Manmohan Singh JUDGMENT
Manmohan Singh, J.
1. The plaintiff has filed the suit for infringement, permanent injunction, restraining passing off and rendition of accounts against the defendant.
Relevant facts of the case as per the plaint
2. The plaintiff claims that he is the proprietor of the Proprietorship firm "SENGE HIMALAYAN CERAMICS" dealing in Tea / Coffee mugs, Tea Cup Saucer, Bowls, Hotelwares, Handicrafts, etc. Since the plaintiff's forefathers are from Tibet, the plaintiff as a child had grown up with the Tibetan mythology and has been very fond of the same and its beliefs. As per the Tibetan mythology, the word 'SENGE' means an auspicious and fearless snow lion.
3. It is alleged that the plaintiff being inspired by the concept and strength of SENGE adopted and conceived the mark SENGE with the device of a fearless lion (hereinafter referred to as the "plaintiff's said trademark/logo") in relation to his business of tours and travels in the year 2000 in the name & style of "SENGE TRAVEL & TOURS", registered on 7th June, 2000 and in which Company the plaintiff is one of the Directors. The following symbol used by the plaintiff in the year 2000 in the said "SENGE TRAVEL & TOURS" is consisted of two snow lions :
4. Subsequent to his travel and tour business, the plaintiff in the year 2002 also started his business of ceramics by way of a Proprietorship firm in the name of "SENGE HIMALAYAN CERAMICS" wherein he started to deal in crockery items such as Tea / Coffee mugs, Tea Cup Saucer, Bowls, Hotelwares, Handicrafts, etc. It is stated that the word 'SENGE' means to be auspicious and fearless and the plaintiff created a logo / back stamp of a snow lion 'SENGE' to ascertain its distinguished quality and designs and to maintain the said uniqueness of quality and design. The plaintiff adopted a unique logo / back stamp and started using it in relation to his goods and services by embossing it on his products so that the same are distinguished from the rest of the products available in the market.
5. It was bonafidely adopted in the year 2000. The plaintiff has been using the word/mark SENGE word per se, stylized, formative/bearing marks with/without the device label of fearless lion and labels as a trademark as also as an essential part of its trade- name in relation to its services of Tours and Travels since the year 2000 and in relation to its said goods and business of ceramics since the year 2002. In addition to its word per se user, the plaintiff over a period of time has been using its SENGE trademark in various stylized and artistic formats and labels, which have been created over a period of time. The plaintiff's said trademark SENGE along with the device of fearless lion is an arbitrary trademark of the plaintiff in relation to its services and business of Tours and Travels, as also in the business of ceramics.
6. The plaintiff in order to promote his business in the year late 2002 entered into an arrangement with one M/s. Diamond Potteries Pvt. Ltd., Works Factory, 40th K.M., Delhi Rohtak Road, Village - Jakhoda, Bahadurgarh, Haryana, who amongst other manufacturers the plaintiff deals with, conducts job work on behalf of the plaintiff by applying/printing the plaintiff's said trademark/logo of "Senge Himalayan Ceramics" along with the device of fearless lion on the said goods of the plaintiff. Thereafter, Diamond Potteries Pvt. Ltd. would hand over the said goods after applying the plaintiff's said trademark/logo of "Senge Himalayan Ceramics", with the device of fearless snow lion which were being sold by the plaintiff in the market. The said arrangement is still in existence and the plaintiff sells the products manufactured by Diamond Potteries Pvt. Ltd. for the plaintiff only. As a result, the plaintiff's products under the trademark "Senge Himalayan Ceramics" along with the aforesaid logo/ back stamp, over a period of time became extremely popular among the general consumers / purchasers and members of trade and public at large and the plaintiff has built a reputation and goodwill among the public and customers at large and which is associated exclusively with the plaintiff as a result of the painstaking efforts of the plaintiff and is solely associated with the plaintiff.
7. The manner in which the composite words SENGE with the device of fearless lion is used by the plaintiff, is the true and original art-work of the plaintiff, by virtue whereof, the Copyright involved in the said trademark/logo of SENGE along with the device of fearless lion, is the original artistic works within the meaning of Indian Copyright Act, 1957, of which the plaintiff is the exclusive proprietor.
The plaintiff has been dealing with its said Copyright in the course of trade in relation to its said goods and business inter-alia within the meaning of Section 14 of the Copyright Act. The said trademark/logo SENGE of the plaintiff is enforceable within the ambit of the Copyright Act, 1957 as well as by virtue of India's membership to the Berne Convention, the Universal Copyright Convention and the International Copyright Order, 1991.
8. In middle of the year 2000, the plaintiff was looking for a place for his office purposes and while searching for the same came across the premises being 1/6, Vikram Vihar, Gurudwara Road, Lajpat Nagar - IV, New Delhi - 110024 (hereinafter referred to as the 'said premises') which was available for rent. It is at this address that the defendant, M/s. Shri Ram & Co., through its proprietor Mr. Gurdeep Singh came in touch with the plaintiff and befriended him. Subsequently, the plaintiff became a tenant of the defendant from the year 2000 and which tenancy ended in the year 2005. The plaintiff entered into a rent agreement of two years each dated 5th May, 2000 and 1st May, 2002 respectively with Mr. Gurdeep Singh (defendant's proprietor) and his mother Smt. Shakuntala Devi, owners of the said premises. Copies of the rent agreements dated 5th May, 2000 and 1st May, 2002 have been placed on record. Thereafter, the plaintiff started his business operations from the said premises and which address also forms a part of the Certificate of Registration under Delhi Value Added Tax Act, 2004, issued by the Department of Value Added Tax, Government of NCT of Delhi.
9. The defendant's proprietor Mr. Gurdeep Singh, in the year 2002, was engaged in the business of manufacturing ceramics crockery under the trade description of Shri Ram & Co. The defendant, on learning about the plaintiff's activities and transactions of the plaintiff with Diamond Potteries Pvt. Ltd., approached the plaintiff and expressed his desire to have a similar business arrangement, wherein he could manufacture ceramics crockery for and on behalf of the plaintiff. Accordingly, an understanding was made between the defendant and the plaintiff, whereby the plaintiff allowed the defendant to apply its said trademark of a single snow lion along with the plaintiff's trade-name "Senge Himalayan Ceramics". It was agreed between the plaintiff and the defendant that the defendant would use and apply the plaintiff's said trademark/logo SENGE with the device of fearless lion only in relation to the goods of the plaintiff and solely under the authority of the plaintiff. The defendant used to have the products made through one M/s. Unique Potteries, who used to manufacture the ordered products and once the same were approved by the plaintiff, the defendant used to apply the plaintiff's said trademark SENGE with the device of fearless lion on the said goods which goods were then handed over to the plaintiff and invoices were raised. The plaintiff used to make payments to the defendant for the products supplied based on the said invoices. The invoices were raised by the defendant in his firm name "Shri Ram & Co" in favour of plaintiff's "Senge Himalayan Ceramics". The entire transactions including the orders placed on the defendant's proprietor i.e. Mr. Gurdeep Singh and the invoices raised by him towards the delivery of the products ordered by the plaintiff are a matter of record which would be relied upon and referred to at the appropriate stage. The defendant was only allowed to print/ emboss the plaintiff's said trademark/logo of SENGE with the device of fearless lion in respect of goods manufactured exclusively for and on behalf of the plaintiff. The plaintiff had conferred no rights to the defendant whatsoever in relation to the said trademark/logo of SENGE and device of lion in any manner whatsoever. The defendant was merely applying (printing) the plaintiff's said trademark/logo on a job work basis, solely on instructions received from the plaintiff. This business started between the plaintiff and the defendant from 2002. Initially, there were no documentation of the same but gradually as the business started picking up, the plaintiff got registered its business with the Sales Tax authorities and started placing orders on the defendant from the year 2005. The entire transactions including the orders placed on the defendant and the bills raised by the defendant towards the delivery of the products ordered have been placed on record.
10. In July 2005, the plaintiff moved out of the rented said premises and in relation to the same, he wrote a letter to the defendant, wherein he had mentioned the factum of his tenancy with the defendant for a period of five years from 2000 to 2005. After vacating the defendant's above premises, the plaintiff moved to H. No. 124- New Aruna Nagar, Majnu-Ka-Tilla, Ring Road, Opposite - Petrol Pump, Delhi - 110054. Since the defendant had started charging exorbitant amounts for the plaintiff's order, the plaintiff was constrained to discontinue its business with the defendant.
11. After moving to the new premises, the plaintiff made changes to its trademark/logo of SENGE with the device of fearless lion in relation to its goods and business, which consisted of a single snow lion with the words SENGE written below it but the same was covered by a circle on which it was written on the top "FINE BONE TIBET" and on the bottom "HIMALAYAN CERAMICS", the image whereof has been depicted herein below:
The plaintiff's application for registration of its trademark SENGE with the device of fearless lion 
under application No. 2978344 in Class 21 is pending registration before the trademark office.
12. It is mentioned in the plaint about the change of plaintiff's aforesaid trademark/logo, the plaintiff addressed a letter dated 25th September, 2006 to the Chairman of M/s. Diamond Potteries Pvt. Ltd., Mr. Juneja, stating as under:
"...... I had given you a sample for our future Backstamp /logo and requested you to change our backstamp/logo....."
13. It is alleged in the plaint that the defendant has fraudulently and by way of misrepresentation and non-disclosure of material facts, obtained registration of trademark SENGE Shri Ram & Co. (Label) under No. 1409887 in class 21 which has been depicted herein below and is hereinafter referred as the 'impugned trademark':
14. Rather the plaintiff received a legal notice dated 15th November, 2011 sent by the defendant's attorney stating that the defendant was the registered proprietor of the impugned trademark under No. 1409887 in class 21. The plaintiff immediately replied to the said notice vide registered A/D letter dated 26th November, 2011 stating the following:
"a. That the plaintiff is the true and lawful owner of the trademark SENGE as the plaintiff is the prior adopter of the same mark and the mark is arbitrary mark with no meaning in English and Hindi whatsoever and the plaintiff is the owner of the logo/ device mark since the plaintiff created the same in the year 2000 and hence was the prior adopter of the said logo/ device mark.
b. The plaintiff's trademark and device mark by virtue of long and continuous use and promotion had come to be associated with the Plaintiff alone.
c. The defendant had not only malafidely and dishonestly used the plaintiff's trademark/logo without any authorization or consent from the plaintiff but had also got the impugned mark registered in its favour dishonestly and without the knowledge of the plaintiff.
d. The defendant was illegally using the plaintiff's trademark and logo in order to derive an unfair advantage for its business and services and exploit the tremendous goodwill and reputation that is associated with the plaintiffs famous trade mark and logo which is a direct result of the plaintiff's hard work and efforts over the years and to give up the impugned mark.
The defendant replied to the plaintiff's reply vide his letter dated 1st January,2012 refusing to give up the use of the impugned trademark. Subsequently, the plaintiff filed rectification against the registration of the impugned trademark under No. 1409887 on 23rd July 2012, to which the defendant had filed its reply on 4th March 2014, but copy of the reply has not yet been served upon the plaintiff, neither by the defendant nor by the Trademark office. Subsequent to the filing of its reply, the defendant, in an effort to continue the illegal use of the mark and passing off its goods as the goods of the plaintiff served another legal notice dated 6th April, 2015, claiming itself to be the registered owner of the trademark and threatening legal proceedings against the plaintiff. The plaintiff replied to the said legal notice by way of an interim reply dated 20th April, 2015.
15. The plaintiff aggrieved by the existence of the impugned mark, soon after filed an application for rectification of the said mark before the Registrar of Trademarks, to which the defendant has filed the reply.
Written Statement
16. Written statement has been filed on behalf of the defendant wherein the defendant has stated that the defendant's trademark bearing logo of a prowling lion over the word 'SENGE' was registered on 29th December, 2005. The plaintiff applied for registration of his trademark in the year 2011. The user claimed in the application 'proposed to be used'. It is also stated that the plaintiff started his business in ceramics in the year 2005, which is evident from Form DVAT 06. The business name SENGE TRAVEL & TOURS is a private ltd Company and not registered under the Trade Marks Act. The suit has been filed by the proprietor of SENGE HIMALAYAN CERAMICS, not by SENGE TRAVEL & TOURS Pvt. Ltd. which is a juristic body which cannot be represented by the proprietor of a proprietary firm namely SENGE HIMALAYAN CERAMICS, which started its business in ceramics in the year 2005 and hence, there is no question of the plaintiff claiming ownership of logo as mentioned in the plaint.
It is the plaintiff who is infringing the trademark of the defendant and passing off his goods as those of the defendant. In this regard, the defendant had put the plaintiff to notice on 6th April, 2015. The defendant reserves his right to file criminal proceedings as well as civil action, including a counter- claim in the present proceedings.
The documents filed along with the plaint would show that the plaintiff had started his business in ceramics in the year 2005. The defendant has been in the realm of ceramics business since the year 2000. The business name of the defendant is Shri Ram & Co. It is a proprietorship firm and Gurdeep Singh is its sole proprietor.
17. The word SENGE is derived from Buddhist art and culture, which is universal in nature. It is a word which means lion. The logo of the defendant involves the picture of a prowling lion over the word SENGE. The logo of the plaintiff in terms of its business in the name and style SENGE TRAVEL & TOURS was registered under the Companies Act, 1956 on 7th June, 2000. The business activities are entirely different.
18. The plaintiff also entered the ceramics business after coming in contact with the defendant much subsequently. The defendant got his trademark SENGE with the picture of a prowling lion above it registered on 29th December, 2005 under the Trade Marks Act.
The plaintiff did not have any reputation even in the business of tours and travels. In the realm of ceramics business, the plaintiff had not even initiated himself in the year, 2000. Hence, there is no occasion on the part of the defendant to copy the plaintiff's trademark in any manner.
19. It is mentioned in the written statement that the business relationship between the plaintiff and the defendant went on till the year 2006. After the severance of relationship in the year 2006, the defendant in the year 2011 found that the plaintiff was using an identical logo similar to the registered mark of the defendant. Accordingly, the plaintiff was put to notice to stop using identical trademark.
As far as the symbol of two snow lions on the plaintiff's trademark in respect of SENGE TRAVEL &TOURS Pvt. Ltd. is concerned it is stated that the plaintiff has not filed any document to show that this symbol is existing since the year 2000. The registration certificate under the Companies Act does not contain the symbol. Therefore, it is denied that the symbol of two snow lions in respect of SENGE TRAVEL & TOURS Pvt. Ltd. has been existing since the year 2000.
Replication
20. The plaintiff has filed the replication to the written statement on behalf of the defendant. It is inter alia stated that in order to establish priority of use, the defendant has filed forged and fabricated invoices on record where the words "Senge Lion Mark" has clearly been written afterwards and solely for the purpose of filing and relying upon in the present proceedings.
21. It is clear from the documentary evidence on record that the plaintiff is the prior and honest adopter of the mark SENGE with the device of fearless lion in respect of its business of Tours and Travels since the year 2000 and in respect of its business of Ceramics & Crockery since the year 2002. The defendant has fraudulently and by concealing material facts before the trademark office, obtained registration of the mark SENGE with the device of lion on 29th December, 2015. It is denied by the plaintiff that the plaintiff's mark is filed on the basis of proposed to be used.
22. The defendant has twisted the facts and is making such false and baseless averments with intent to deceive and mislead this Court. The plaintiff's application for trademark SENGE was filed on 13th December, 2011, where the user claim is of the year 2000. Copy of the Trademark Application under Number 2249115 in Class 39 as filed by the plaintiff with the Trademark Office on Form TM -1, along with Additional Representation Sheet has been placed on record.
23. It is denied that the plaintiff started its business of ceramics in the year 2005. The plaintiff had commenced its business of ceramics well in the year 2002 under the trademark SENGE with the device of fearless lion and the same is well within the knowledge of the defendant. The D-Vat form was obtained by the plaintiff subsequently in the year 2006. It is admitted by the defendant that the plaintiff's business of tours and travels was commenced in the year 2000, of which the word SENGE forms a material and prominent part. It is extremely naive of the defendant to aver that the plaintiff cannot rely on its trade description of its SENGE group of firms, one of which is SENGE Tours and Travels, since the year 2000. It is further admitted by the defendant and surprisingly so, that the plaintiff commenced its business under the name and description of Senge Himalayan ceramics in the year 2005. It is denied that the plaintiff did not lend its logo of SENGE with the device of fearless lion to the defendant. The plaintiff commenced its business of Ceramics with Diamond Potteries Pvt. Ltd. in the year 2002 when it started applying the backstamp/logo/trademark of SENGE with the device of fearless lion on all of its items. Subsequently, the defendant, being in the same building premises as the plaintiff, approached the plaintiff for working on job work basis for the plaintiff. The plaintiff, in good faith lent its logo/back-stamp to the defendant so that the defendant could exclusively apply it for the plaintiff's products only. However, after the expiry of tenancy, the defendant never returned the back-stamp/logo to the plaintiff and immediately thereafter back-stabbed the plaintiff by surreptitiously filing trademark application for the said logo of SENGE with the device of fearless lion. Rather it is the defendant who has stolen the plaintiff's trademark/logo and breached plaintiff's trust to dishonestly adopt and use the plaintiff's said trademark/logo of SENGE with the device of fearless lion. It is denied that the present suit is an after effect of the notice dated 6th April, 2015. The plaintiff was constrained to file the present suit when the defendant started approaching the plaintiff's customers and misrepresenting himself to be the owner of the trademark SENGE. The defendant is not only guilty of playing fraud upon the Trademark Office, this Court and public at large but has also hurt the plaintiff's sentiments and trust.
Even though the plaintiff started its business of ceramics under the trademark SENGE with the device of fearless lion in the year 2002, the plaintiff's documents on record from the year 2005 are much prior to that of the defendant. Even if it is presumed that the defendant has been in the business of ceramics since the year 2000, the defendant had never used the mark SENGE with the device of fearless lion prior to the plaintiff.
24. The defendant has miserably failed to give a plausible explanation of the mark SENGE with the device of fearless lion. The defendant has failed to explain his nexus with the Buddhist Art and/or Tibetan mythology as alleged. The defendant has placed no document on record to substantiate the same. It is further denied that the plaintiff entered into the ceramics business after coming in contact with the defendant. The plaintiff has extremely high goodwill and reputation within the trade and community in respect of the business of Tours and Travels and the defendant's allegation to the contrary are frivolous and cooked-up.
25. It is denied by the plaintiff that the defendant introduced the plaintiff to the business of ceramics. It is clearly admitted by the defendant that the business relationship between the parties continued till the year 2006. The nature of such business relationship is deliberately concealed by the defendant, which the plaintiff has elaborated upon in the plaint. The business relationship between the plaintiff and defendant was such that the two entered into an arrangement in the year 2002, where the plaintiff was approached by the defendant on his proposal to work for the plaintiff on job work basis. The plaintiff, trusting the defendant, as they were residing in the same premises, acceded to the proposal and handed over its back- stamp/logo of SENGE with the device of fearless lion, so that the defendant could use it to print on the ceramics and crockery solely on behalf of the plaintiff The plaintiff in turn paid for the services rendered by the defendant. However, after the severance of relationship between the parties somewhere in the year 2005-06, the defendant never returned the back-stamp/logo of SENGE with the device of fearless lion to the plaintiff. In the meantime and behind the plaintiff's back, the defendant mis-utilized the possession of such back-stamp/logo and clandestinely filed an application with the trademark office on 29th December, 2005. It is incongruous for the defendant to allege that he found out about plaintiff's use of the trademark/logo of SENGE with the device of fearless lion in the year 2011. It was rather the plaintiff who learnt about the illegal and malicious activities of the defendant in the year 2011 upon receipt of a notice which shocked the conscience of the plaintiff.
26. It is denied by the plaintiff that he has not filed sufficient documents to establish its use of the mark SENGE since the year 2000. It is an admitted position that the plaintiff and defendant were staying in the same premises from the year 2000 - 2005, during which period and on the same address the plaintiff was carrying on its business under the name and style of SENGE Tours and Travels since 2000 and under the name and style of SENGE Himalayan Tours and Travels since the year 2002. The registration certificate of Senge Tours and Travels of the year 2000 may not contain the symbol but it certainly contains the name SENGE, which is mentioned in the said certificate.
27. The trademark SENGE and logo used by the parties are identical, the comparison of the plaintiff's and defendant's logo has been provided herein below:
28. Both counsels have made their submissions. They also relied upon the documents filed. The defendant has admitted that the plaintiff Company Senge Travels and Tours was incorporated in 2002. The defendant has also not denied about their business relation until 2006. The defendant has admitted that the two marks are identical. Logo is also the same. In case, both business activities would continue, there shall be confusion and deception. The defendant has also not filed the counter-claim along with written statement or separate suit against the plaintiff. Counsel for the defendant has also not disputed that as per settled law an injunction on the basis of prior user against the registered proprietor and the plaintiff's rectification for removal of trademark application by the defendant is pending. And in order to decide the controversy, prior user would be prevailed upon and the other party is to be restrained from using the same mark and goods.
29. The said company "SENGE TRAVEL &TOURS" is still being run by the plaintiff in the said name and has earned a reputation and goodwill of its own in the concerned field. The plaintiff has also filed an application for registration of the above trademark under No. 2249115 in Class 39, which is pending before the Trademark Office.
30. The invoices raised by the defendant to the plaintiff contained the details as "M/s. SENGE HIMALAYAN CERAMICS, H. No. 124, New Tibetian Camp, Majnu-ka-tilla, bearing TIN No. 7520292447". There is neither any mention of SENGE in any of the invoice of SHRI RAM & CO. nor the defendant's impugned trademark of "SENGE - SHRI RAM & CO". The invoices of the period April, 2005 to September, 2006 would show that the defendant was using the plaintiff's said trademark/logo of SENGE with the device of fearless lion on job-work basis, solely for and on behalf and under the instructions of the plaintiff.
31. In order to claim prior and independent user, the defendant has filed certain cash bills. Scanned copies of few are reproduced here as under:
32. Prima facie it appears from the said documents filed in Court that the mark SENGE has been added/written/superimposed subsequently.
33. There is an evident mismatch in the handwriting of the words "Senge Lion Mark' from the rest of the contents in the invoices placed by the defendant. It appears from the manner in which the words "Senge Lion Mark" have been squeezed in between the lines just to create false user. The defendant is therefore guilty of filing the false document for the period by which the advantage is sought by the defendant about the prior user. There is no complaint on behalf of the plaintiff about the use of mark subsequent to the year 2006 and the document filed by the defendant.
34. Concept of prior user, passing off and grant of injunction against the registered proprietor has been discussed in many judgments:-
Passing Off
35. Even the test of confusion and deception in order to prove the case of passing off has been very well discussed in the case of Laxmikant V. Patel v. Chetanbhat Shah and Another, reported in MANU/SC/0763/2001 : (2002) 3 SCC 65, wherein the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the Courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
It was also held in Laxmikant v. Patel (supra) that the principles which apply to trademark are applicable to trade name also. Para 10 of the aforesaid judgment reads as under:-
"The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Supreme Court further observed that:
"Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently."
Prior User vs. Registered Proprietor
36. As far as prior user is concerned, in the very recent judgment delivered by the Supreme Court in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. and Ors., MANU/SC/1192/2015 : 2015(64) PTC 225 (SC), the same aspect has been dealt with wherein by referring to another decision of the Supreme Court in S. Syed Mohideen v. P. Sulochana Bai MANU/SC/0576/2015 : 2015(7) SCALE 136, prior to the Neon's case (supra) it was held as under :
"The 'first in the market' test has always enjoyed pre- eminence. We shall not burden this judgment by referring to the several precedents that can be found apposite to the subject. In the interest of prolixity we may mention only N.R. Dongre v. Whirlpool Corporation MANU/SC/1223/1996 : (1996) 5 SCC 714 : 1996(16) PTC 583 (SC) and Milmet Oftho Industries v. Allergan Inc. MANU/SC/0512/2004 : (2004) 12 SCC 624. In Whirlpool, the worldwide prior user was given preference nay predominance over the registered trademark in India of the defendant. In Milmet, the marks of pharmaceutical preparation were similar but the prior user worldwide had not registered its mark in India whereas its adversary had done so. This Court approved the grant of an injunction in favour of the prior user. Additionally, in the recent decision in S. Syed Mohiden v. P. Sulochana Bai MANU/SC/0576/2015 : (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. Learned Counsel for the Defendant-Appellant has endeavoured to minimize the relevance of Whirlpool as well as Milmet by drawing the distinction that those trademarks had attained worldwide reputation.
However, we think that as world shrinks almost to global village, the relevance of the transnational nature of a trademark will progressively diminish into insignificance. In other words, the attainment of valuable goodwill will have ever increasing importance. At the present stage, the argument in favour of the Defendant-Appellant that we find holds more water is that in both Milmet and Whirlpool, as distinct from the case before us, the prior user of the successful party predated the date of application for registration of the competing party.
The question to examine, then, would be whether prior user would have to be anterior to the date of application or prior to the user by the Defendant-Appellant. In other words, the question before the Court would remain whether the situation on the date of application for registration alone would be relevant, or whether the developments in the period between this date and the date of grant of registration would have any bearing on the rights of the parties. All these considerations will be cast into a curial cauldron to be appreciated by the Court before which the suit is being contested. In these premises, we cannot conclude that a prima facie case has not been disclosed by the Plaintiff-Respondents."
37. Under these circumstances, the defendant is not the proprietor of the impugned trademark who has adopted the mark and using the same in relation to same goods and also reproducing it on their labels etc. and is otherwise dealing with it in the course of trade without the leave and license of the plaintiff.
38. The defendant has no right to use it in any manner in relation to its impugned goods and business or for any other specification of goods and business whatsoever being in violation of the plaintiff's rights. The use by the defendant by its impugned adoption and user of the impugned trademark is violating the plaintiff's rights in its said trademark SENGE with the device of fearless lion and thereby passing off and enabling others to pass off their impugned goods and business as that of the plaintiff.
39. The defendant was aware of the plaintiff's rights, goodwill, reputations, benefits and users etc. in the plaintiff's said trademark SENGE with the device of fearless lion at the time of its impugned adoption and use of the trademark. The defendant has adopted the impugned trademark dishonestly, fraudulently and out of positive greed with a view to take advantage and to trade upon the established goodwill, reputation and proprietary rights of the plaintiff in the plaintiff's said trademark/logo of SENGE with the device of fearless lion.
40. Under these circumstances and aforesaid reasons, the plaintiff has made a strong prima facie case in his favour. The balance of convenience also lies in favour of the plaintiff and against the defendant. The plaintiff prima facie is the prior user of the trademark and logo. In case the interim order is not passed, the plaintiff would suffer irreparable loss and injury.
What is the relevant Date of Adoption
41. If the entire object of the Trade Law is examined, it is obvious that the date of adoption of the mark of a party is the relevant date. In case on the date of adoption, it is found, he was aware about the mark of the rightful owner, the using of the mark and filing of application in the Trade Marks office is fraudulent. As dishonesty starts from the beginning itself the subsequent user is to be considered as tainted, as the party was aware that the mark actually belongs to other party and he is not the owner of the same. It is totally immaterial if the registration is objected of a copied mark of a party who adopted and used the mark in earlier point of time. There is not much difference, if the registration is obtained on the basis of non- filing of opposition. The main reason is that it is for the Court to decide the common law remedy wherein the interim order can be passed. The Trade Marks Registry or the Appellant Board are not empowered to pass the interim order against the party who has appropriated the mark deliberately. The party who has stolen the mark cannot claim the benefit of concurrent user because the governing principle of concurrent user lies on account of honesty. It is also immaterial if the defendant has filed the application prior in time or owner of the mark has claimed user as proposed to be used if the mark is already known and used in overseas countries.
42. In the case of Hindustan Pencils Pvt. Ltd. vs. M/s. India Stationery Products Co., MANU/DE/0383/1989 : AIR 1990 Delhi 19 it was held as under:
".........It was observed by Romer, J, in the matter of an application brought by J.R. Parkinson and Co. Ltd., (1946) 63 RPC 171 at page 181 that "in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history."
Delay, if any
43. The suit has been filed in the year 2013. The plaintiff is a foreign company. There is no much delay in bringing the action. The delay, if any, for some period cannot debar the interim orders sought by the plaintiff. In the case of M/s. Bengal Waterproof Ltd. vs. M/s. Bombay Waterproof Manufacturing Co., MANU/SC/0327/1997 : AIR 1997 SC 1398 it was held as under :
"20...It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts."
44. Thus, interim injunction is issued restraining the defendant by themselves as also through their individual proprietors/partners, agents, representatives, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from manufacturing, marketing, purveying, supplying using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing in or using the impugned trademark SENGE with the device of fearless lion and 
or any other mark which is identical with and/or deceptively similar to the plaintiffs said trademark SENGE with the device of fearless lion 
in relation to its trade-name and/or the goods and business of ceramics, crockery and related/allied products and from doing any other acts or deeds amounting to passing off and infringement of copyright in any manner.
45. It is clarified that the findings arrived by the Court in the order are tentative and shall have no bearing when the matter is decided at the final stage after trial.
46. The application is disposed of.
CS (OS) No. 1929/2015
List the matter before the Joint Registrar on 16th January, 2016 for admission/denial of the documents. Thereafter, the same be listed before Court on 2nd March, 2016 for framing of issues.
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