M.A. No.4505/09
28.04.2010
Appellant by Shri R.K. Verma, Advocate.
Respondents by Shri Rajeshwar Rao, Advocate.
This is an appeal on behalf of the appellant/plaintiff
against the order dated 15.10.09 whereby the trail Court
has rejected the application filed by the appellant/plaintiff
under Order 39 rule 1 and 2 CPC.
The appellant/plaintiff is running coaching classes
for IIT-JEE/AIEEE/PMT by the name MOMENTUM
Coaching Classes. This name MOMENTUM along with the
logo is registered as a trade mark in favour of the
appellant/plaintiff through the Trade Marks Registry.
There is no dispute in the present case prior to the
registration of the Trade Mark by the present appellant
under Section 23(2) Rule 62(1) of Trade Marks Act, 1999,
both i.e. plaintiff as well as the defendant were using the
same trade mark. Subsequently, the appellant/plaintiff got
registration of Trade Mark and thereafter a suit was filed
that since the appellant/plaintiff has got the registration
therefore, the respondent/defendant cannot be permitted
to use the trade mark of the plaintiff. Injunction
application was filed which was also rejected.
The appellant heavily relied upon the judgment
passed by the Apex Court in AIR 2005 SC 1999 Dhariwal
Industries Ltd. And another Vs. M/s. M.S.S. Food
Products and on this basis it is submitted that the claim
for grant of injunction can be made in respect of
unregistered trade mark also. There is no dispute to the
preposition and to the ratio laid down by the Apex Court
but the question in the present case is that if prior to
registration of trade mark by the appellant/plaintiff, the
same trade mark was used by the respondent and at that
time, no one got the registration of its trade mark. The
registration of the trade mark was subsequently obtained
in the year 2005 by the plaintiff and prior to 2005, both
plaintiff and the defendant were using the same trade
mark then on the basis of the aforesaid facts, the
applicability of Section 34 of the Trade Marks Act, 1999
being a saving clause, save for the vested rights and
accordingly reads as under:-
“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 oh
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.”
It is to be seen that the Apex Court in case of
Dhariwal Industries Ltd. (supra) has not taken into
account Section 34 of the Trade Mark Act, 1999 and has
taken into account Section 135, 27 and 29 of the said Act.
Prima facie it appears that Section 34 starts with “Saving
for vested rights” with the words “Nothing in this Act shall
entitle the proprietor 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 oh
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.”
It is to be seen that in case of Dhariwal Industries
(supra), the question before the Court was involved with
regard to use of Trade Mark by unregistered dealers. In
the present case, the question is that when before
registration both the parties were using the same Trade
Mark and the appellant/plaintiff got registration thereafter
of the said trade mark then the Apex Court has no
occasion eventually to consider the effect of Section 34
of the Act which has already been reproduced
hereinabove. Therefore, at this stage, it is doubtful that
the case of Dhariwal (supra) as such applies in the facts
and circumstance of the present case.
On the basis of the aforesaid saving clause and also
keeping in view the facts that in case of Dhariwal
Industries (supra), the Apex Court has not taken into
consideration Section 34 of the Act, I am of the view that
prima facie it appears that Section 34 applies in favour of
the defendant and accordingly, the trial Court was
justified in rejecting the application for injunction and no
case for interference is made out.
However, I direct the trial Court to decide the suit
within a period of 8 months from the date the certified
copy of this order is submitted.
The parties shall not seek unnecessary adjournment.
Accordingly, the appeal stands disposed of.
(R.K. Gupta)
Judge
rao