O.P. Dwivedi, J.

1. By this order I propose to dispose of I.A. No. 6268/2001 (Order 39 Rules 1 and 2, CPC) filed by the plaintiff and I.A. 5461/2001 (Order 39 Rule 4, CPC) filed by the defendant.

2. Briefly stated the facts leading to these applications are as follows :

Plaintiff Mr. Vijay Kumar Ahuja has filed this suit against his brothers wife Mrs. Lalita Ahuja seeking ad interim injunction restraining her from dealing in luggage items and other allied and cognate goods under the trade mark Mister, Defence, Arun and ML or any other identical and/or deceptively similar mark thereby amounting to passing off the defendants goods for those of the plaintiff and also from infringement of copyright. It is alleged in the plaint that plaintiff is carrying on business of manufacturing and marketing of various kinds of luggage items under the name and style of Vijoy Industries. The plaintiff has been using its trade marks namely Minister, Defence, Arjun and ML in respect of different types of luggage items. It is pleaded that the said trade marks were originally adopted by the plaintiff in the year 1992 in respect of those goods and that the plaintiff has been using them on their products since 1st April, 1992. Plaintiff has also applied for registration of trade marks Minister, Arjun and Defence. The application for registration of the trade mark Minister and Arjun also consist of ML in a particular style. Application for trade mark Minister with ML has been accepted and has been duly advertised in the Trade Mark Journal No. 1199 dated 1st May, 1999 and there is no opposition by any one. Similarly the other label of the plaintiff consisting of the trade mark Minister and Arjun has been advertised in the Trade Marks Journal No. 1224 (S) dated 8th June, 2000. Besides one more application for registration of trade mark Defence and ML has been accepted for registration and is likely to be advertised in the Trade Marks Journal. It is contended that by virtue of adoption and use of these marks by the plaintiff, the plaintiff has exclusive right to use the said trade marks Minister, Arjun, Defence and ML in respect of luggage items namely suitecase, etc. Besides, the plaintiff has given wide publicity in respect of these trade marks. It is alleged that on 15th June, 2000 the plaintiff came across some brief cases in the market which were being sold under the trade marks Mister, Defence and Arun. Besides the trade mark ML is also mentioned on the label. On further enquiry from the market, the plaintiff came to know that the defendant had been using the trade marks Mister, Defence, Arun and ML on similar items. It is further alleged that these trade marks namely Mister, Defence, Arun and ML are similar and/or deceptively similar to the trade marks of the plaintiff and thereby the defendant is passing off their goods as those of the plaintiff. Besides the defendant is also infringing the copyright of the plaintiff in the artistic work under the said trade marks. It is further pleaded that goods manufactured by the defendant are of inferior quality affecting the goodwill and reputation of the plaintiff in the market. There are other litigations pending between the plaintiff and husband of the defendant who are the real brothers.

3. Alongwith the plaint, plaintiff also filed an application being IA No. 6268/2000 under Order 39 Rules 1 and 2, CPC and vide order dated 27th June, 2000 this Court issued an ex-parte ad interim injunction restraining the defendant, her dealers, agents, servants and all other persons acting on her behalf from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in luggage items or other allied or cognate gods under the trade mark Mister, Defence, Arun and ML or any other identical or deceptively similar trade mark. Defendant has now filed an application being IA No. 5461/2000 under Order 39 Rule 4, CPC for vacating the ex parte stay order dated 27th June, 2000. In the written statement, the defendant has taken the stand that trade marks claimed by the plaintiff are not registered so there is no question of infringing the trade mark. The defendant has filed opposition to the application for registration filed by the plaintiff. It is pleaded that defendant is the prior user of the trade mark Mister and Arun which she has been using since 1991 and application for registration has been accepted for advertisement in the Trade Mark Journal. According to defendant, trade mark ML stands for Mister Luggage and the first word Mister is the trade mark of the defendant. According to learned Counsel for the defendant, the suit has been filed only because of business rivalry. It is also contended that words Mister, Defence, Arun and ML are common language words so they cannot be exclusively appropriated by any one. It is further contended that plaintiff has obtained the ex parte ad interim injunction vide order dated 27th June, 2000 by falsely stating that he came to know about the use of impugned trade marks by the defendant only in June, 2000. Actually the defendant has been using the said trade marks since 1991. Thus the plaintiff is guilty of misleading the Court and on this ground alone the ex parte injunction issued on 27th June, 2000 is liable to be vacated.

4. I have heard learned Counsel for the parties and perused the record.

5. Having given my thoughtful consideration to the respective submissions made by learned Counsel for the parties, I am of the considered view that the ex-parte injunction is liable to be vacated for the following three reasons :

(1) Trade names adopted by the plaintiff are common language words and there is no material on record to hold prima facie that such names have acquired any secondary significance as denoting the goods of the plaintiff.

(2) Plaintiff has obtained ex parte injunction by suppression of material facts. The averments made in para 11 of the plaint that plaintiff came to know about use of impugned trade marks by the defendant only in June, 2000 prima facie, appears to be untrue.

(3) Plaintiff is the guilty of laches.

6. It is settled law that common language words and names cannot be exclusively appropriated by any trader unless and until such trade names have acquired such a great reputation and goodwill in the market that the common language word has assumed a secondary significance. Secondary significance here would mean that other traders in that line of trade acknowledge that such common word has come to denote the goods belonging to a particular trader. In this connection reference may be made to a decision of this Court in the case of Globe Super Parts v. Blue Super Flame Industries, AIR 1986 Delhi 245. While dealing with the question of exclusive appropriation of common language word by a trader, learned Single Judge of this Court has held that even a common language word can be exclusively appropriated by a party as a trade mark if the said word has acquired a secondary significance but in the case of a word which is coined, fancy, new or meaningless the claim to exclusive appropriation is sustainable without the need to prove existence of secondary significance.

7. The words Mister, Defence, Arun and ML are common language words and names. So neither party can claim any right to exclusive use of such trade names unless and until it is shown prima facie that its user of such trade names has acquired/earned such a great reputation and goodwill in the market that it has come to be associated with the goods belonging to the trader.

8. In the present case, the plaintiff has filed statement of sales made by him for the last 8 years. This statement appears at page 8 of list of documents filed by the plaintiff. Sales figures for different years are as under :

FINANCIALYEAR SALES (RS.)

1992-9380180.00

1993-94202190.00

1994-95312120.00

1995-96318235.00

1996-97498930.00

1997-98607320.00

1998-99677350.00

1999-2000713630.00





9. These are the sales figures for all the goods sold by plaintiff under different trade names. It is not clear from the statement as to what was the sales figures in respect of goods sold under trade names Minister, Arjun, Defence and ML separately. It may be that the plaintiff has been using some other trade names also besides Minister, Defence, Arjun and ML. The total sales figures given above do not indicate that any of the plaintiffs trade mark has acquired such an impressive reputation that it has come to be associated with the goods of the plaintiffs. If the total sales after eight years of business under different trade names is only about Rs. 7 lacs, it can be safely inferred that the total sales under the individual trade names Minister, Arjun, Defence and ML or any other trade names which the plaintiff may be using, will hardly be between Rs. 1-2 lacs or even less. This is the performance of the plaintiff after 8 years of business. At this stage the Court has to take only a prima facie view of the matter. So in the circumstances of the present case, it can be safely inferred that none of these common language words or names used by the plaintiff have earned or acquired any impressive goodwill or reputation so as to have gained a secondary significance, viz. that they represent the goods of the plaintiff. It, therefore, follows that the plaintiff has no exclusive right to use such common language words or names as his trade marks to the exclusion of other traders.

10. Mere filing an application for registration of said trade marks and advertisement in Trade Mark Journal confers no right on the applicant Metro Playing Card Co. v. Wazir Chand Kapoor, AIR 1972 Delhi 248. .=9 (1973) DLT 20 (DB) Admittedly no registration certificate has been granted to the plaintiff in respect of any trade marks. So the question of infringement of trade mark does not arise. Passing of action will also not be maintainable in respect of trade marks using common language word or names which have not earned or acquired any impressive reputation, goodwill or distinctiveness American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Anr., AIR 1986 SC 137 [LQ/SC/1985/319] .

11. It was vehemently contended by learned Counsel for the defendant that plaintiff has been fully aware of the defendants use of trade names Mister and Arun since 1991 or at least since 1996 when plaintiff had filed a Caveat in this Court on 9.9.1996. Since this was disputed by learned Counsel for the plaintiff at the time of arguments, a report was called from the Registry. The report indicates that Caveat No. 905/1996 was filed by Shri M.L. Mangla, Advocate vide Diary No. 1881/1996 dated 9.9.1996 titled as S.K. Bags v. M/s. Vijoy Industries. Plaintiff is carrying the business under the style of M/s. Vijoy Industries whereas the defendant is carrying her business under the name and style of S.K. Bags. Copy of the caveat has been placed on record by learned Counsel for the defendant. A perusal thereof shows that in para 3 of the caveat the plaintiff had made averments to the effect that Non-Caveator namely present defendant claims to be manufacturers of bags, brief cases, attachies and other allied goods under the trade mark Mister vide Registration No. 168850. This shows that at least in 1996 the plaintiff was aware of the fact that the defendant is manufacturing and marketing similar goods under the trade name Mister. The plaintiff has made false averments in para 11 of the plaint that they came to know about defendants manufacturing, selling and marketing of similar goods under the trade names only in June, 2000. Learned Counsel for the plaintiff could not offer any satisfactory explanation regarding false averments made in para 11 of the plaint in this regard.

12. It is important to note that the plaintiff and defendants husband are real brothers and it is admitted between the parties that there is already some litigations between them. It is, therefore, not possible to believe that plaintiff would not be knowing what business is being carried on by his business rival and under what names. Apparently in making false averments made in para 11 of the plaint, the plaintiff was motivated by the desire to obtain ex parte injunction by misrepresenting to the Court that there has been no delay on his part. The possibility of the Court having been persuaded to grant ex parte injunction on the basis of false statement made by the plaintiff as to their knowledge of the use of impugned trade mark by defendant cannot be ruled out. M/s. Hindustan Pencils Limited v. Aptudet Industries, 1991 PTC 204.

13. When the Court comes to a prima facie conclusion that the plaintiff has obtained ex parte injunction by misrepresentation of facts, the Court would be justified in vacating the ex parte stay (The Fairdeal Corporation (Pvt.) Ltd. v. Vijay Pharmaceuticals, 1985 PTC 80; The Gillette Company and Ors. v. A.K. Stationery and Ors., 2001 PTC 513 (Del.).

14. In view of my observation above that at least in 1996 the plaintiff was fully aware of the user of the impugned trade marks by the defendants, it follows that suit which was filed in the year 2000 is inordinately delayed and suffers from laches.

15. In the book The Law of Passing Off by Christopher Wadlow, learned Author has observed as under :

Delay in applying for interlocutory relief is a very serious matter. As a rule of thumb, delay of up to about a month, or perhaps six weeks, generally has no adverse effect on an inter parties application and delay of up to twice that period need not be fatal if it can be explained and the plaintiffs case is otherwise strong. On an ex parte application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiffs case, even though delay of this order has no effect on the plaintiffs rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is therefore, a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunction in which there is significance delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience.

16. Learned Counsel for the defendant has placed on record copies of various bills of the year 1991 showing that it has been selling attachies etc. under the trade name Mister since 1991 i.e. before the plaintiff commenced his business on 1.4.1992. It is difficult to believe that the plaintiff would not have come to know about the business of defendant till the year 2000. Such an inordinate delay on the part of plaintiff indicates that either he suffered no loss or injury because of the alleged misuser of the impugned trade marks by the defendant or he cordoned the same.

17. For the aforesaid reasons, I am of the view that the plaintiff has failed to make out a prima facie case in his favour. Besides the plaintiff is not entitled to any relief or injunction because he has been found prima facie guilty of suppression of material facts and obtaining ex-parte injunction by misrepresentation of facts which have been prima facie found to be false.

18. In the result, IA No. 6268/2000 under Order 39 Rules 1 and 2, CPC filed by the plaintiff is hereby rejected and IA No. 5461/2001 under Order 39 Rule 4, CPC filed by the defendant is allowed. Ex parte injunction order dated 27th June, 2000 is hereby vacated.

IAs stand disposed of.