JUDGMENT
A.K. Srivastava, J.
(1) I.A. 12312/96 is an application of the plaintiff under Order 39 Rules I and 2 read with Section 151, Cpc, for grant of interim injunction. This application was taken up on 13.12.96 when upon hearing learned Counsel for the applicant an ex parte injunction was granted, in terms of para 20 of this application restraining the defendants, their partners etc. from carrying on any business under the trade mark and trade name In-style inrespect of footwears of all kinds, belts, wearings, briefcases and handbags.
(2) I.A. 40/97 has been moved by the defendants under order 39 Rule 4 read with Section 151, Cpc, with a request that ex parte ad interim order so granted may be vacated.
BOTH these applications were taken up for hearing. Heard the learned Counsel for the parties.
(3) The undisputed facts are: that the plaintiff moved for registration of trade mark “In-style” in the year 1987. It was published in the Gazette and thereafter registration was granted to the plaintiff in the year 1990. The defendants, admittedly did not oppose the application of the plaintiff. The defendants, on the other hand, applied for registration of trade mark ‘in-style’ vide application dated 23.7.86. It was published on 16.9.91. In the application it was stated that the defendants proposed to use the trade mark In-style’. Against that application opposition was made by the plaintiff. The Registrar, Trade Marks, after hearing the parties ordered for grant of registration to the defendants vide order dated 14.11.94. Before registration certificate could be issued the plaintiff filed appeal in the High Court against the said order of the Registrar of Trade Marks and the High Court has stayed grant of registration to the defendants till disposal of the appeal.
(4) PLAINTIFF’S case is that he has been using the trade mark ‘In-style’ since the year 1983 and the yearly sales are as per details given in para 6 of the plaint. On the other hand the defendants’ case is that they have been using the trademark ‘Instyle’ for their products, namely, footwears and all kinds of leather items since 1986 and the sales made by them have been as shown in para 24 of the Ia 40/97; that the plain tiff had all along been aware since 1986 that the defendants had been using the trade mark ‘In-style’ but had never objected for the same.
(5) It is admitted by the plaintiff that in its registration certificate there is a disclaimer regarding the word “Style” and, therefore, any one can sell similar products in the trade name ‘style’. The defendants also admit that in their application they had given a disclaimer that their trade mark shall not give exclusive user of the word “In-style” to them.
(6) After giving the admitted position and the respective factual cases of the parties, now I come to the respective legal pleas taken by them. The legal ground taken by the plaintiff is that it has a registered trade mark “In-style” since 2.2.87 claiming user since 1983; that by virtue of that registration the plaintiff has got the exclusive right under Section 28 of the Trade and Merchandise Marks Act (for short the “Act”) and also under Section 31 of the Act; that for the purposes of judicial proceedings the registration certificate would be deemed to be valid in view of the provisions of Section 32 of the Act and that the defendant is infringing the said mark in view of the provisions of Section 29 of the Act. In support of the legal pleas the following judgments have been relied upon by the plaintiff.
1.76 BLR146, Hindustan Embroidery Mills Pvt. Ltd. v.K .Ravindra & Co.
2. , Corn Products Refining Co. v. Shangrila Food Products Ltd.
3. AIR 1986 Delhi 245, Globe Super Parts v. Blue Super Flame Industries.
4. , Century Traders v. Roshan Lal Duggar & Co.
5. , DaimlerBenzAktiege-sellschaftandAnr. v. Hindus ion.
6. , Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.
7.1984 Ptc 102, Charan Dass & M/s. Veer Industries (India) v. M/s. Bombay Crockery House.
(7) In order to meet the contentions of the defendants that the plaintiff made delay in filing the suit the following judgments have been relied upon by the plaintiff’s Counsel
1. , M/s. Hindustan Pencils Pvt. Ltd. v. Mis. India Stationery Products Co. and Am.
2. M/s. Power Control Appliances & Ors. v. M/s.Sumeet Machines Pvt. Ltd.
3. , Shri Swaran Singh Trading as Appliances Emporium v. M/s lisha Industries (India) New Delhi and Am.
4.1986 PTC4l, Lalsons Machines Pvt. Ltd.v.Sachar Electric & Machine Store.
5. , N.R. Dongre and Ors. v. Whirlpool Corporation and Ors.
(8) 0N theotherhandthecontentionsofthedefendantsare,inter alia that at this stage of the suit the application of the plaintiff being under0rder39 Rules I and 2 should be decided on the well established principles of balance of convenience, that there is no infringement as the plaintiff had given disclaimer of the word “Style”, which has a definite meaning and not a coined word; that in view of the provisions of Section 17(b) of the Act, registration of trade mark “In-style” in favour of the plaintiff shall give no right to the exclusive use of the word “In-style”; that the defendants are clearly protected by the provisions of Section 30(a) of the Act; that the defendants are also entitled to registration of their script under Section 12(3) of the Act as honest concurrent user; that the Registrar of Trade Marks has ordered for registration of defendants’ trade mark “In-style” and the registration certificate has not been issued only because of stay granted in favour of the plaintiff in the appeal filed by it against the order of the Registrar, Trade Mark; that in case the ex parte injunction granted is confirmed the defendants would be no road and their entire business would be finished which would not be repairable if ultimately the suit is dismissed; that on the other hand if the interim order asked for is refused the plaintiff would still be having a remedy to take damages from the defendants which have already been prayed for in the suit quantified at Rs. 5 lacs.
THEdefendants’ learned Counsel relies on the following judgments, namely: I. , Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. 1. 1988 Ptc 82, Jain Rubber industries v. Crown Pvt. Ltd. and Others. 3. 1991 Ptc 204, M/s. Hindustan Pencils Ltd. v. Aptudet Industries. 4. 1975 (1) All. E.R 504, American Cyanamid Co. v. Ethicon Ltd. 5. 1990(2) Arb. L.R. 399, Wander Ltd. and Another v. Antox India (P) Ltd. 6. 1994 Supp. (3) Scc 215, J.R. Kapoor v. Micronix India. 7. 1984 Ptc 264, Swaran Sinha Trading as Appliance Emporium v. M/s. Usha Industries (India) & Am.
(9) I have carefully considered the legal pleas taken by the learned Counsel for the parties and have also perused the relevant portions of the judgments and orders relied upon by them On going through all that, I find that in case I deal with them in this order I will have to definitely enter into the merits of the suit itself which at this stage of hearing, that is to say, while dealing with an interim application under Order 39 Rules I and 2,1 feel that it would not be appropriate. Moreso, when the learned Counsel for the defendants himself contended that these applications be decided on the basic principles of prima facie case and balance of convenience. In these circumstances, I refrain from making discussion in this order about the respective legal stands taken by the learned Counsel for the parties.
(10) The plaintiff is no doubt a registered trade mark holder of In-style’. Learned Counsel for the defendants does not dispute that the plaintiff has a prima fade case. He only contends that balance of convenience is in favour of the defendants. His case is that since 1986 the defendants have established the business of selling footwears and leather goods in the trade mark “In-style” in Shop No. F- 7, Connaught Place, New Delhi, which in case the interim order passed by this Court onl3.12.96inlA12317/96,iscontinuedthedefendants would be put to irreparable loss and would be ruined whereas if the interim order is not allowed to continue the plaintiff would still have a remedy to recover damages from the defendants if the suit is decreed in favour of the plaintiff.
(11) I have given my careful thought on the above plea and I find that when the plaintiff has registration in its favour which prohibits others from using that very trade mark it would not be proper at this stage to permit the defendants using that very trade mark unless they are given registration certificate by the Registrar, Trade Marks considering them to be honest concurrent user since 1986. In my view, considering the facts and circumstances of the case, the defendants can still run their business during pendency of this suit in the trade name “style” as there is admittedly a disclaimer from the side of the plaintiff and the plaintiff has categorically permitted the defendants to sell its goods in the trade name “style”. From one of the cash memos filed I find that a sale has been made by the defendants’ shop in the trade name “style” which they can still continue in order to sustain themselves in their business. The only thing they will have to do is to remove the word ‘in’ from their trade name In-style’ till disposal of the suit.
(12) In view of abovediscussion, these two I.As. are disposed of with an order that the interim order granted on 13.12.96 in I.A. No. 12317/96 is confirmed till disposal of the suit with a modification that the defendants shall be permitted to sell their goods in the trade name ‘style’ and I.A. No. 40/97 is rejected.