which registration confers is to prevent another person from infringing the trade mark, particularly since the registration was not accompanied by use. The learned counsel for the plaintiff relied on Section 27 of the Trade Marks Act and several decisions in support of his case. It may be noted, however, that in none of the cases relied on by the plaintiff, an injunction was granted on the basis of a prior user against the defendant whose registration was prior to such user.............."

"16. There is substance in the argument of Mr. Ravi Kadam, Advocate General, that it is necessary to examine with care the circumstances in which the plaintiff adopted their mark. This is clearly necessary since it would otherwise be very easy for a trader to copy a mark pending registration, start using the mark and claim a priority on the basis of the user and even further obtain an injunction restraining the defendant who had earlier applied for the registration of the mark, but who happens to start using it later after registration is obtained."

The learned Judge dealt with the authorities cited on behalf of the plaintiff and distinguished them, inter-alia, on the ground that in those cases the adoption was not found to be honest. Apart from being bound by, I am in respectful agreement with the judgment.

17. A learned single Judge of this Court held in Kamat Hotels (India) Limited Vs.Royal Orchid Hotels Limited and Another 2011 (4) Mah.L.J. 71 as under:-

"14. Section 34 carves out an exception and creates an overriding provision which within the sphere of its operation prevents a proprietor or registered user of a registered trade mark from interfering with the use of an identical trade mark or a mark which nearly resembles the registered mark. Section 34 in consequence provides for a defeasance of the statutory entitlement which flows from the registration of a trade mark. Before such a consequence ensues the conditions which Parliament has enacted must be fulfilled. The most fundamental requirement is four fold. ....."

"Fourthly, the mark in respect of which protection is sought must have been used from a date prior to the use of the registered trade mark or the date of registration of the registered trade mark whichever is earlier. Hence, as an illustration, if the user by the Plaintiff is prior to registration, then the use by the Defendant must be established to be prior to the use by the Plaintiff. If the Plaintiff has not used the mark prior to the date of registration, the use by the Defendant has to be prior to the date of registration of the Plaintiffs mark. ............" (emphasis supplied)

18A. In Drums Food (supra) the position of the parties was reversed as in that case the plaintiff sought a declaration that the cease and desist notice issued by the defendant was an unjustified and groundless threat and that the use of the mark by the plaintiff did not constitute an infringement of the defendants trademark. As that was a case under section 124 of the Trade Marks Act, 1999, the rights of the plaintiff and the defendant were converse to the rights of a plaintiff and a defendant in an infringement action. In other words, the plaintiffs and the defendants rights in the present case correspond to the defendants and the plaintiffs rights respectively in that case.

18B. The defendants mark was registered with effect from 29th November, 2001, whereas the plaintiff started using the mark in November, 2007. The same question, therefore, arose for consideration viz. whether the plaintiff was entitled to an injunction against the defendant despite the fact that it admittedly started using the mark only after the date of the registration of the defendants mark. It was submitted that the plaintiff was entitled to an injunction against passing off as it had used the mark before the defendant did and that the mere registration of a mark made no difference if the same was not actually used by the proprietor. As in this case, the submission was sought to be supported by relying upon section 27 of the Act. Referring to sections 18 and 34 and relying upon the judgments in Sun Pharmaceutical Industries Ltd. Vs. CIPLA Ltd. (2007) 109 BLR 445, Williams Ltd. v. Massey Ltd. (1911) 28 RPC 512 and Mohan Goldwater Distilleries Pvt. Ltd. v. Khoday Distilleries Pvt. Ltd. & anr. 1977 IPLR 83 (Madras), I held :-

"8. The right to have a mark registered is not dependent upon the actual use of the mark at the time of registration. Section 18(1) reads :-

"........

"9. To hold that a registered mark does not take precedence over the use of the mark after the date of the application for registration would render section 18(1) otiose. The Act encourages proprietors to have their marks registered. If the plaintiffs case is upheld, it would not only be contrary to, but destroy the object of the Act as it would positively discourage registration of trade marks."

"10. To uphold the plaintiffs case would cause havoc and virtually erode the rights of the proprietors of trademarks. There is always a time-lag between an application for registration of a mark and the order registering the same. Applications for registration are in public domain. They are advertised. If Mr. Tulzapurkars submission is upheld, upon an application for registration being made and advertised, it would be possible for any person to use it immediately, thereby rendering the valuable rights of the registered proprietor in respect of the mark nugatory even before the mark is registered. This would render an essential and substantial part of the Act redundant."

"12. Section 34 of the Act reads as under:-

"........ If I am right in the view I have taken, the expression "date of registration" in section 34(b) must mean the date of the application for registration for that is the date to which the registration, when granted, will relate. A view to the contrary would lead to an extremely peculiar situation. The date on which a mark is considered to be registered must be the same for infringement or for a passing off action. It would otherwise lead to conflicting orders in actions for infringement on the one hand and passing off actions on the other, which could never have been the intention of the Legislature."

"13. If the defendants were to file an action for infringement in such circumstances, they would be entitled to succeed, despite the plaintiffs user of the mark subsequent to the defendants registration of the mark. In other words, section 34 would not come to the plaintiffs aid if an action were brought by the defendants for infringement against them. Whether the plaintiffs would succeed on any other ground is another matter altogether."

After referring to the judgment of the Madras High Court in Mohan Goldwater Breweries Pvt. Ltd. (supra), in Drums Food I held:

"15. I am in respectful agreement with the above observation. While considering the plaintiffs action for passing off vis-a-vis a registered trade mark also, the relevant date must be the date of the application for registration and not the date on which the registration is actually obtained. I have already indicated the dangers in accepting a view to the contrary. Absent any other factors such as deceit or abandonment on the part of the defendants, the use by the plaintiff of the mark after the date of the application for registration cannot sustain an action for passing off against a registered trade mark. In the circumstances, it must be held that absent anything else, the use of a trade mark after an application for registration by another of a similar mark cannot affect an action for infringement by the latter or support a passing off action by the former."

19. An identical submission was raised on behalf of the defendant in Merck Kga & Anr. v. Natro Pharma Limited & Anr., dated 9th October, 2011, in Notice of Motion No.182 of 2010 in Suit No.16 of 2010.

The facts were similar. The registration of the plaintiffs mark was with effect from 24th July, 1997, whereas the defendant used the impugned mark with effect from the year 2003. It was contended on behalf of the defendant that as they had used the mark from the year 2003 prior to the plaintiffs use of their mark which was from January, 2009, the action for infringement could not succeed despite the fact that the plaintiffs mark was registered prior thereto viz. on 24th July, 1997. Relying upon my earlier judgment in Drums Food, I rejected the contention and granted the injunction against infringement. While considering the submission, I distinguished the judgment in Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd., AIR 1965 Bom. 35 [LQ/BomHC/1961/52] .

20. Mr. Dwarkadas did not deny that these judgments directly deal with his submission before me and that his submission is contrary to these judgments. Indeed, the submission is contrary to the decisions of this Court, of the Madras High Court and of the English Courts.

Mr. Dwarkadas, however, submitted that all the judgments in are per incuriam in view of the judgment in Consolidated Foods. In Merck Kga, I had expressly dealt with the judgment in Consolidated Foods and distinguished the same. In view thereof, the judgments cannot be said to be per incuriam.

21. Mr. Dwarkadas then submitted that the judgments are per incuriam in view of the judgment of the Supreme Court in Milmat Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 [LQ/SC/2004/712] .

That was an action for passing off in which the question neither fell for consideration of nor was decided by the Supreme Court. It is in the context of a passing off action alone that the Supreme Court held that multinational corporations which have no intention of coming to India or introducing their products in India should not be allowed to throttle an Indian company by not permitting it to sell their products in India if the Indian company has genuinely adopted the mark and developed the product "and is first in the market. Thus, the ultimate test should be who is first in the market." Neither the plaintiffs nor the defendants marks were registered in that case. The question, therefore, of the effect of the registration of a mark by one being prior to the use of the impugned mark by another did not even arise in that case. The judgments of this Court and of the Madras High Court, therefore, cannot be said to be per incuriam on the ground that the judgment of the Supreme Court was not noticed in those cases.

22. If the judgments in Drums Food, Merck Kga and Sum Pharmaceuticals are not per incuriam, Mr. Dwarkadas submission must be rejected on authority.

23. I will now deal with Mr. Dwarkadas attempt to persuade me to take a contrary view.

24. Mr. Dwarkadas submitted that the only way in which a mark can be protected is by actually using it. Otherwise, it would be unfair to a defendant who, during the pendency of the registration proceedings, develops a huge reputation in respect of the mark before the plaintiffs mark is actually registered. His rhetoric question is :

"What happens to the poor person who, during the period between the application for registration and the actual registration of the mark, spends a large amount of money, time and other resources in developing the mark"

25. "Poor person" I find it difficult to confer the appellation "poor" upon an infringer be he negligent or dishonest. Mr. Dwarkadas was understandably unable to answer the obvious response : "Why must this "poor person" adopt anothers trade mark"

26. I have little hesitation in coming to the conclusion that the defendants adoption of the impugned mark was dishonest. The defendants explanation for adopting the mark is less than convincing. In paragraph 4 of the affidavit in reply, it is averred that the defendants or their predecessor in April, 1998, introduced the molecule propofol in India. Thus, it is not as if the defendants discovered the molecule. The molecule was known throughout the world. By the time the defendants allegedly introduced the molecule to India, the plaintiff had already applied for registration of its mark. If the defendants had taken a search of the register, they would have come to know of the plaintiffs mark. Their adoption despite the same would then be dishonest. If they took no search, their adoption would be negligent. Either way then, they must suffer an injunction. A Division Bench of this Court in Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. & Anr. 2002 (24) PTC 226 [LQ/BomHC/2001/900] , held :-

"9. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, learned Counsel appearing for the Respondent cites the judgment of the Supreme Court in Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd., 1994 (2) SCC 448 [LQ/SC/1994/180] wherein the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LC v. Electrix and quoted a passage therefrom in paragraph 34 of its judgment. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgment in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgment indicates that in a situation where the defendant to an action has been using the mark, even if concurrently, without making himself aware of the fact as to whether the same mark is the subject-matter of the registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently inasmuch as he has not take the elementary precaution of making himself aware by looking at the public record of Registrar as to whether the mark in question is the property of another. If, however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay."

"Further discussion in the judgment shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the defendant or at least to have lulled him into a false sense of security to continue to use the trade mark in the belief that he was the monarch of all he surveyed. In our judgment, such are not the circumstances here. We are not satisfied from the record that a search was taken of the registry by the Appellant to assure itself that there was no other person who owned the mark MICRODINE". Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way, we do not think that the defence can succeed, at this stage, at least."

The suggestion that this judgment is of no value for it was rendered in an appeal against an ad-interim order requires merely to be stated to be rejected. This judgment has been followed consistently by this Court at the final hearing of several Notices of Motion, including in Merck Kga.

27. To accept Mr. Dwarkadas submission would, in fact, penalize a proprietor who is not responsible for the delay in the mark going on the register after the application for registration. Indeed, if Mr. Dwarkadas submission is accepted, even if the Registrar grants the registration within a few days, the entire effect and the benefits of registration conferred by the Act would be rendered nugatory. A vigilant infringer could then pick up the mark the moment the application is made, put it to use and then contend, even if the registration is granted within only a few days, that it is of no effect as he put the mark to use before the registered proprietor did. This would defeat the right to seek registration under section 18 without first using the mark. The illustration in the passage from Williams Ltd. v. Masey Ltd. quoted earlier is of the mark going on the register within a short period of only three months of the application viz. from 1st of January to 31st of March.

28. Faced with this, Mr. Dwarkadas invited me to consider the position of a person who uses a mark which is purely descriptive and can never be registered. He submitted that there is no reason why a person ought not to use such a mark merely because an application for registration is made by another.

29. This submission is equally unfounded. It is true that a mere application for registration does not prohibit the use of the mark by another. I am not concerned with whether a quia timet action would lie or not by the applicant for registration. Statutes cannot be interpreted on the basis of such illustrations. Valuable statutory rights cannot be denied even if there was any substance in the illustration, which I find there is not. The person who is to use a mark in respect whereof an application for registration is made by another, must assess for himself whether the mark is capable of being registered or not. He must take the risk of an incorrect assessment. If, after following the entire legal procedure, the Registrar comes to the conclusion that the mark is entitled to be registered and that decision attains finality, a defendant cannot possibly be heard to say either that the decision is wrong or that there was a bona-fide difference in perception between the Registrar and himself. To entertain such a submission would be most dangerous to the law of trademarks and to the rights of the registered proprietors of trademarks. It would throw, and I mean just that, registered trade marks into the realm of uncertainty.

30. These submissions miss an important point. Proprietors expend enormous resources, monetary and otherwise, in developing trademarks. For instance, market research is conducted at considerable expense before creating and adopting a trademark in respect of products and services to which they are to be applied. To accept any of Mr. Dwarkadas submissions would keep the field open to infringers who would have the benefit of adopting and using trademarks developed by another at considerable expense without any effort on their part and without their incurring any expenses themselves.

31. Lastly, Mr. Dwarkadas relied upon the judgment of a learned single Judge of this Court in Cluett Peabody & Co. Inc. v. Arrow Apparals 1998 PTC 18 in support of his submission that priority in use of a mark would prevail over a prior registration of the mark. Mr. Dwarkadas, however, emphasized certain parts of the judgment in support of this contention.

32. I had, in fact, in Drums Food, negated a similar submission. Apart from being bound by the earlier view, I am in any event, unable to accept his submission. I find that the judgment has been totally misconstrued. As there is often a misplaced reliance upon this judgment, I find it necessary to deal with in detail.

33. Mr. Dwarkadas submitted that paragraph 27 in particular supported his submission.

(A) It is important to note that the last sentence in paragraph 31 expressly states that the entire order is based only on the facts of the case.

(B) That was also an action for infringement. In that case, the plaintiff had obtained registration of the mark in the year 1955. The defendant started using its mark in December, 1985 and applied for registration thereof on 11th January, 1991. On 6th December, 1993, the defendant sought rectification of the register in respect of the plaintiffs mark. The plaintiff thereafter assigned its mark and entered into user agreements in respect thereof. On 8th November, 1983, the defendant served the cease and desist notice upon the plaintiff. The plaintiff filed the suit for infringement thereafter on 25th April, 1994.

On these facts, the learned Judge came to a finding of fact that the defendant had used the mark from 1985 "to the knowledge of the World at large and without any interruptions". This would obviously also be a reference to the plaintiff in that case. The learned Judge, therefore, came to a finding of fact that the plaintiffs mark had become a source of monopoly, which is not the object of the Act. The learned Judge also came to a finding of fact that the plaintiffs mark had lost its distinctiveness, had dropped out of use and was allowed to die for non-user. The injunction was, therefore, refused.

(C) It is in this backdrop that paragraph 27, which was so strongly relied upon by Mr. Dwarkadas, must be read. Paragraph 27 reads as follows :-

"27. Now before going into facts, the following principles emerge under the Trade Marks Act which are required to be noted :

(a) An application for injunction is an infringement action based on Trade Marks. It is an application in support of the right to property.

(b) Trade Marks is a property. A mark which is used in the course of trade to indicate a connection between the goods and the proprietor of the mark is a Trade Mark (See Trade Marks by Shavaksha, Page 14). It is not a property in pervasive sense. It is property in the sense that proprietor is entitled to exclusive use of it or to prevent others from using it in relation to goods in respect of which it is registered or used. It must be adopted and used to distinguish the goods of the proprietor from goods of others. The mark must be distinctive. It must show the source or the goods to the customer. Words like, Best, Superior , etc. are not distinctive of the goods. They are only descriptive and hence cannot constitute trade mark. The vendor who sells his goods under a trade mark acquires a limited right to the use of the mark.

(c) An infringement action is based on invasion of the statutory right. The issues which arise in this action are whether the plaintiff is a proprietor of the Trade Mark and whether the defendants mark is identical or similar to trade mark of the plaintiff. In an infringement action the question of deception or confusion will not arise.

(d) In an infringement action, defendant is restrained from using the infringed mark whereas in passing off defendant is restrained from using the mark in such a way so as to pass off his goods as that of the plaintiff.

(e) The above-mentioned limited exclusive right to the use of the mark is acquired by use. It is recognized as property. A person can also acquire it by registration (See Para 1.01 of Narayanan). The proprietor of the mark gets a perpetual right to the exclusive use of it in respect of particular goods in respect of which it is registered or used (See Para 1.02 of Narayanan). Therefore, it can be acquired in three ways viz., Registration, User and Assignment.

(f) Object of the Act is to protect the right and not to be a source of monopoly. It is also to protect bona fide interests of traders from harassment by registered owners of a trade mark, apart from protection of public fraud, by infringers of genuine trade mark.

(g) Registration enables the registered proprietor to sue for infringement of registered trade mark irrespective of the fact whether it is used or not used. Registration confers on the proprietor a monopoly right over the use of the mark. But, proprietary rights in a trade mark acquired by use are superior to rights obtained by registration under the Act. This is the main defence put up on behalf of the defendants in this Notice of Motion. Therefore, prior user of the marks should be protected against monopoly rights conferred by the Act. (Pages 5 & 6 of Narayanan). A trade mark has no meaning even if it is registered unless it is used in relation to goods. Otherwise, its non-use may lead to its death. A trade mark which drops out of the use dies. Where there are no goods offered for sale, there is no use of trade mark.

(h) Use of the trade mark does not mean user by affixing the word on the goods. It could be in the form of advertisements in Magazines, T.V. etc. It would be with regard to goods exported out of India . With advancement of technology and globalization after 1991, use of trade mark can take place in different ways. But, this case essentially concerns the period 1985-1990. Property in trade mark can be acquired by public use of it.

(i) The test as to "who gets it there first" is not applicable in cases where registration is sought under Section 18 (Page 26 of Narayanan).

(j) The mark can loose its distinctiveness by non-user, (Para 26 of Narayanan). Therefore, the enforcement of the Right of exclusive use of a trade mark will depend on continuous use of the mark by the proprietor. If he fails, piracy will result and the mark will become common to the trade because there is no exclusive ownership of the symbol constituting a trade mark apart from the use of it in respect of vendible goods, particularly in context of principles governing them. Acquisition of proprietary right is different from enforcement or rights/reliefs.

(k) Courts shall not protect this right of a proprietor unless there is sale of the articles to which trade mark is attached or related to (Para 28 of Narayanan). Without use of the mark, the proprietor cannot restrain others from use of it on similar goods (Page 29 of Narayanan).

(l) An infringement action is a suit on trade mark and not on reputation. The defendant (infringer) who copies the mark cannot plead as a defence particularly because the defendant is dishonest as he has copied the mark. But, priority in use cannot be dishonest and, therefore, the defendant who has prima facie evidence of priority in use, could plead delay as a strong defence. This principle is in context of defence to infringement action, particularly in context of this Notice of Motion."

34. None of the observations in paragraph 27 or any other part of the judgment support the contention that the use of a mark by a party subsequent to the registration of the plaintiffs mark disentitles the plaintiff to maintain an action for infringement. The question, in fact, neither arose for nor was considered in that case. The judgment, if anything, is to the contrary. The error in Mr. Dwarkadas approach was in plucking out stray sentences and reading them in isolation. (i) It is important to note that in paragraph 27(i), the learned Judge expressly held that the test as to who gets there first is not applicable in cases where registration is sought under section 18. Section 18(1) of the 1958 Act is similar to section 18(1) of the 1999 Act. The judgments of this Court are, in fact, to the same effect. This is in conformity with section 34 of the 1999 Act as well.

(ii) Paragraph 27(g) also militates against Mr. Dwarkadas submission. The very first sentence is to the effect that the registered proprietor is entitled to sue for infringement "irrespective of the fact whether it is used or not used".

(a) The third sentence in paragraph 27(g) : "But, proprietary rights in a trademark acquired by use are superior to rights obtained by registration under the Act" must be read in the context of the entire paragraph. So read, it does not support the submission that the use of a mark by the defendant after registration of the plaintiffs mark would disentitle the plaintiff to maintain the action for infringement successfully. The first sentence refers to the rights of a "registered proprietor." The second sentence refers to registration conferring rights upon the proprietor. It is obvious that the reference in the third sentence is to such "proprietary rights" viz. rights of a proprietor of a registered mark. The third sentence, therefore, is to the effect that the proprietary rights of a registered trade mark acquired by use are superior to rights obtained by registration alone. A view to the contrary would render the various observations in paragraph 27 itself to be contradictory to each other. The injunction was refused not because the defendants use of the mark was prior to the plaintiffs use of the mark, but because the Court came to the conclusion that the plaintiffs conduct had led to the mark loosing its distinctiveness, dropping out of its use and dying for non-user.

(b) The sentence in paragraph 27(g): "Therefore, prior use of the marks should be protected against monopoly rights conferred by the Act" obviously refers to user prior to the registration of the mark. The sentence is from paragraph 1.08(c) at pages 5 and 6 of the fourth edition of Narayanans work as stated in paragraph 27(g) itself. (The learned Judge obviously referred to the fourth edition of Trade Marks and Passing off by P. Narayanan published in the year 1991 as the judgment was delivered on 24th October, 1997 and the fifth edition was published in the year 2000.) The opening part of paragraph 1.08 and sub-paragraph (c) which makes this clear, read as under :-

"1.08 Basic principles of trade mark law. - The purpose of the Act, as stated in the preamble, is to provide for the registration and better protection of trade marks and to prevent the use of fraudulent marks on merchandise. In consonance with this object the following fundamental principles of trade mark law are embodied in the various provisions of the Act: .............

(c) Property rights in a trade mark acquired by use are superior to similar rights obtained by registration under the Act. This is clear from the preamble which refers to "better protection of trade marks", thereby necessarily implying the existence and availability of some protection under common law. It, therefore, follows that prior users of trade marks should be protected against any monopoly rights granted under the Statute. This principle is enacted in s.33." (emphasis supplied)

Section 33 of the 1958 Act corresponds to section 34 of the present Act, which protects the proprietor of the impugned mark only if he has used it prior to the use by the proprietor of the registered mark and prior to the registration of the mark.

(iii) The doubt, if any, is set at rest by paragraphs 27(i) of the judgment which expressly states that the test as to who gets there first is not applicable in cases where registration is sought under section 18. As stated in paragraph 27(i), the statement is taken from page 26 of Narayanans fourth edition. A reading of the entire paragraph from which it is taken establishes what I have stated beyond any doubt. The paragraph reads as under :-

"But it has been observed that the principle will not apply to cases of registration of trade marks under s. 18 which permits a person claiming proprietary interest and proposing to use the mark to apply for registration without actually using the same. If the principle of `who enters the field first is adopted for the purpose of registration, then s. 18 enabling a person proposing to use a trade mark to apply for registration will be meaningless, as any person using that mark subsequently can easily defeat the earlier application for such registration. This principle is also not applicable where the mark is descriptive of the goods or otherwise not prima facie distinctive of the goods." (emphasis supplied)

(iv) Paragraph 27 (k) of the judgment obviously refers to a passing off action. Paragraph 27(k) of the judgment refers to page 28 of Narayanan. (The reference to paragraph 28 appears to be a typographical error.) The statement has obviously been taken from paragraph 3.12 at page 28 of Narayanan. From a reading of the paragraph itself it is clear that the discussion is in relation to an unregistered mark. The commentary states that no protection can be given where there has been no sale or offering for sale of the articles to which the trademark is to be attached. It is further stated that advertisement of the mark alone, not followed up by marketing of the actual goods bearing the mark will not confer upon the person any right of property in the trademark. It is clear from the words "advertisement of the mark alone" that the reference is to an unregistered mark in respect whereof the application for registration has been advertised or where the mark has been advertised in any other manner. There is no reference to a registered mark in the paragraph.

(v) Paragraph 27(l) is, in fact, entirely against the defendants. It is stated therein that an infringer who copies the plaintiffs mark cannot plead delay. The third sentence in paragraph 27(l) is also of no assistance to the defendants. I will presume that the words "priority in use" in the third sentence actually read "priority in registration". It would make no difference. I will even assume that the Court is entitled to consider whether the registration was dishonest. In the facts of the present case, the same has not been established. In fact, a submission to this effect has been expressly rejected by the order of the IPAB which I will refer to shortly. Secondly, the defence of delay referred to in the third sentence is not delay per se. It would be delay of the nature discussed in the judgment viz. where the use by the defendant was known to the world and where the plaintiff has allowed by reason of non-user of the mark for a long period of time to loose its distinctiveness or to let the mark drop out of its use in trade or the mark is allowed to die. These facts have not even been remotely established in the present case as I will indicate later.

35. Mr. Dwarkadas submission is, therefore, rejected. The defendants having used the impugned mark after the plaintiffs mark was registered, cannot succeed in this action for infringement.

36. Mr. Dwarkadas, however, raised another point in the alternative. He submitted that irrespective of the judgments of this Court and even the correct position of law, the plaintiff is not entitled to an interlocutory injunction against infringement in view of an interim order passed by the City Civil Court, Ahmedabad and the Gujarat High Court, restraining the plaintiff from using its registered mark. The interim order, he submitted, impliedly held, albeit prima facie, that the defendants are entitled to use the impugned mark by virtue of their having used it prior to the use by the plaintiff of its registered mark. He submitted, therefore, that although by virtue of the binding judgments of this Court, which hold that the prior use by the defendants of a mark would not entitle them to resist an action for infringement as the use was not prior to the registration of the plaintiffs mark, this Court is barred from granting relief against infringement, in view of the judgments in the proceedings filed by the defendants in Gujarat.

37. The defendants had filed Civil Suit No.1244 of 2005 in the City Civil Court at Ahmedabad. By an ad-interim order dated 22nd July, 2005, the City Civil Court at Ahmedabad restrained the plaintiff from manufacturing or marketing its products under its trademark "ROFOL" and also restrained the plaintiff from committing an act of passing off. By an order dated 17th October, 2005, the ad-interim order was confirmed. The plaintiffs filed A.O. No.361 of 2005 in the Gujarat High Court which was dismissed by an order and judgment dated 19th December, 2005. The Gujarat High Court upheld the order granting the injunction on the ground that the defendants used the impugned mark prior to the plaintiff having used its mark. The Gujarat High Court held that the plaintiffs mark having been registered earlier made no difference.

38. I am, with respect, unable to agree with the judgment of the Gujarat High Court which is admittedly contrary to the judgments of this Court. I will, however, presume as contended by Mr. Dwarkadas, that even assuming that the judgment of the Gujarat High Court is contrary to the judgments of this Court on the question of law, it would make no difference and even in that event this Court ought not to pass an order which would be contrary to the injunction granted by the Gujarat High Court.

39. Mr. Tulzapurkar submitted that this Court, in any event, would be entitled to consider this matter without reference to the order and judgment of the Gujarat High Court in view of an order of the Supreme Court dated 30th January, 2006 in an SLP filed by the plaintiffs against the said order. The Supreme Court disposed of the SLP with the following order:-

"No interim order except that the respondents shall maintain accounts.

Liberty to mention for early date of hearing. We make it clear that so far as the parties are concerned, whatever rights they have in law may be urged in proceedings pending before the other Courts."

I will presume that the order of the Supreme Court does not entitle this Court to ignore the legal effect, if any, of the order of the Gujarat High Court and that if the effect of the order of the Gujarat High Court otherwise entitles the defendants to resist the present application they would be entitled to urge the same.

40. There is indeed a conflict of opinion between the judgments of this Court, the Madras High Court and the English Courts on the one hand and the said order and judgment of the Gujarat High Court on the other. This Court would undoubtedly consider the judgment of any other Court with utmost respect, but it is not bound by the same. I am certainly of the view not only that the plaintiff is entitled to an injunction against infringement but that the plaintiff can never in this case be restrained from using its registered trade mark. Despite the same, it would not be permissible and, in any event, it certainly would not be desirable for this Court to pass an injunction which would be in conflict with the injunction granted by the Gujarat High Court. In other words, it would not be permissible for this Court to pass an order permitting the plaintiff to use its mark for that would be contrary to the order of the Gujarat High Court. However, granting the plaintiff an injunction restraining the defendants from infringing its registered trademark would not be contrary to the injunction granted by the City Civil Court at Ahmedabad. There is a difference between a conflicting judgment on a question of law and a conflicting order. A court may be barred from or may in its discretion refrain from passing an order which conflicts with the order of another court. That does not, however, prevent the court from taking another view on law or even on merits if it is not otherwise barred from doing so and passing an order which does not conflict in its operation with the order of the other court. A court is not barred from taking a conflicting view on a question of law or on merits, except in certain circumstances such as by reason of a binding judgment or res judicata or issue estoppel. The order of the Ahmedabad City Civil Court and the Gujarat High Court do not impose any such bar. Moreover, neither the judgment of the City Civil Court at Ahmedabad, nor the Gujarat High Court even considered the question whether the plaintiff is entitled, on the basis of its mark being registered, to an injunction against infringement.

41. The effect of the observation of the Gujarat High Court must also be considered in the light of a subsequent development. The defendants filed an application for rectification of the Register by the removal of the plaintiffs mark. The application was heard finally and rejected by the Intellectual Property Appellate Board (IPAB) by an order dated 29th May, 2009. The defendants raised various contentions in support of the application, including those raised by Mr. Dwarkadas, which were expressly put in issue by the plaintiff. The IPAB noted the plaintiffs response to each of these submissions, most of which were also raised before me in this hearing. These issues were decided finally by the IPAB.

42. I will refer to each of the relevant findings at the appropriate place in this judgment. It is necessary to note, however, that in Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Pharmaceutical Company of India 1977 BLR 73, a learned single Judge of this Court followed the judgment of the High Court of Mysore in K.R. Chinna Krishna Setty v. Amball & Co. AIR 1973 Mysore 74, which held that the decision given in earlier proceedings between the same parties with regard to registration of a trademark operated as res judicata in a proceeding under section 105 for infringement. The Mysore High Court held that the decision in the matter of trademark application and the opposition thereto would govern the rights of the parties in the suit for infringement. In other words, the principle was applied although the earlier decision was not one in a suit and the same could not be brought within the four corners of the Code of Civil Procedure.

43. In relation to the present point three contentions raised by the defendants and the finding of the IPAB in respect thereto are relevant.

Firstly, in paragraph 13, the IPAB noted the defendants contention that the plaintiff was not entitled to interfere with the defendants use of the impugned mark as it had started using the same before the plaintiff used its mark. This contention was sought to be supported by relying upon section 34 of the Act.

Secondly, the defendants relied upon the action for passing off filed by them in the City Civil Court, Ahmedabad being Civil Suit No.1244 of 2005 and the interim orders passed therein, in the first instance, by the City Civil Court and thereafter by a learned single Judge of the Gujarat High Court.

Thirdly, the defendants expressly contended that they were the proprietors of the impugned mark. This contention is referred to in various paragraphs of the judgment of the IPAB. For instance, in paragraph 11, it is noted that the defendants contended that the plaintiff had copied the defendants trademark "PROFOL" by simply removing or deleting the letter "P". In paragraph 12, the IPAB noted the defendants contention that the plaintiff had started using its mark since October, 2004, which clearly showed that the plaintiff "could not be called the proprietor of the trademark "ROFOL"." It was further contended that the defendants had coined and adopted the impugned mark in the year 1998, which had achieved distinctiveness and that the coinage, adoption and use of the mark by the defendants satisfied the requirements of section 18 of the Trade Marks Act, 1999.

44. In paragraph 16, the IPAB noted the plaintiffs contention that the registration of its mark was prior to the use by the defendants of the impugned mark; that the mark is deemed to have been registered on the date of the application for registration; that the plaintiff had, in fact, applied for the registration of the mark with an intention to use it and that the application for rectification, therefore, ought to be dismissed. Paragraphs 17 and 18 of the order note the plaintiffs assertion that it had adopted its mark honestly and independently without reference to any third partys mark, that it is the first adopter, coiner and proprietor of the marks "ROFOL" and "PROFOL" and that it was the proprietor of the mark "ROFOL".

45. The defendants had, therefore, raised the issue of proprietorship and asserted that they were the proprietors of the mark. The plaintiff, on the other hand, denied that the defendants were the proprietor of the mark and asserted its proprietorship of the marks.

46. I will assume that the question of proprietorship strictly speaking does not arise in the present case which deals only with the plaintiffs mark "ROFOL" and the defendants use of the impugned mark "PROFOL". For the purpose of this order I will ignore the plaintiffs application for registration of the mark "PROFOL" and its claim to proprietorship in respect thereof. I will assume that the question of proprietorship of marks which are only deceptively similar does not arise as the plaintiff is the proprietor of its registered mark and the defendant is the proprietor of the impugned mark and that merely because the impugned mark is deceptively similar to the plaintiffs mark and is liable, therefore, to be injuncted from using it, does not make the plaintiff the proprietor of the deceptively similar mark. It makes no difference in this case. It is necessary to note, however, that the defendants did contend that the plaintiff was not the proprietor of the mark as it had not used the same whereas the defendants had used the impugned mark. This contention was rejected by the IPAB.

47. In paragraph 24 of the order, the IPAB posed the correct question as to who is the prior and bona-fide adopter and user of the mark. It was held as under :-

"25. We have already stated that the respondent No.1 (plaintiff) has adopted the impugned mark and got it registered much prior to the applicant (defendant). Hence, the allegation made by the applicant that the impugned mark dishonestly copied by the respondent No.1 by simply removing or deleting letter/word is unsustainable because of the reason that a prior adopter of mark in no way can copy a trade mark which was not in existence at the material time. It is fallacious to presume that the respondent No.1 while adopting its mark ROFOL in 1992 might have foreseen or visualized that the applicant would in 1998 adopts its trade mark PROFOL. We are inclined to agree with the learned counsel for the respondent No.1 that the adoption of mark by the applicant is not bona fide and honest as the applicant has not stated that they caused a search to be made by the Registry of Trade Marks regarding availability of the mark for registry. If the applicant had got the search made they would have come to know that a conflicting mark is already on the register or pending registration. They have knowingly that a conflicting mark is already there, adopted the Mark PROFOL, hence the allegation of the applicant that the respondent No.1 has copied their mark by simply deleting the letter `P, the same recoils to the applicant. The ground of dishonest adoption of mark by the respondent No.1 is unsustainable."

The issue of proprietorship, therefore, was squarely answered by the IPAB at the final hearing of the rectification application in the plaintiffs favour. Apart from my agreeing with the same, the finding has its own effect upon the rights of the parties in the present interim application.

48. The matter relating to the rectification application did not end there. The defendant filed a clarificatory application contending that IPAB had not dealt with certain submissions made on behalf of the defendants and had decided certain issues which had not been raised before the IPAB. The defendants contended that the IPAB had not dealt with the effect of the injunctive relief granted in its favour by the City Civil Court, Ahmedabad and the Gujarat High Court.

49. In paragraph 6 of the order, the IPAB held as under :

"6. We have heard both the parties carefully. We find that there is no substance in the contention of the applicant that the Appellate board has completely bypassed the vital issue that in view of the injunctive relief granted in favour of the applicant holding that the use of the mark by the respondent No.1 amounts to passing off, and that the respondent No.1 is not the true and rightful proprietor of the said trade mark and registration thereof is prohibitive of section 18 of the Act as the Board has not considered nor mentioned nor even decided this issue."

Thus, the defendants once again expressly raised the issue of proprietorship between the plaintiffs and themselves. The IPAB rightly rejected the contention. What is important, however, is that the issue of proprietorship was yet again raised by the defendants and was finally decided against it. The application was rejected by the IPAB.

50. The order of the Gujarat High Court was at an interim stage, whereas the order of the IPAB finally decided the disputes between the parties. As I noted earlier, the IPAB expressly held that the plaintiff was the proprietor of its said mark and that it was not liable to be removed from the Register. The issue between the parties in this regard was, therefore, finally determined by a competent tribunal. In that view of the matter, a finding to the contrary, as alleged by Mr. Dwarkadas, regarding the proprietorship of the marks would not prevent this Court from deciding the present Notice of Motion on the basis of the decision of the IPAB on the issues finally decided by it, including that the plaintiff is the proprietor of the mark.

The interim orders passed by the City Civil Court at Ahmedabad and the Gujarat High Court, therefore, also do not disentitle the plaintiff to the injunction against infringement.

51. It was suggested on behalf of the defendant that the registration of the plaintiffs mark is invalid in view of section 47 of the Act as well as in view of section 57(2) read with sections 11(3) and 18 of the Act. Section 18 was relied upon in view of the defendants contention that they are the proprietors of the impugned mark.

52. Even assuming I am entitled to consider the validity of the registration of the plaintiffs mark, it would make no difference for independent of the decision of the IPAB, I see no infirmity in the registration.

53. The IPAB has dealt with in detail the contention regarding section 47 and rejected the same. The defendant has challenged the order of the IPAB by filing a writ petition in this Court. That issue will, therefore, be decided in the writ petition. In any event, section 47 requires a cumulative test to be satisfied as held by the Supreme Court in Hardie Trading Ltd. & Anr. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 [LQ/SC/2003/918] , paragraphs 25, 26 and 27. The defendant has failed to establish even the first test. As I will indicate shortly, the defendants have not established that the plaintiffs mark was registered without any bona-fide intention on the plaintiffs part that it should be used in relation to goods.

54. Section 11(3) prohibits the registration of a trademark if or to the extent that its use in India is liable to be prevented by virtue of any law in particular of passing off protecting an unregistered trademark used in the course of trade.

55. The submission based on section 11(3) read with section 57(2) was founded only on the interim order of the Ahmedabad City Civil Court and the Gujarat High Court. I have already indicated that I am unable to agree with the decision therein. The IPAB has also rejected the contention based on the orders passed by the City Civil Court at Ahmedabad and the Gujarat High Court. The question as to whether the IPAB did so rightly or not would, I presume, be decided in the writ petition. In any event, the IPAB dealt with a case of registration at the final hearing. It was obviously, therefore, not bound by the finding of the interim orders passed in the proceedings filed in Gujarat. I cannot, therefore, proceed on the basis that the registration of the plaintiffs mark is invalid.

56. Indeed, in the event of the registration being set aside for any reason, the defendant is always at liberty to file an appropriate application even in the present proceedings.

57. Mr. Dwarkadas third submission that an injunction against infringement would not be in public interest for it would render the mark sterile is not well founded. This Court having come to a conclusion that the plaintiff is entitled to an injunction against infringement is bound to enforce the plaintiffs rights. Having come to such a conclusion, a refusal to grant an injunction would result in the plaintiffs mark being diluted, indeed eroded in the event of the plaintiff ultimately succeeding.

58. Nor do I agree with Mr. Dwarkadas fourth submission that the plaintiff had no intention of using the mark on the date on which it applied for the registration thereof. He relied upon the judgment in Cluett Peabody & Co. Inc. v. Arrow Apparals 1998 PTC 18 to contend that the plaintiff is disentitled to any reliefs in view of it not having used the mark for a period of twelve years from the date of its registration. He submitted that the ratio of the judgment is that if for a long period of time after registration, there is non user, the Court ought to infer that the mark was registered only to claim a monopoly and to harass the traders.

59. Firstly, this was put in issue by the parties before the IPAB. The IPAB dealt with the same exhaustively and held against the defendants.

60. The defendants contended before the IPAB that the plaintiff made the application for registration on 19th October, 1992, by making a false statement about its intention to use the mark. It was contended that the falsity of this contention was clear from the fact that the plaintiffs had not used the mark till 16th October, 2004. The plaintiffs had no bona-fide intention to use the mark at the time of making the application and that it had applied for registration only to block the same.

61. The issue, whether the plaintiff had applied for registration of its mark with a bona-fide intention to use the mark in relation to the goods for which the registration was sought and obtained, was answered in the plaintiffs favour as is evident from paragraphs 21 and 22 of the order. The issue was dealt with in considerable detail. I am, with respect, entirely in agreement with the reasons furnished by the IPAB in this regard.

62. I am, in any event, not inclined to accept the submission on behalf of the defendants in this regard either. I have proceeded on the basis that Mr. Dwarkadas submission that the intention to use the mark even in future must be present at the time of the application for its registration is well founded. It is, therefore, not necessary to refer to the judgment in 1898 Vol. XV RPC 534 - In the matter of the registered trademarks of J. Batt & Co. The mark was registered on 19th October, 1992.

63. The mere fact that the mark was not used until 2004 does not establish either that the plaintiff abandoned the same or that it never had any intention on the date of the application of using it. A mere delay in the use of a mark does not ipso facto warrant a conclusion to this effect. This is not a case where the registration was renewed mechanically with no intention of ever using it. The applicability of the ratio in Cluett Peabody & Co. Inc. would depend upon the facts of each case. It is only upon the facts of each case that the Court can decide whether by reason of the non-user the plaintiffs mark loses its distinctiveness or if the trade drops out of its use or the mark has been allowed to die for non-user. In the facts of the present case, these requirements are not satisfied.

64. The plaintiffs mark is registered with effect from 19th October, 1992 i.e. the date of the application for registration. It was, however, registered only on 14th September, 2001. Thus, till 14th September, 2001, an action for infringement was not maintainable. The plaintiff, in fact, started using the mark with effect from 16th October, 2004. The non-user of a mark pending registration cannot, at least, normally be held against the proprietor for any reason. It accounts for good business sense for a party to use a mark only after it is registered. The proprietor may understandably not want to run the risk of using the mark if it is ultimately not registered. The reasons are obvious. The use of a mark involves enormous time, effort and expenses. The proprietor may understandably not want to incur the same unless he is certain that there is no impediment to its registration. This he can be at least reasonably certain of only upon the mark being registered.

65. Further, often a mark is not used till the product to which it is to be applied is ready to be marketed. The ability to market a product is dependent upon a variety of events and requirements not the least of which are market research and development. Many large organizations have independent research and development divisions. The entitlement to market a product is also dependent upon a variety of factors such as obtaining statutory clearances and approvals. The trademark can well be thought of in contemplation of the sale of products or the provision of services under such marks. Thus, the mark would be applied to the products and in respect of services after some time.

66. The facts of the present case indicate that the plaintiff intended at the time of making the application to use the mark. This is evident from the fact that it used the mark from 16th October, 2004. That it did so after three years of the mark being registered does not satisfy the test in Cluett Peabodys case. The plaintiff has also been vigorously defending its mark. The defendants licencee Claris Lifesciences Limited applied for registration of the mark "PROFOL" on 25th September, 2003. On 8th July, 2005, the plaintiffs filed an opposition to the same. Claris Lifesciences Limited thereupon withdrew its application for registration.

The plaintiff has also been defending and prosecuting diligently the suit filed by the defendants in the City Civil Court at Ahmedabad. That suit was filed on 19th July, 2005. The plaintiff also prosecuted diligently and succeeded in the defendants application for rectification of the register by removing the plaintiffs mark. The plaintiff filed the present suit on 14th December, 2005. The plaintiff therefore, cannot defendants using the impugned mark.

67. That the defendant may have spent a large amount of money in the meantime is totally irrelevant. The defendants obviously knew of the plaintiffs mark and, in any event, must be deemed to have known about the same. Had they taken a search they would have found the plaintiffs mark. The use of the impugned mark would then be dishonest. If the defendants had not taken search of the register, they must be held to have been negligent and they cannot, in that case, be permitted to take advantage of their negligence. In any event, at least from the year 2005, the defendants were aware of the plaintiffs mark. If they spent a large amount of money thereafter, they did so at their own risk. Between April, 1998 i.e. the date on which the defendants allegedly started using the mark and 14th September, 2001, the plaintiff could, in any event, not have filed this action as the mark had not been registered till then.

68. The submission that the plaintiff intended trafficking in the mark requires merely to be stated to be rejected. The above facts establish that the plaintiff always intended using the mark and, in fact, started using the same. There is nothing on record which even remotely suggests that the plaintiff intended trafficking in the mark. The plaintiff is a well established pharmaceutical company which uses several marks.

69. In the circumstances, the Notice of Motion is made absolute in terms of prayer (b). Liberty to the plaintiffs to apply for reliefs in terms of prayer (c) relating to passing off in the event of the orders of the City Civil Court at Ahmedabad and the Gujarat High Court being modified or ceasing to operate for any reason.

This order is stayed upto and including 11th May, 2012.