M/S Baid Rotomoulders Pvt Ltd vs M/S S M Industries (2023/Rjjp/003212)

S.B. Civil Miscellaneous Appeal No. 963/2016 M/s Baid Rotomoulders Pvt Ltd. 140 (2) Industrial Area, Jhotwara, Jaipur (Raj.) through Director K.K. Baid ----Appellant-Plaintiff Versus M/s S. M. Industries, 340/23, Ground Floor, Street No.-1, Friends Colony, Industrial Area, G.T. Road, Shadra, Delhi-110032 through Authorized Signatory/Director/Manager ----Respondent-Defendant

For Appellant(s) : Mr. G. D. Bansal with Mr. Dharmendra Gupta For Respondent(s) : Mr. Amit Chhangani

HON'BLE MR. JUSTICE SUDESH BANSAL Judgment

13/02/2023

1. By way of instant Civil Miscellaneous Appeal, appellant-

plaintiff (hereinafter referred to "the plaintiff") is praying for grant

of temporary injunction against the respondent-defendant

(hereinafter referred to "the defendant") for not using the trade

name 'POLYGON' for manufacturing and sale of water tank and

PVC pipes, container water storage, hose pipes, DHPE pipes,

flexible pipes and conduit pipes, rigid PVC etc. because this trade

name is deceptively and phonetically similar to its registered trade

name of 'POLYCON' and has prayed to set aside the impugned

order dated 12.10.2015 whereby and whereunder plaintiff's

application for temporary injunction was dismissed by the Trial

Court.

2. Heard learned counsel for both parties, perused the

impugned order and record placed before this Court.

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3. It appears from the record that the plaintiff instituted civil

suit for permanent injunction alongwith an application for

temporary injunction on 13.02.2015 on the ground of

infringement/passing off his registered trademark 'POLYCON'

against the defendant alleging inter alia that on 10.12.2014, it

came to knowledge of plaintiff-company that defendant-company

has started manufacturing and selling products of PVC pipes, hose

pipes, DHPE pipes, flexible pipes and conduit pipes etc. by using

the trademark 'POLYGON' after copying the trademark of plaintiff

'POLYCON' and since the trademark of plaintiff is registered; both

trademark are deceptively and phonetically similar, the use of such

trademark by respondent is illegal. Plaintiff alleged that the

defendant has started to use the trademark 'POLYGON',

dishonestly in order to gain the benefit of the goodwill of the

registered trademark of plaintiff and thereby the defendant is

misleading customers, traders and public. Plaintiff alleged that

such action of defendant is infringement of registered trademark

of plaintiff and since plaintiff is prior user of his trademark,

'POLYCON', therefore starting the business by the defendant in the

trademark of 'POLYGON' is illegal and against provisions of

Trademarks Act, 1999, accordingly, the plaintiff prayed for to

restrain the defendant by way of permanent injunction and until

decision of suit, by way of temporary injunction not to use

trademark of Polygon for his business activities.

4. In counter, defendant filed reply to the application for

temporary injunction contending that the defendant had already

applied for registration of trademark 'POLYGON' Class 17 and he is

indulged and carrying out business using the trade name

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'POLYGON' since years to sell Oil Seals, Gaskets, Ruber Parts,

Gutta, Percha, Gum, Asbestos, PVC Pipes, Hose Pipes, HDPC

Pipes, Flexible Pipes, Conduit Pipes, Rigid PVC Pipes, PVC

Sleevings, Laminated Sheets, Packaging, Stopping & Insulated

Material PVC Casing and Caping, Mudguard, Visor, Side Panel, Side

Box for wheeler, Seat Cover & Plastics Parts, Mica and goods made

from these materials etc. Defendants also stated that its sister

concern firm through owner Manoj Agarwal has already got

registration of the trademark 'POLYGON' Class-9.

Counsel for defendant pointed out that the plaintiff has no

registration in the trademark in the name of 'POLYCON' Class-17

and its application No.2198072 dated 15.09.2014 for registration

is yet pending before the Registrar of Trademarks, wherein the

defendant has submitted an objection/opposition. It was pointed

out that the plaintiff has misleaded the Court as Trademark

'POLYCON' No.2198072 in Class-17 of plaintiff is still unregistered,

therefore, claiming injunction on the ground of infringement of

registered trademark, is against provisions of Section 27 (1) of the

Trademarks Act, 1999. As far as registration of Trademark

'POLYCON' of plaintiff as indicated in para 6 of the application, the

trademark 'POLYCON' No.489207 and 'POLYCONGOLD' No.808778

are device mark in Class 11 for molded water storage tanks and

'POLYCON' registration No.2198070 is restricted by the Registrar

for sale of goods in Rajasthan only. Defendant has clearly stated

that the registered office of defendant is situated at Delhi and no

cause of action within the jurisdiction of Jaipur Metropolitan City

has arisen, therefore the suit is barred by territorial jurisdiction

under Section 20 of CPC.

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5. This Court finds that as far as infringement of the

registration of plaintiff's trademark 'POLYCON' is concerned, it is

undisputed that the registration of plaintiff in the trade name of '

POLYCON' in Class-17 registration No.2198072 is still pending

under objection and opposition by the defendant and the plaintiff

wrongly claimed injunction on the ground of infringement. The

registration of plaintiff in the trade name 'POLYCON' and

'POLYCONGOLD' as referred in para 6 of the application for

temporary injunction are all different Class and device marks

where the registration has been granted with condition/disclaimer

and the registration No.2198070 is in Class 21, which is restricted

for sale of goods in Rajasthan only.

6. Learned counsel for appellant-plaintiff has argued that on the

ground of passing off action, the plaintiff is entitled to seek

injunction, although no detailed and specific pleadings in respect

of passing off action are pleaded as he submits that the case of

infringement of registered trademark should be treated to be

included the action of passing off since same is intrinsic part of

infringement.

7. In respect of passing off action, defendant has stated in his

reply to the application for temporary injunction that the

defendant is indulged in carrying on the business to manufacture

and sale of Oil Seals, Gaskets, Ruber Parts, Gutta, Percha, Gum,

Asbestos, PVC Pipes, Hose Pipes, HDPC Pipes, Flexible Pipes,

Conduit Pipes, Rigid PVC Pipes, PVC Sleevings, Laminated Sheets,

Packaging, Stopping & Insulated Material PVC Casing and Caping,

Mudguard, Visor, Side Panel, Side Box for wheeler, Seat Cover &

Plastics Parts, Mica and goods made from these materials etc.

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since years and its sister concern has registration of trademark

'POLYGON' in Class 9 since 11.01.2002.

8. Firstly, the issue in respect of passing off action and who is

the prior user, is a matter of evidence and secondly, no material

has been placed on record by the plaintiff to prove that the

plaintiff is carrying on manufacturing and selling products in the

name of 'POLYCON' in the open market since which year and since

how long. There is no material on record that the plaintiff has

acquired so much goodwill and reputation by using the trademark

'POLYCON' in the market that the respondent dishonestly in order

to ride over the reputation of the plaintiff's goodwill, started his

business by using the trademark 'POLYGON' though for different

type of products, and thereby caused any damage to the plaintiff

either monetary or to its reputation. The law in respect of seeking

injunction on the ground of passing off action is consistent that no

one can be permitted to encroach upon the reputation and

goodwill of other parties. Once the plaintiff failed to prove prima

facie acquisition of goodwill of 'POLYCON' in market, temporary

injunction on passing off action can not be granted. The business

of defendant cannot be put at halt on the basis of assumptions &

presumptions merely askance of plaintiff. This Court finds support

to its findings, by the ratio decidendi of the celebrated judgment

of Hon'ble Supreme Court in case of T.V. Venugopal Vs.

Ushodaya Enterprises Ltd & Anr.[(2011) 4 SCC 85].

9. Defendant has stated that its sister concern firm in the

proprietorship of Shri Manoj Agarwal has registration of trademark

'POLYGON' in Class-9 and rather plaintiff copied the name of

'POLYCON' and sought to register the name of 'POLYCON' before

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the Registrar, however when the defendant came to know about it,

he immediately submitted his opposition and thereafter the

plaintiff has instituted the present suit and application for

temporary injunction as a counterblast. Thus, at this stage, it may

not be assumed that the defendant started its business by using

the name of 'POLYGON' in the year 2014 only. However, it is all

matter of evidence as to who is the actual prior user of their

respective trade name, 'POLYCON' or 'POLYGON'.

10. Defendant has also pointed out that before the Trial Court,

no ad interim injunction was granted in favour of plaintiff and after

dismissal of his application for temporary injunction vide

impugned order dated 12.10.2015, no interim injunction has been

granted in favour of plaintiff till date and since the plaintiff has not

proved prima facie that his reputation or business has suffered

loss or damages in any manner by continuing and carrying out the

business by the defendant company since years with the

trademark of 'POLYGON' nor there is any evidence to show that

the defendant copied the trademark 'POLYGON' dishonestly or

malafidely nor it is established that the plaintiff is prior user of the

trademark 'POLYCON', therefore at this stage, no prima facie case

stands in favour of plaintiff and impugned order dated 12.10.2015

warrants no interference by this Court.

11. This Court finds force in the contention of learned counsel for

defendant and does not find any material to hold prima facie case

of infringement/passing off action of plaintiff, against the

defendant. The fact finding recorded by the Trial Court in the

impugned order while discussing the issue of prima facie case are

based on appreciation of the material on record and are well

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within its jurisdiction and parameters of law, as such this Court is

not inclined to interfere with the such fact finding, moreso in

absence of any additional or other material on record.

12. As far as ingredients of balance of convenience and

irreperable injuries are concerned, loss or damages to plaintiff are

in anticipation only and no material have been placed on record,

which prima facie proves the actual loss or damages to the

business and reputation of plaintiff, by continuing the business of

defendant. The balance of convenience has a vital role to play in

matters of injunction in respect of Intellectual Property Rights

(IPR). On facts, neither balance of convenience tilts in favour of

plaintiff nor there is any irreperable injury or loss to the plaintiff, if

the temporary injunction is not granted.

13. As a final result, without interfering with the impugned order

dated 12.10.2015, the instant misc. appeal is hereby dismissed.

However, it is hereby observed that the finding recorded in the

impugned order by the Trial Court or in the present order by this

Court, would not affect the trial of suit on merits and the suit shall

be decided independently on the basis of evidence adduced by

both parties. The Trial Court is expected to expedite the trial of

suit.

14. Stay application and any other pending application, if any,

stand disposed of.

(SUDESH BANSAL),J

TN/54

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