Airtec Electrovision Pvt. Ltd v.

Sunil Kumar Saluja, FAO (COMM) 182/2021, Delhi High

Court.

3. The case of the appellant/plaintiff is that the appellant is engaged in the business of
manufacture, promotion and distribution of E-LED Signature Not Verified Digitally Signed
By:BHUPINDER SINGH ROHELLA Signing Date:31.01.2022 14:34:34 Television Sets across
India under the name and style of "EIRTEC". The appellant/ plaintiff alleged that in June 2021, it
came to its notice that the respondent/ defendant was using the trademark "AIRNET" in respect
of television sets…The appellant/ plaintiff claimed that its mark is registered, whereas that of the
respondent defendant was not registered, since the respondent/ defendant had not pursued its
application for registration of its mark.

14. Merico Limited v. Agro Tech Foods Limited, 2010 SCC Online Del 3808: “…Plaintiff got
registered the Trademarks "LOSORB" and "LO-SORB" for different products in class-29 viz
Oil, Ghee etc. effective from 28.05.2001…. It was observed that the plaintiff was using trade
mark since 2001 and which user even as per the stated sales cannot be said to be such user qua a
descriptive expression LOW ABSORB that it can be said that the appellant has got such
distinctiveness to claim exclusive monopoly of the same as a trademark keeping in mind the
observations made above of discouraging appropriation of descriptive words and expressions.”

16. Merico Limited v. Agro Tech Foods Limited, 2010 SCC Online Del 3808: “…once the
person, against whom a suit is filed on the ground of infringement of a trademark which is in fact
a descriptive word, then, if a defendant is using his word mark as a trademark prominently in
addition to the descriptive word mark which the plaintiff claims to be his trademark, nothing
further is required to show the bonafides of the defendant against whom infringement of a
registered trademark is alleged. In facts of the present case, we have already adverted to in detail
the prominent use by the respondent of its independent trademarks 'Sundrop', and, the fact that
expression 'LOW ABSORB' is being used only.”

41. The following conclusions thus emerge:- (i) A mark which is sought to used as a trade mark,
if, is one falling under Section 9 (1)(a) to (c), then the same ordinarily ought not to be afforded
protection as a trade mark.
(ii) Before the marks which fall under Section 9(1) (a) to (c) are given protection as a trade mark,
the distinctiveness must be of an undisturbed user of a very large/considerable number of years,
with the emphasis being on discouragement on appropriation of such marks which fall under
Section 9(1)(a) to (c).

(iii) A civil Court in a suit filed for infringement of a registered trade mark is entitled (if there is
no earlier judgment which has achieved finality in cancellation proceedings) to consider the
validity of registration for the purpose of passing an interlocutory order including of grant or
refusal of an interim injunction--once the objection as to invalidity of registration is taken up in
the pleading/written statement.

(v) In infringement actions the Court is entitled to consider the evidence of distinctiveness up to
the date of registration for the purpose of passing any interlocutory order and not evidence
showing distinctiveness post registration. However, in cancellation proceedings evidence of
distinctiveness post registration of the trade mark can also be considered.

(vi) Even if there is finality to registration of a trade mark, yet the defendant in infringement
action can take statutory defenses under Sections 30 to 35 to defeat the infringement action.

21. As already observed that these words which has not acquired secondary meaning with
respect to product of plaintiff and therefore plaintiff cannot claim monopoly over these words.
The ratio of Merico judgment (supra) squarely applies to the fact in hand. Accordingly I am of
the opinion that plaintiff has failed to show that he has prima facie good case and balance of
convenience rests in his favour.

Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., CIVIL APPEAL NO. 1018
OF 2006, Supreme Court of India.

2. Briefly stated, the Plaintiff-Respondents 1 & 2 had filed a suit for injunction, damages and
account of profits. The Plaintiff-Respondents are engaged in the business of manufacture and
marketing of pharmaceutical products and medicinal preparation, and as pleaded by them, have
acquired high reputation and goodwill in the market.

5. The primary argument of the Defendant-Appellant is that it had received registration for its
trademark ROFOL in Class V on 14.9.2001 relating back to the date of its application viz.
19.10.1992. It contends that the circumstances as on the date of its application are relevant, and
on that date, the Plaintiff-Respondents were not entities on the market. However, the Defendant-
Appellant has conceded that it commenced user of the trademark ROFOL only from 16.10.2004
onwards. Furthermore, it is important to note that litigation was initiated by Plaintiff-
Respondents, not Defendant-Appellant, even though the latter could have raised issue to
Plaintiff-Respondents using a similar mark to the one for which it had filed an application for
registration as early as in 1992.

6. It may be reiterated that the Plaintiff-Respondents asserts that their predecessor-in-interest had
initiated user of the trademark PROFOL in 1998, when it commenced production thereof and
Plaintiff-Respondents succeeded to the user of the mark upon amalgamation with their
predecessor-in-title in the year 2000. The position that emerges is that whilst the Defendant-
Appellant had applied for registration of its trademark several years prior to the Plaintiff-
Respondents, (1992 as against 26.5.1998 at the earliest), the user thereof had remained dormant
for twelve years. We can appreciate that this passivity may be the result of research of the
product or the market, but the Defendant-Appellant will have to explain its supineness through
evidence. In this interregnum, the Plaintiff-Respondents had not only applied for registration but
had also commenced production and marketing of the similar drug and had allegedly built up a
substantial goodwill in the market for PROFOL. The legal nodus is whether the prior registration
would have the effect of obliterating the significance of the goodwill that had meanwhile been
established by the Plaintiff-Respondents. Would a deeming provision i.e. relating registration
retrospectively prevail on actuality – competing equities oscillate around prior registration and
prior user.

7. This Section (Section 34, TM Act, 1999) palpably holds that a proprietor of a trade mark does
not have the right to prevent the use by another party of an identical or similar mark where that
user commenced prior to the user or date of registration of the proprietor. This “first user” rule is
a seminal part of the Act…the entirety of the Section needs to be taken into consideration, in that
it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to
the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the
Defendant-Appellant filed for registration in 1992, six years prior to the commencement of user
by the Plaintiff-Respondents. The Defendant-Appellant was, thus, not prevented from restraining
the Plaintiff-Respondents’ use of the similar mark PROFOL, but the intention of the Section,
which is to protect the prior user from the proprietor who is not exercising the user of its mark
prima facie appears to be in favour of the Plaintiff-Respondents.

8. In the case in hand, prima facie, it appears that for over five years after a registration
application was made by the Defendant-Appellant, the mark was not used.

9. We must hasten to clarify that had the Defendant-Appellant commenced user of its trademark
ROFOL prior to or even simultaneous with or even shortly after the Plaintiff-Respondents’
marketing of their products under the trademark PROFOL, on the Defendant-Appellant being
accorded registration in respect of ROFOL which registration would retrospectively have
efficacy from 19.10.1992, the situation would have been unassailably favourable to it…in the
recent decision in S. Syed Mohiden v. P. Sulochana Bai (2015) 7 SCALE 136, this Court has
pithily underscored that the rights in a passing-off action emanate from common law and not
from statutory provisions, nevertheless the prior user’s rights will override those of a subsequent
user even though it had been accorded registration of its trademark.

10. All that we would say in the present Appeal is that since the Plaintiff-Respondents have
alleged, and have prima facie supported with proof, that they had already been using their
trademark well before the attempted user of an identical or closely similar trademark by the
Defendant-Appellant, the former would be entitled to a temporary injunction, in light of the
abovementioned ‘first in the market’ test.

Decision: In favor of plaintiffs.