M/S JOHNSON APPLIANCES (P) LTD. vs. H.E. INDUSTRIES & ORS.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

th
% Judgment reserved on: 19 August, 2016
th
Judgment pronounced on: 6 September, 2016

+ CS(OS) No.816/2008

M/S JOHNSON APPLIANCES (P) LTD. ...... Plaintiff
Through Mrs.Prathiba M. Singh, Sr. Adv.
with Ms.Archana Sahadeva and
Ms.Rukma George, Advs.
versus

H.E. INDUSTRIES & ORS. ..... Defendants
Through Mr.S.K.Bansal, Adv. with
Mr.Pankaj Kumar, Adv. with

CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiff has filed the abovementioned suit for infringement
of registered trademark "JOHNSON", passing off, rendition of
accounts, damages etc. against the defendants.
2. The plaintiff is a Company existing under the Indian laws. The
plaint is signed by Mr. Rakesh Jain who is one of the Directors of the
plaintiff-Company who claims to be competent and authorized to
sign and verify the present plaint and institute the suit on behalf of
the plaintiff. The Board Resolution in favour of Shri Muni Lal Jain who
is the father of Shri Rakesh Jain has been exhibited as Ex.PW-1/1.
The averments made in the amended plaint and written statement
have been reiterated in the deposition of the witnesses of the parties
i.e. PW-1 and DW-1. In addition, only documents are exhibited/
CS(OS) No.816/2008 Page 1 of 54

mentioned in their respective affidavits which are filed by both the
parties as evidence.
3. The defendant Nos.1 and 2 are engaged in the manufacturing
of the electric water heaters (excluding the instant type geysers)
under the mark "JOHNSON" which are being marketed by the
defendant Nos. 3 and 4. Defendant No.5 is one of the distributors of
defendant No.3. Defendant No.3 claims to be the licensed user of the
mark “JOHNSON” in relation to the aforesaid goods by virtue of an
th
alleged exclusive License/Permitted User Agreement dated 27 May,
2006 executed in its favour by defendant No.4 M/s Johnson
Enterprises, who in turn claims to have acquired the rights in the
st
said mark by virtue of an Assignment Deed dated 1 April, 1999
from M/s. Classic Equipments Pvt. Ltd. A copy of the exclusive
th
License/Permitted User Agreement dated 27 May, 2006 entered
into between defendant Nos. 3 and 4 has been exhibited as Ex.P-4.
4. The present suit relates to the use of the mark "JOHNSON'' by
the defendants in relation to electric water heaters (excluding the
instant type geysers). The trademark "JOHNSON" was originally
adopted by and registered in the name of M/s Jain Industries,
predecessors-in-interest of the plaintiff-Company in the year 1960.
th
On 14 September, 1960, the mark "JOHNSON" was registered in
the name of plaintiff's predecessor in respect of Hot Plates, Toasters
and Water Boilers. The details of the said registration are as under:
Registration No. 197998-B
Date of Registration 14.09.1960
Registrant Shri Chain Lal Jain and Shri Muni Lal
Jain trading as Jain Industries
Class 11
Goods Hot Plates, Toasters and Water Boilers

CS(OS) No.816/2008 Page 2 of 54

Copy of the said Registration Certificate has been exhibited as
Ex.PW-1/D1.
5. M/s Jain Industries was originally a partnership firm consisting
of two partners, Sh. Chain Lal Jain and Sh. Muni Lal Jain.
Subsequently, two more partners were included in the partnership
firm namely Sh. Satish Kumar Jain and Sh. Subhash Chand Jain. The
st
said firm was dissolved on 1 April, 1967 by virtue of Dissolution
st
Deed dated 1 April, 1967 whereby the fourth partner Sh. Subhash
Chand withdrew from the said firm.
st
6. On the same date i.e. 1 April, 1967, a new partnership was
constituted with 3 partners. Sh. Chain Lal Jain, Sh. Muni Lal Jain and
Sh. Satish Kr. Jain. Sh. Chain Lal Jain was the father of Sh. Muni Lal
Jain and Sh. Satish Kr. Jain. The said firm continued its business
under the mark "JOHNSON" in respect of electric water heaters and
st
hot plates etc. A copy of the Partnership Deed dated 1 April, 1967
which was admitted by the contesting defendant No.4 has been
exhibited as Ex.P-5.
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7. By Trust Deed dated 26 June, 1979, a Trust by the name of
M/s Jain Youngsters Trust was constituted. A copy of the Trust Deed
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dated 26 June, 1979 as admitted by defendant No.4 has been
exhibited as Ex.P-6. The said Trust took over the running business of
nd
M/s Jain Industries and by a Deed of Assignment dated 22
September, 1979, wherein, the trademark "JOHNSON" registered in
3 different classes namely Class 9, 11 and 21 along with the pending
applications namely 319954 in class 9, 319955 in class 11, and
319953 in class 21 for wider specification of goods in the
aforementioned classes was assigned to Jain Youngsters Trust. Copy
nd
of the Deed of Assignment dated 22 December, 1979, which was
CS(OS) No.816/2008 Page 3 of 54

admitted by defendant No.4 has been exhibited as Ex.P-7. The
relevant details of the mark "JOHNSON" forming part of this
assignment have been set out as under:-
Mark Regn.No. Class Goods
Johnson 197997 B 9 Electric Flat Irons
Johnson 197998 B 11 Hot Plates, Toasters
& Water Boilers
Johnson 195359 21 Frying Pan, Jug & Jar
(Domestic Utensils
not of precious
metals nor coated
therewith) not
included in other
classes

8. It is deposed in the affidavit of PW-1 that the actual
manufacturing and marketing of the products bearing the mark
"JOHNSON" was to be done by M/s Jain Industries.
st
M/s Jain Youngsters Trust, thereafter by letter dated 21 March,
1979, gave the statement to the Trade Mark Registry that the
application made by M/s Jain Industries bearing No. 319955 in class
11 for wider specification of goods as and when gets registered
would be associated with the mark "JOHNSON" bearing Registration
st
No. 197998 B in class 11. The original letter dated 21 March, 1979
addressed to the Trade Mark Registry by M/s. Delhi Registration
Service on behalf of M/s. Jain Industries has been exhibited as
Ex.PW-1/3. The copy of the Registration Certificate pertaining to the
mark "JOHNSON" bearing Registration No. 319955 has been
exhibited as Ex.PW-1/D2.
CS(OS) No.816/2008 Page 4 of 54

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9. By Trust Deed dated 8 June, 1984, M/s C.L. Jain Trust was
constituted with all the then family members of the Jain family as
the beneficiaries and Sh. Chain Lal Jain, Smt. Lajwanti Jain, and Sh.
Muni Lal Jain as the Trustees. A copy of the said Trust Deed which
stands admitted by defendant No.4, has been exhibited as Ex.P-8.
st
Subsequently, vide Deed of Assignment dated 1 July, 1984, M/s
Jain Youngsters Trust assigned the trademark "JOHNSON" registered
in 3 different classes namely Class 9, 11 and 21 along with the
pending applications namely 398343 in class 7, 319954, 398341 and
390169 in class 9, 398342 in class 11 and 319953 in class 21 for
wider specification of goods in the respective class to M/s C.L.Jain
Trust. A copy of the said Deed of Assignment has been exhibited as
Ex.P-9.
10. The relevant details of the mark "JOHNSON" forming part of
this assignment have been set out as under:-
MARK REGN.NO. CLASS GOODS
JOHNSON 197997 B 9 Electric Flat Irons
JOHNSON 197998 B 11 Hot Plates, Toasters
& Water Boilers
JOHNSON 319955 11 Hot Plates (electric),
Toasters (electric),
Water Boilers, Hot
Cases, Cooking
Range & Baking
Ovens
JOHNSON 195359 21 Frying Pan, Jug &
Jar (Domestic
Utensils not of
precious metals, nor
coated therewith)
not included in other
CS(OS) No.816/2008 Page 5 of 54

classes.

th
11. By Deed of Assignment dated 5 October, 1987, M/s C.L. Jain
Trust assigned the trademark "JOHNSON" registered in 3 different
classes namely Class 9, 11 and 21 along with the pending
applications namely 398343 in class 7, 319954, 398341 and 390169
in class 9, 398343 in class 11 and 319953 in class 21 for wider
specification of goods in the respective classes to M/s Johnson Sales
(India) which was a partnership firm of Sh. Subhash Chand Jain S/o
Sh. Chain Lal Jain, Smt. Gunmala Jain wife of Sh. Muni Lal Jain and
Smt. Shashi Jain wife of Sh. Vinod Kr. Jain. A copy of the said Deed
of Assignment which stands admitted by defendant No.4 has been
exhibited as Ex.P-10.
12. The relevant details of the trademark "JOHNSON" forming part
of this assignment have been set out here as under:
MARK REGN.NO. CLASS GOODS
JOHNSON 197997 B 9 Electric Flat Irons
JOHNSON 197998 B 11 Hot Plates, Toasters
& Water Boilers
JOHNSON 319955 11 Hot Plates (electric),
Toasters (electric),
Water Boilers, Hot
Cases, Cooking
Range & Baking
Ovens
JOHNSON 195359 21 Frying Pan, Jug &
Jar (Domestic
Utensils not of
precious metals, nor
coated therewith)
not included in other
CS(OS) No.816/2008 Page 6 of 54

classes.

nd
13. By Agreement dated 2 April, 1992, M/s Classic Equipments
Pvt. Ltd. (a company promoted by the members of the Jain family)
took over the business of M/s Johnson Sales India, the partnership
firm, along with all its assets and liabilities. M/s Classic Equipments
Pvt. Ltd. thus became the proprietor of the trademark "JOHNSON"
registered in 3 different classes namely Class 9, 11 and 21 along
with the pending applications namely 398343 in class 7, 319954,
398341 and 390169 in class 9, 398342 in class 11, and 319953 in
class 21 for wider specification of goods in the respective classes. A
copy of the said Agreement has been exhibited as Ex. P-2.
th
14. By Deed of Assignment dated 9 March, 1994, the trademark
"JOHNSON" in relation to electric storage type water heaters
(excluding the instant type geysers) covered under Registration
No.197998-B in class 11 was assigned in favour of one M/s Vidyut
Udyog by M/s Classic Equipments Pvt. Ltd. The said M/s Vidyut
Udyog was a partnership firm consisting of Sh. Sunil Jain S/o Sh.
Subhash Chand Jain, Sh. Sameer Jain S/o Sh. Subhash Chand Jain
and Sh. Amit Jain S/o Sh. Satish Jain. A copy of the said Deed of
Assignment has been exhibited as Ex. PW-1/D4. The said document
was initially objected by the defendants but later, as recorded in the
th
judgment dated 25 March, 2010, the dispute qua this document
was given up by the defendants.
th
15. On the same date i.e. 9 March, 1994 another Assignment
Deed was entered into between M/s Classic Equipments Pvt. Ltd and
M/s Jain Associates by which M/s Classic Equipments Pvt. Ltd.
assigned the trademark "JOHNSON" in relation to Electric Coil
CS(OS) No.816/2008 Page 7 of 54

Stoves, Electric Hot Plates and Electrical Cooking Ranges covered
under Registration No. 319955 in class 11 in favour of one M/s Jain
Associates, a partnership firm. The copy of the said Assignment
Deed which stands admitted by defendant No.4 has been exhibited
as Ex.P-1.
16. It is deposed in the affidavit of PW-1 that both these
Assignment Deeds as mentioned above were drafted and prepared
by M/s Delhi Registration Service, the Trade Mark Attorneys, who
are also representing the defendant No.4-Company in the present
suit. In fact, M/s Delhi Registration Service has also drafted and
prepared various other assignment deeds which are already on
record, namely:
st
(i) Deed of Assignment dated 1 July, 1984 entered into
between M/s Jain Youngsters Trust and M/s C.L. Jain Trust.
th
(ii) Deed of Assignment dated 5 October, 1987 entered into
between M/s C.L. Jain Trust and M/s Johnson Sales (India).
th
(iii) Deed of Assignment dated 9 March, 1994 entered into
between M/s Classic Equipments Pvt. Ltd and M/s Vidyut
Udyog.
st
(iv) Deed of Assignment dated 1 April, 1999 entered into
between M/s Johnson Enterprises and M/s Classic
Equipments Pvt. Ltd.
17. After having received the original Assignment Deeds entered
into between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog
and M/s Classic Equipments Pvt. Ltd and M/s Jain Associates dated
th
9 March, 1994 from M/s Delhi Registration Service the same were
duly signed and witnessed in the presence of PW-1. One such duly
signed and witnessed copy of each Assignment Deed was retained
by M/s Classic Equipments Pvt. Ltd for official records and the
CS(OS) No.816/2008 Page 8 of 54

original deeds were handed over to M/s Delhi Registration Service
for taking further steps/actions so as to give effect to these
assignments. PW-1, Sh. Muni Lal Jain, who is one of the directors of
the plaintiff-Company, stated in his evidence that subsequently it
was discovered that the name of the assignee on the last page of
both the said assignment deeds was typed as 'For Jain Associates
through its partner Sh. Muni Lal Jain' whereas one of the said
assignments in effect related to M/s Vidyut Udyog. This error was
duly communicated to M/s Delhi Registration Service and necessary
corrections were made in the copies of the said deeds retained by
M/s Classic Equipments Pvt. Ltd. for official records.
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18. Both these Assignment Deeds dated 9 March, 1994 were duly
submitted to the Trade Mark Registry by M/s Delhi Registration
th
Service. By letter dated 24 January, 1995, M/s Classic Equipments
Pvt. Ltd. was informed by M/s Delhi Registration Service that the
said assignments have been allowed by the Trade Mark Registry vide
th
order No.PR-985 dated 20 January, 1995. The said original letter
has been exhibited as Ex.PW-1/4.
19. By the said order, the mark "JOHNSON" bearing Registration
No. 197998 B and 319955 in class 11 was split in the following
manner:
MARK REGN.NO. CLASS GOODS PROPRIETOR
Johnson 197998 B 11 Water
Heaters
(electric)
(excluding
the instant
type geysers)
M/s Vidyut
Udyog
Johnson 197998 B 11 Hot Plates M/s Classic
CS(OS) No.816/2008 Page 9 of 54

(split) (electric),
toasters
Equipments
Johnson 319955 11 Toasters
(electric),
Water
Heaters
(instant type
geysers,
Baking
ovens)
M/s Classic
Equipments
Johnson 319955
(split)
11 Hot Plates
(electric) (coil
stoves),
Electric
Cooking
Range
M/s Jain
Associates

The said original order No. PR/985 has been exhibited as
th
Ex.PW-1/5. Further, a copy of Form TM-24 dated 17 May, 1995
filed by M/s. Vidyut Udyog before the Trade Mark Registry has been
exhibited as Ex.PW-1/6.
20. The case of the plaintiff is that the question of forging or
fabricating the original assignment deeds entered into between M/s
th
Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog dated 9 March,
1994 does not arise as the original deed as well the copies thereof
were duly signed and witnessed in the presence of PW-1 and after
which the original deed was sent to M/s Delhi Registration Service
for taking further actions in order to give effect to the said
assignment.
21. After the split, the mark "JOHNSON" in relation to water heater

(electric) (excluding the instant type geysers) became the
proprietary of M/s Vidyut Udyog. It was subsequently affirmed again
th
by the Trade Mark Registry vide order No. PR/25 dated 14
CS(OS) No.816/2008 Page 10 of 54

February, 1997. The said original order No.PR/25 has been exhibited
as Ex.PW-1/7.
22. Subsequently to the execution of the Assignment Deed dated
th th
9 March, 1994, Form TM-16 dated 18 January, 1995 was filed on
behalf of M/s Classic Equipments Pvt. Ltd. by M/s Delhi Registration
Service, wherein a request was made to read the expression Electric
storage type water heaters (excluding instant type geysers) that was
th
used in the Assignment Deed dated 9 March, 1994 entered into
between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog be
read as Electric water heaters (excluding instant type geysers). A
copy of the said form TM-16 which stands admitted by defendant
No.4 has been exhibited as Ex.P-3.
23. Further, pursuant to the aforementioned Assignment Deed
th
dated 9 March, 1994, M/s Classic Equipments Pvt. Ltd. made an
th
application to the Trade Mark Registry vide Form TM-36 dated 17
May, 1995 through M/s Delhi Registration Service for striking out the
goods i.e. Water Heaters (Electric) (excluding the instant type
geysers) from the category of goods under their Registered
Trademark No.197998 B in Class 11. A copy of the said Form TM-36
which stands admitted by defendant No.4 has been exhibited as
Ex.P-21.
th
24. By order No. PR/25 dated 14 February, 1997, all the
aforementioned requests made in Forms TM-16. TM-24 and TM-36
were allowed.
nd
25. By Agreement dated 2 April, 1997, M/s Johnson Appliances
(P) Ltd, the plaintiff took over the business of M/s Vidyut Udyog
along with all its assets and liabilities. Consequently, the trademark
CS(OS) No.816/2008 Page 11 of 54

"JOHNSON" in relation to water heaters (electric) (excluding the
instant type geysers) became the proprietary of the plaintiff-
Company. The said original Agreement has been exhibited as Ex.PW-
1/8.
26. The plaintiff, thereafter had applied to the Registrar of Trade
Marks for the recordal of its name as the subsequent proprietor of
the mark "JOHNSON" in relation to the electric water heaters
(excluding the instant type geysers). The Registrar of Trade Marks
th
had issued Legal Proceedings Certificate on 26 September, 1997
recording the plaintiff as the proprietor of the mark "JOHNSON'" in
relation to the aforesaid goods. A copy of the said Legal Proceeding
Certificate in relation to the said Trade Mark Registration has been
exhibited as Mark E.
27. The registration of the mark "JOHNSON" in relation to the
aforementioned goods were renewed from time to time and the
same is still valid and subsisting. However, when the said mark
th
became due for renewal on 14 September, 2002, the plaintiff being
not aware of the same for reasons beyond his control, could not take
the necessary steps for the renewal of the said mark within the
prescribed time. However, on coming to know about the same, the
plaintiff immediately filed Form TM-13 for the renewal of the said
mark but the same was disallowed by the Registrar vide order dated
th
15 September, 2004 as time barred. A copy of the said order has
been exhibited as Ex.PW-1/9. The plaintiff, thereafter had filed an
appeal in Intellectual Property Appellate Board (IPAB) against the
Registrar's order which was set aside by the IPAB vide order dated
th
10 February, 2005. A copy of the appeal as preferred by the
CS(OS) No.816/2008 Page 12 of 54

th
plaintiff before the IPAB against the Registrar’s order dated 15
September, 2004 has been exhibited as Mark F.
th
A copy of the order dated 10 February, 2005 passed by the
IPAB setting aside the Registrar’s order has been exhibited as
Ex.PW-1/10.
28. The plaintiff thereafter had filed afresh for the renewal of the
said mark which has been duly renewed and is still subsisting. The
th
original Renewal Certificate dated 14 March, 2007 has been
exhibited as Ex.PW-1/11.
nd
29. It is deposed in the affidavit of PW-1 that since 2 April, 1997,
the plaintiff is the sole and exclusive owner of the mark "JOHNSON"
in relation to the electric water heaters (excluding instant type
geysers). From the said date itself, the plaintiff and its permitted
user (Johnson Sales (India), inside Jamna Mills, Clock Tower, Sabzi
Mandi, Delhi-110007) have been manufacturing/trading the said
products under the mark "JOHNSON" which are sold in various parts
of the country through the plaintiff’s dealers and distributors.
30. The sales figures of the plaintiff and its permitted user
(Johnson (Sales) India) for the said products under the mark
Johnson since the year 2001-2002 upto 2010-2011 are as under:-
Statement of Sales-Plaintiff
Period Sales Turnover (Rs.)
2001-2002 2,06,370
2002-2003 26,94,630
2003-2004 -
CS(OS) No.816/2008 Page 13 of 54

2004-2005 -
2005-2006 84,39,900
2006-2007 73,14,169
2007-2008 1,05,23,660
2008-2009 1,07,11,186
2009-2010 94,93,350
2010-2011 55,38,300

Statement of Sales- Johnson (Sales) India {Permitted User}
Period Sales Turnover (Rs.)
2001-2002 1,49,37,364
2002-2003 1,87,00,398
2003-2004 1,40,43,860
2004-2005 1,23,09,119
2005-2006 1,70,80,720
2006-2007 1,83,03,479
2007-2008 85,14,685
2008-2009 2,49,565
2009-2010 -
2010-2011 -

CS(OS) No.816/2008 Page 14 of 54

Copies of the sales invoices of M/s Vidyut Udyog, the plaintiff-
Company and its permitted user have been exhibited as Mark G
(colly).
31. It is stated by the plaintiff that the plaintiff, over the years has
extensively advertised the aforesaid mark in relation to the above
mentioned goods which in turn have come to be associated
exclusively with the plaintiff. Copies of the newspaper
advertisements issued by the plaintiff-Company have been exhibited
as Mark H (colly).
32. It is alleged that the trademark "JOHNSON" insofar as it
relates to electric water heaters (excluding instant type geysers)
belongs only to plaintiff and no one else. The disputes between M/s
Classic Equipments Pvt. Ltd., M/s Blumac Electricals India and Sh.
Vinod Kumar Jain or his business entities are not in any way related
to the subject matter of the present suit which relates only to
electric water heaters (excluding the instant type geysers).
st
33. It is submitted that an Assignment Deed dated 1 April, 1999
for the mark "JOHNSON" bearing Registration No. 197997 B in Class
9, 319955 in class 11 and 195359 in class 21 and also various
pending applications at that time pertaining to the mark "JOHNSON"
in various classes namely 398343 in class 7, 319954, 398341 and
390169 in class 9, 398342 in class 11 and 319953 in class 21 for
wider specifications of goods in the respective classes was entered
into between M/s Classic Equipments Pvt. Ltd. and defendant No.4
i.e. M/s Johnson Enterprises. The copy of the said Assignment Deed
which stands admitted by defendant No.4 have been exhibited as
Ex.P-11.
CS(OS) No.816/2008 Page 15 of 54

34. Both M/s Classic Equipments Pvt. Ltd. and Sh. Vinod Kumar
th
Jain, (proprietor of defendant No.4) in his individual capacity till 12
March, 1999 were part of the joint family business of the Jain family
comprising of four families headed by four brothers, namely, Sh.
Muni Lal Jain, Sh. Satish Kumar Jain, Sh. Subhash Chand Jain and
Sh. Vinod Kumar Jain. However, due to certain differences and
disputes among the respective four families, a Memorandum of
th
Partition was entered into between four brothers on 12 March,
1999 which was to serve as the basis of the final family settlement.
All the four brothers were signatories to the said Memorandum of
Partition.
st
35. It is stated by the plaintiff that the Assignment Deed dated 1
April, 1999 was the result of and in consonance with the terms set
th
out in the aforementioned Memorandum of Partition dated 12
March, 1999. However, the same did not relate to the trademark
"JOHNSON" in relation to the products in question inasmuch as the
rights of M/s Classic Equipments Pvt. Ltd. in the said mark in relation
to the said products had ceased to exist by Assignment Deed dated
th
9 March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s
Vidyut Udyog (which was taken over by the plaintiff-Company vide
nd
Agreement dated 2 April, 1997, along with all its assets and
liabilities). Insofar as the present case is concerned, it only deals
with the trademark "JOHNSON" in relation to electric water heaters
(excluding instant type water geysers), for which the plaintiff is the
registered proprietor and exclusive owner. It is stated by PW-1 that
the disputes pending qua the said Memorandum of Partition and the
cases involving M/s Blumac Electricals India are not being explained
CS(OS) No.816/2008 Page 16 of 54

by him as they are subject matter of other cases pending before this
Court.
36. Even the Trade Mark Application No. 398342 in Class 11 under
which the defendant No.4 is claiming rights qua electric geysers was
abandoned by the said defendant long ago. Thus, no rights
whatsoever can be claimed by the defendant No.4 on the basis of
th
the same. The original letter dated 9 July, 1999, issued by
Trademark Registry stating that the said mark has not been
renewed, has been exhibited as Ex.PW-1/12.
37. The present case only deals with the trademark "JOHNSON" in
relation to electric water heaters (excluding instant type geysers) for
which the plaintiff is the registered proprietor and exclusive owner.
The original pamphlet, price list, guarantee card etc. issued by the
plaintiff have been exhibited as Ex.PW-1/13.
38. The alleged exclusive License/Permitted User Agreement dated
th
27 May, 2006 entered into between defendant Nos.3 and 4 does
not relate to the mark "JOHNSON" in relation to electric water
heaters (excluding the instant type geysers) inasmuch as vide the
th
Deed of Assignment dated 9 March, 1994, the trademark
"JOHNSON" in relation to electric storage type water heaters
(excluding the instant geysers) was assigned by M/s Classic
Equipments Pvt. Ltd. in favour of M/s Vidyut Udyog which was taken
nd
over by the plaintiff-Company by the Agreement dated 2 April,
1997 along with all its assets and liabilities. The Assignment Deed
st
dated 1 April, 1999 entered into between the M/s Classic
Equipments Pvt. Ltd. and defendant No.4 did not relate to the
trademark "JOHNSON" in relation to the products mentioned
hereinabove.
CS(OS) No.816/2008 Page 17 of 54

39. It is stated by the plaintiff that the plaintiff is the registered
owner of the mark "JOHNSON" in relation to the products mentioned
hereinabove. The use of the mark "JOHNSON" by the defendants in
relation to the said goods results in the infringement of the
registered trademark which exclusively vests in the plaintiff. The use
of the mark "JOHNSON" by the defendants in relation to the
aforesaid goods also results in passing off their goods as those of the
plaintiff.
40. The original pamphlet issued by defendant No.4 has been
exhibited as Ex.P-16. Also a copy of the invoice raised by the
defendant No.1 on defendant No.3 for JOHNSON water heaters has
been placed on record and has been exhibited as Ex.P-17. Copies of
the invoices raised by defendant No.5 for JOHNSON water heaters
have been exhibited as Ex.P-18. Further, the original photograph of
the carton of JOHNSON water geyser indicating defendant No.1 as
its manufacturer which stands admitted by defendant No.4 and not
marked. The original carton of JOHNSON water geyser indicating
defendant No.2 as its manufacturer and defendant No.3 as its
marketer and also the licensed user of defendant No.4 which stands
admitted by the defendant No.4 has been exhibited as Ex.P-19.
41. It is submitted that the use by the defendants of the mark
"JOHNSON" in relation to electric water heaters (excluding the
instant type geysers) is completely illegal and unlawful. The
defendants do not have any right in law to use the mark "JOHNSON"
in relation to the aforesaid goods. The sole endeavour of the
defendants is to encash and ride upon the goodwill and reputation
earned by the plaintiff in the mark "JOHNSON" in relation to the
abovementioned goods and on account of the defendant’s
CS(OS) No.816/2008 Page 18 of 54

irresponsible manner of conducting its business, the plaintiff has
suffered and will continue to suffer irreparable damage to its
reputation, business and goodwill unless the defendants are
restrained by an order of injunction to be passed by this Court. The
plaintiff has suffered huge losses by virtue of the said illegal use of
the impugned mark by the defendants. Thus, the plaintiff has also
been seeking for relief of damages against the defendants and for
the purpose of computing the same, the plaintiff has relied upon the
sales figure as given by defendant No.4. The defendant No.4 in its
written statement is claiming to be using the impugned mark
"JOHNSON" since the year 1999. A copy of the sales turnover as
filed by the defendant No.4 has been exhibited as Ex.PW-1/14.
42. The plaintiff is claiming for damages to the tune of Rs.
35,42,504.67/- as well as punitive damages in view of the malafide
and dishonest adoption and use of the impugned mark apart from
seeking relief of passing off and permanent injunction in its favour.
43. The written statement on behalf of the defendant No.4 has
been filed, wherein, inter alia, the following main defences are
raised:-
(i) The plaintiff has claimed on the basis of the alleged Deed of
th
Assignment dated 9 March, 1994, which itself is a fraudulent
and doctored document. A comparison of the said documents
filed by the plaintiff and photocopy filed by the defendant No.4
would show the manipulation committed by the plaintiff. In the
original, the document was signed on behalf of one M/s Jain
Associates. In the original, there has been no cutting in the
page. Not only that, the plaintiff on the basis of this doctored
document, procured the split Trade Mark registrations and
CS(OS) No.816/2008 Page 19 of 54

orders from the Trade Mark Office. The entire proceedings
before the Trade Mark office and the present suit proceedings
are fraud and stands vitiated.
(ii) Assuming the said Assignment to be valid, it is submitted by
the defendant No.4 that the aforesaid Assignment dated 9th
March, 1994 to M/s Vidyut Udyog was only in relation to
"electric storage type water heaters (excluding the instant type
geysers)". On the other hand, the alleged rights given by M/s
Vidyut Udyog to the plaintiff as per the plaintiff's own
pleadings pertain to "Electric water heaters (excluding the
instant type geysers)". There is a difference between these
two kinds of goods. The first type pertains to "Hammams"
while the second type pertain to "Heating Elements" like
immersion rods etc. Thus, neither M/s Vidyut Udyog had rights
in these heating elements nor could he have assigned the
same. The hammams in which it allegedly had rights have not
been assigned. In either case, the plaintiff has no rights at all.
(iii) Even assuming that the plaintiff's claimed goods i.e., "electric
water heaters (excluding the instant type geysers)" are same
as "electric storage type water heaters (excluding the instant
type geysers)" even then both these goods do not include
heating elements like immersion rods etc.. These products in
the trade, market and consumer parlance and in local
language are commonly referred to as a "hammam" or "boiling
chamber" and were so understood by the parties and in
reference to which they are so traded and bought. The
hammam is a product which consists of a portable drum and is
kept on the floor and is not mounted on the wall.
CS(OS) No.816/2008 Page 20 of 54

(iv) This product viz. hammam is different from geysers which are
mounted, fixed and stationed on the walls. The term 'instant
type geysers' refers to fixed or portable type geysers which are
however not hammams. In a hammam, water is stored and
then heated. While in a geyser water flows in from one inlet,
then passes through an element and then flows out from
another.
(v) These two set of products viz. hammams and geysers are
different in their engineering, mode of use, the functions they
perform, the prices involved etc., and are considered as
different products in the market, trade and consumer parlance.
(vi) Under the alleged Assignment to the plaintiff, only hammams
were assigned and not geysers. The expression "(excluding the
instant type geysers)" was so incorporated in the plaintiff's
alleged assignment as to limit and highlight that its
assignment was intended only for hammams as they were
portable while instant type geysers could be both portable and
fixed and thus, a reference was so made to highlight and
clarify that the plaintiff's claimed goods were only restricted to
portable hammam.
44. In the alternative to the aforesaid, it has been submitted by
the defendant No.4 as under:-
a) The defendant No.4 had acquired all the proprietary rights in
its said trademark "JOHNSON" under a written Deed of
st
Assignment dated 1 April, 1999 executed in its favour by M/s
Classic Equipments Pvt. Ltd.
CS(OS) No.816/2008 Page 21 of 54

b) Under the said Deed of Assignment, the defendant No.4 was
assigned the trademark "JOHNSON" registered at Nos.
195359, 197997B and 319955 as per the goods specified
therein as also the pending trademark applications for a wider
specification of goods being trademark application Nos.
398341 in class 9, 398342 in class 11, 398343 in class 7,
319954 in class 9 and 390169 in class 9.
c) As it is apparent from the Trade Mark under application
No.398342 in class 11, electric geysers for hot water and
heaters as well as parts and accessories besides a whole lot of
other electrical items and fittings forming part of the same
applications, have been assigned to the defendant No.4
besides the trademark registrations for the goods mentioned.
These assigned goods includes water boilers.
45. It is further stated by the defendant No.4 that the plaintiff
claims to have acquired its said trademark in relation to its claimed
goods viz. electric water heaters or water heaters electric (excluding
instant type water geysers) (hereinafter referred to as the "said
goods") from one M/s Vidyut Udyog who in turn claims to have
th
acquired the same by written Deed of Assignment dated 9 March,
1994 from M/s Classic Equipments Pvt. Ltd. On the other hand, the
defendant No.4 has also acquired his said trademark in relation to its
goods from M/s Classic Equipments Pvt. Ltd. Geysers formed part of
st
the defendants' goods as per Deed of Assignment dated 1 April,
1999 and duly covered inter alia by its pending class 11 applications
and the trademark registration from which it was so allotted to him.
These geysers to the defendant No.4 are different from hammams
CS(OS) No.816/2008 Page 22 of 54

and are so taken by the market, trade and in accordance with honest
industrial and commercial matters and practices.
45.1 Ever since its assignment, the defendant No.4 has been using
the said trademark "JOHNSON" continuously and commercially in the
course of trade and as proprietor thereof in relation to have a wide
range of its said goods including electric geysers, heaters, kettles,
grinders, juices etc and falling inter alia in classes 7,9, 11 and 21.
The defendant No.4, however, is not using the said trademark in
relation to hammams.
45.2. The business carried on by the defendant No.4 under the said
trademark since 1999 in relation to the defendants' said goods has
been open and to the knowledge of all including the plaintiff as also
to the deemed knowledge of the plaintiff.
45.3. The defendant No.4 has built up a valuable trade goodwill and
reputation under its said trademark which duly identifies its goods
from their source and origin. The goodwill and reputation built up by
the said defendant is enduring and expanding.
45.4. The defendant No.4 has built up handsome sales under its said
trademark as also has been spending enormous amount of its time,
money and efforts on the publicity and promotion thereof on a
continuous and regular basis through various means and modes. The
defendants' said business under its said trademark is extensive and
extends far and wide across the length and breadth of the country.
The defendant No.4-Company has been carrying on its said goods
and business by itself as also through its licensee being defendant
No.3 and its suppliers/dealers being defendant Nos.1, 2 and 5.
CS(OS) No.816/2008 Page 23 of 54

46. In the written statement, it is also stated that it is a clear case
of delay and acquiescence as the plaintiff was aware about the
activities of the defendants since very long after the assignment
deed referred by the plaintiff. The following reasons are also stated:-
(i) The entire business was a family business and the parties
are all related to each other being all real brothers, their
wives and their offspring. The Johnson Group consisted of
the family of four real brothers at the relevant time
namely, Sh. Muni Lal Jain, Sh. Satish Kumar Jain, Sh.
Subhash Chand Jain and Sh. Vinod Kumar Jain.
(ii) Sh. Amit Jain is the son of Sh. Satish Kumar Jain while Sh.
Rakesh Jain, one of the alleged Director of the plaintiff-
Company and the plaintiff's signatory is the son of Sh. Muni
Lal Jain.
Sh. Amit Jain was one of the Director in the plaintiff-
Company in the year 1999 when the Deed of Assignment
st
dated 1 April, 1999 was executed by M/s Classic
Equipments Pvt. Ltd in favour of the plaintiff. Sh. Amit Jain
is a witness to the said Deed of Assignment. Sh. Muni Lal
Jain, father of Sh. Rakesh Jain is the other
witness/signatory to the said Deed of Assignment. At that
point of time, even Sh. Rakesh Jain was the Director in the
plaintiff-Company.
(iii) Sh. Muni Lal Jain became the Director in M/s Classic
st
Equipments Pvt. Ltd on 1 April, 1999 when defendant
No.4 had resigned from his directorship in the said
Company.
CS(OS) No.816/2008 Page 24 of 54

The various assignments including the
st th
Assignments of 1 April, 1999 and 9 March, 1999 were
executed due to family arrangements and all the parties
were aware and known to each other.
Accordingly, the said assignments were so acted
upon including as to the scope of the goods involved in the
st
respective Assignment of 1 April, 1999 and the alleged
th
Assignment dated 9 March, 1994 as also as to the
meaning of the goods to be restricted to hammams in the
th
Assignment of 9 March, 1994 as explained above.
47. The plaintiff was aware of the defendants' said rights and use
from the year 1999 till date and has stood by it. The defendants
have grown and prospered under the plaintiff's very nose who has
never objected to the defendants' said use. It is only now that the
plaintiff has preferred the present suit and that too on vague, false
and frivolous allegations. As it is apparent from the said allegations,
the plaintiff appears to be well aware of the Form TM-24 proceedings
between the defendant No.4 and M/s Classic Equipments Pvt. Ltd as
also the two suit proceedings between the defendant No.4 and M/s
Blumac Electricals India. In these proceedings, the said defendant
had pleaded its rights and use and even placed documentary
evidence coupled with the fact that the parties are well known to
each other.
48. The plaintiff has suppressed its knowledge and/or deemed
knowledge of the defendants' use since the year 1999. The plaintiff
has made a false statement with regard to cause of action. The fact
is that the defendants' has been in its said goods and business since
the year 1999. The plaintiff has deliberately made false statements
CS(OS) No.816/2008 Page 25 of 54

st
to the effect that the Deed of Assignment dated 1 April, 1999 of the
th
defendant No.4 had been stayed by this Court vide order dated 18
March, 2008 in WP(C) No. 2157/2008.
49. Thus, the plaintiff's suit is barred by the principles of limitation
taken from the year 1999 when the defendant had received the
st
Assignment dated 1 April, 1999. The said Assignment was well
within the knowledge of the plaintiff having regard inter alia to the
nature of the family business involved and the Directors and the
witnesses involved as also the defendants' use of the said trademark
"JOHNSON" continuously since then in the course of trade in relation
to their goods.
50. The plaintiff had filed the replication wherein it has denied all
the pleas raised by the defendant No.4 in its written statement. It
has been stated as under:-
a) The plaintiff denies the allegation that the assignment and
documents are fraudulent and doctored. It is stated that Sh. Muni
Lal Jain, one of the Directors of the plaintiff-Company and also
one of the Directors of M/s Classic Equipments Pvt. Ltd. has
th th
deposed in his affidavit dated 6 June, 2008 that on 9 March,
1994 apart from the Assignment Deed entered into between M/s
Classic Equipments Pvt. Ltd. wherein the trademark "JOHNSON"
was assigned to M/s Vidyut Udyog in relation to electric storage
type water heaters (excluding the instant type geysers) covered
under Registration No. 19799-B in class 11. There was another
Assignment deed entered into between the M/s Classic
Equipments Pvt. Ltd. and M/s Jain Associates vide which M/s
Classic Equipments Pvt. Ltd. assigned the trademark "JOHNSON"
in relation to electric coil stoves, electric hot plates and electrical
CS(OS) No.816/2008 Page 26 of 54

cooking ranges covered under Registration No. 319955 in class 11
in favour of one M/s Jain Associates. It is further stated in his
affidavit that both these Assignment Deeds mentioned above and
also various other Assignment Deeds were drafted and prepared
by M/s Delhi Registration Service. He has further stated that after
having received the original Assignment Deeds entered into
between M/s Classic Equipments Pvt. Ltd and M/s Vidyut Udyog
and M/s Classic Equipments Pvt. Ltd and M/s Jain Associates dated
th
9 March, 1994 from M/s Delhi Registration Service along with the
copies thereof, the same were duly signed and witnessed in his
presence. One such duly signed and witnessed copy of each
Assignment Deed was retained by M/s Classic Equipments Pvt. Ltd
for official records and the original deeds were handed over to M/s
Delhi Registration Service for taking further actions so as to give
effect to these assignments in the Trade Marks Registry. He
further stated that subsequently it was discovered that the name
of assignee on last page of both the said assignment deeds was
typed as 'For Jain Associates through its partner Sh. Muni Lal
Jain', whereas one of the said Assignments in effect related to M/s
Vidyut Udyog. This error was duly communicated to M/s Delhi
Registration Service and necessary corrections were made in the
copies of the said deeds retained by M/s Classic Equipments Pvt.
Ltd for official records. He has also stated that both these
th
Assignment Deeds dated 9 March, 1994 were duly submitted to
the Trade Mark Registry by M/s Delhi Registration Service and
th
vide letter dated 24 January, 1995, M/s Classic Equipments Pvt.
Ltd was informed by M/s Delhi Registration Service that the said
assignments have been allowed by the Trade Mark Registry vide
CS(OS) No.816/2008 Page 27 of 54

th
Order No.PR/985 dated 20 January, 1995. Accordingly, the
question of forging or fabricating the original Assignment Deed
entered into between M/s Classic Equipments Pvt. Ltd and M/s
th
Vidyut Udyog dated 9 March, 1994 and obtaining the split Trade
Mark Registrations and orders from the Trade Mark Registry on
the basis of the same does not even arise as the original deed as
well the copies thereof were duly signed and witnessed in the
presence of Sh. Muni Lal Jain after which the original deed was
sent to M/s Delhi Registration Service for taking further actions in
order to give effect to the said assignment. The above facts
establish that all the Assignments were well within the knowledge
of the same Trade Mark Agents who were earlier acting on behalf
of the entire Jain family and are now representing defendant No.4.
b) With regard to the second contention that the expression
"Electric storage type water heaters (excluding instant type
th
geysers)" has been used in the Assignment Deed dated 9 March,
1994 entered into between M/s Classic Equipments Pvt. Ltd and
M/s Vidyut Udyog, is in fact hammam which is different from
"Electric water heaters (excluding instant type geysers)" in which
the plaintiff has no rights, it is submitted by the plaintiff that the
defendant No.4 in fact has concocted this entire story and is trying
to create an artificial distinction between Electric storage type
water heaters (excluding instant type geysers) and Electric water
heaters (excluding instant type geysers) and is in turn terming the
former as "Hammams" with a view to mislead this Court. Further,
in para 4 of the written statement, an attempt has been made to
portray before this Court and to cast an impression that the
expression "Electric Water Heater/Geyser" is confined and limited
CS(OS) No.816/2008 Page 28 of 54

only to the instant type heaters/geysers. As it has been stated
earlier, Electric Water Heaters/Geysers for the purposes of the
present suit can broadly be classified in two categories, i.e. the
instant type and excluding instant type or storage type. While the
former is the one wherein the water is not required to be stored,
in fact it gets heated instantly as and when it enters the
heater/geyser and passes through the heating element before it
exits the heater/geyser, the latter is the one wherein the water
first gets stored and then gets heated. The fact that there is no
distinction between the two expressions, namely Electric storage
type water heaters (excluding instant type geysers) and Electric
water heaters (excluding instant type geysers) is evident from the
th
Form TM-16 dated 18 January,1995 that was filed on behalf of
M/s Classic Equipments Pvt. Ltd by M/s Delhi Registration Service,
wherein a request was made to read the expression Electric
storage type water heaters (excluding instant type geysers) that
th
was used in the Assignment Deed dated 9 March, 1994 entered
into between M/s Classic Equipments Pvt. Ltd and M/s Vidyut
Udyog, as Electric water heaters (excluding instant type geysers).
It is submitted that had there been any difference whatsoever
between the aforementioned two expressions as alleged, the
difference in wording in the Form TM-16 would not have occurred.
The said two terms are in fact used and understood as being
synonymous to each other. Be that as it may, it is submitted that,
the nomenclature used by the defendant No.4 for its Geysers is
also "Electric Storage Geyser". This is evident from page 49 of
defendant's documents read with Page 26 of the said documents.
The geyser in the defendant's brochure at page 26, bears the IS
CS(OS) No.816/2008 Page 29 of 54

No. 2082 which also finds a mention at Pg 49 in relation to
"Electric Storage Geyser". This being the case, one fails to
understand as to by what stretch of imagination and on what basis
the defendant No.4 is terming "Electric storage type water
th
heaters" that has been used in the Assignment Deed dated 9
March, 1994 entered into between M/s Classic Equipments Pvt. Ltd
and M/s Vidyut Udyog, as "Hammams" and distinguishing the
same from Electric water heaters.
c) With regard to the submissions of the defendant No.4 in its
written statement that the defendant No.4 had itself acquired
rights in Trade Mark Application No. 398342 in class 11 qua
st
Electric geysers by virtue of the Assignment Deed dated 1 April,
1999 entered into between M/s Classic Equipments Pvt. Ltd and
defendant No. 4, it is submitted by the plaintiff that the present
case only deals with the trademark "JOHNSON" in relation to
electric water heaters (excluding instant type geysers), for which
the plaintiff is the registered proprietor and exclusive owner. The
aforesaid Assignment Deed did not relate to the trademark
"JOHNSON" in relation to the products in question inasmuch as the
rights of M/s Classic Equipments Pvt. Ltd. in the said mark in
relation to the said products had ceased to exist vide Assignment
th
Deed dated 9 March, 1994 between M/s Classic Equipments Pvt.
Ltd. and M/s Vidyut Udyog which was taken over by the plaintiff-
nd
company vide Agreement dated 2 April, 1997 along with all its
assets and liabilities. In fact, pursuant to the aforementioned
Assignment; M/s Classic Equipments Pvt. Ltd. made an application
th
to the Trademark Registry vide Form TM-36 dated 17 May, 1995
through M/s Delhi Registration Service for striking out the goods
CS(OS) No.816/2008 Page 30 of 54

i.e. Water Heaters (Electric) (excluding the instant type geysers)
from the category of goods under their Registered Trademark No.
197998 B in Class 11. Accordingly, the defendant No. 4 cannot
claim any statutory/common law rights in the trademark
"JOHNSON" in relation to electric water heaters (excluding instant
type geysers). Be that as it may, it is submitted that even the
Trade Mark Application No. 398342 in class 11 under which the
defendant No.4 is claiming rights qua electric geysers, was
abandoned by the said defendant long ago. Accordingly, no rights
whatsoever can be claimed by the said defendant on the basis of
the same.
d) The plaintiff had also denied that the plaintiff has
concealed/suppressed the knowledge of defendant No. 4. It is
submitted that the plaintiff, in fact, has set out the entire
background of the joint family business of Jain family, the
th
Memorandum of Partition dated 12 March, 1999, the Deed of
st
Assignment dated 1 April, 1999 and also the various legal
disputes between M/s Classic Equipments Pvt. Ltd., M/s Blumac
Electricals India and Sh. Vinod Kumar Jain or his business entities
(defendant No. 4 being one of them) that are pending adjudication

before this Court in para 17 to 20 of the plaint. It is denied by the
plaintiff that the present suit has been with any vengeance to the
legal disputes between M/s Classic Equipments Pvt Ltd., M/s
Blumac Electricals India and Sh. Vinod Kumar Jain (proprietor of
defendant No.4-Company) or it is a shadow of M/s Classic
Equipments Pvt Ltd. and M/s Blumac Electricals India and the
same has been filed to settle scores and open up another front
against the defendant No.4. It is submitted that all these
CS(OS) No.816/2008 Page 31 of 54

allegations are totally misplaced, misconceived and nothing but an
exaggerated misconception of the defendant No.4. The said
defendant having specifically and voluntarily agreed to the
partition of the mark as stated in the plaint cannot now violate the
said settlement both in letter and spirit. Insofar as the plaintiff is
concerned, its business primarily depends on this particular
product and hence, if the defendants use the same brand for the
same product and sell in the market, it would completely erode
the distinctiveness of the brand qua the plaintiff and would also
completely wipe out its market as well.
e) It is also denied that the plaintiff has deliberately manipulated
the array of defendants as the defendant Nos.1 and 2 are engaged
in the manufacturing of the electric water heaters (excluding the
instant type geysers) under the mark "JOHNSON" which are being
marketed by defendant Nos. 3 and 4. Defendant No. 5 is one of
the distributors of defendant No. 3 who claims to be the licensed
user of the mark "JOHNSON" in relation to the aforesaid goods by
virtue of an alleged exclusive License/Permitted User Agreement
th
dated 27 May, 2006 executed in its favour by defendant No. 4.
In view of the same, to say that the plaintiff has deliberately
manipulated the array of defendants is nothing but an
exaggerated misconception of the defendant. The very fact that
the defendants have not filed any agreement to this effect on
record itself speaks volumes of their conduct which is violative of
all the statutory and common law rights vesting in favour of the
plaintiff in respect of the mark "JOHNSON" in relation to water
heaters (electric) (excluding the instant type geysers) and is
causing grave injury/losses to the plaintiff whose running business
CS(OS) No.816/2008 Page 32 of 54

is being severely impaired. The defendants have no right in law or
equity over the mark "JOHNSON" in relation to the
aforementioned goods. It is further submitted that the exclusive
th
License/Permitted User Agreement dated 27 May, 2006 entered
into between defendants Nos.3 and 4 does not even relate to the
mark "JOHNSON" in relation to electric water heaters, far less
electric water heaters (excluding the instant type geysers).
st
f) It is submitted that the Assignment Deed dated 1 April, 1999
entered into between M/s Classic Equipments Pvt. Ltd and
defendant No. 4 does not relate to the trademark "JOHNSON" in
relation to the products in question inasmuch as the rights of M/s
Classic Equipments Pvt. Ltd. in the said mark in relation to the
th
said products had ceased to exist vide Assignment Deed dated 9
March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s
Vidyut Udyog which was taken over by the plaintiff-Company vide
nd
Agreement dated 2 April, 1997 along with all its assets and
liabilities. Accordingly, the defendant No. 4 cannot claim any
statutory/common law rights in the trademark "JOHNSON" in
relation to electric water heaters excluding instant type geysers.
g) It is denied that the plaintiff-Company has
concealed/suppressed the knowledge of defendant No. 4 as
alleged. In fact, the plaintiff has set out the entire background of
the joint family business of Jain family, the Memorandum of
th
Partition dated 12 March, 1999, the Deed of Assignment dated
st
1 April, 1999 and also the various legal disputes between M/s
Classic Equipments Pvt Ltd., M/s Blumac Electricals India and Sh.
Vinod Kumar Jain or his business entities (defendant No. 4 being
one of them) that are pending adjudication before this Court. It is
CS(OS) No.816/2008 Page 33 of 54

further denied that the plaintiff has manipulated the cause of
action as alleged. It is further denied that the plaintiff has
misrepresented about the scope and extent of its alleged rights
and has suppressed the defendant's rights and claims.
h) It is also denied that the defendants have any right in law to
use the mark "JOHNSON" in relation to the goods in question. The
defendants have no right in law or equity over the mark
"JOHNSON" in relation to the aforementioned goods and are liable
to be injuncted from using the mark "JOHNSON" in relation to
water heaters (electric) (excluding the instant type geysers) in
any manner whatsoever. The plaintiff has every right to protect its
coveted intellectual property and the rights therein, and the same
cannot be infringed/violated by the defendants with impunity who
do not have any right in law to use the mark "JOHNSON" in
relation to the aforesaid goods i.e. water heaters (electric)
(excluding the instant type geysers). It is denied that the plaintiff
has concealed the factum, cause and effect of the Form TM-16
th
dated 18 January, 1995 as alleged. The very purpose of filing the
said Form TM -16 was merely to change the nomenclature of the
goods and not to alter the specification/character/nature of the
goods so assigned to M/s Vidyut Udyog vide Assignment Deed
th
dated 9 March, 1994 as has been sought to be portrayed by
defendant No. 4. It is reiterated that Sh. Vinod Kumar Jain, being
part of the joint family business of the Jain Family comprising of
four families headed by four brothers, namely, Sh. Muni Lal Jain,
Sh. Satish Kumar Jain, Sh. Subhash Chand Jain, and Sh. Vinod
th
Kumar Jain, till 12 March, 1999, when the Memorandum of
Partition was entered into between four brothers, and also M/s
CS(OS) No.816/2008 Page 34 of 54

Delhi Registration Service were very much aware of the factum of
the said Form TM-16 since its inception. The said Form TM-16 was
drafted and prepared by M/s Delhi Registration Service. Further, it
was M/s Delhi Registration Service only who had sent the said
form to the Registrar of Trademarks.
i) It is denied by the plaintiff in its replication that the present
suit is barred by limitation. It is further denied that the plaintiff
had the knowledge about the defendant's use of the impugned
mark in relation to the products in issue since 1999 as alleged.
j) It is submitted that the plaintiff being the registered owner of
the mark "JOHNSON" in relation to the products mentioned
hereinabove, the use of the mark "JOHNSON" by the defendants in
relation to the said goods results in the infringement of the
registered trademark, which exclusively vests in the plaintiff. The
use of the mark "JOHNSON" in relation to the aforesaid goods also
results in passing off of the defendants' goods as that of the
plaintiff. The use by the defendants of the mark "JOHNSON" in
relation to water heaters (electric) (excluding the instant type
geysers) is completely illegal and unlawful. The defendants do not
have any right in law to use the mark "JOHNSON" in relation to
the aforesaid goods. The sole endeavour of the defendants is to
encash and ride upon the goodwill and reputation earned by the
plaintiff in the mark JOHNSON in relation to the abovementioned
goods.
k) It is denied that there is no cause of action for the present suit
or that the same hasn't been disclosed. It is submitted that the
plaintiff is the registered proprietor and exclusive owner of
trademark "JOHNSON" bearing Registration No. 197998 B in
CS(OS) No.816/2008 Page 35 of 54

relation to electric water heaters (excluding instant type geysers),
in class 11. On the contrary, it is the defendants who do not have
any right in law to use the mark "JOHNSON" in relation to the
aforesaid goods.
51. From the pleadings, the following issues were framed in the
th
matter on 29 September, 2011:-
1. Whether the plaintiff is the proprietor of the mark
"JOHNSON" bearing Registration No.197998-B in relation
to electric water heaters (excluding instant type
geysers)? OPP

2. Whether there is any difference between the electric
water heaters (excluding, instant type geysers) and
electric storage type water heaters (excluding instant
type geysers)? OPD-4

3. Whether the defendants are infringing the trademark
"JOHNSON" of the plaintiff in respect of electric water
heaters (excluding instant type geysers) if so, its effect?
OPP

4. Whether the suit is not maintainable on account of
delay/acquiescence on the part of the plaintiff? OPD

5. Whether the suit is without any cause of action? OPD

6. Whether the plaintiff is entitled to damages, if so to what
amount? OPP

7. Relief.
52. Both the parties have led their evidence. The plaintiff had filed
its evidence by way of affidavit of Sh. Muni Lal Jain as PW-1. The
defendant No.4 had filed its evidence by way of affidavit of Sh. Vinod
Kumar Jain as DW-1. The evidence was recorded by the Court
Commissioner appointed by this Court.
CS(OS) No.816/2008 Page 36 of 54

53. In evidence, the following documents were exhibited by the
plaintiff:-
S.No. Particulars
th
1. Ex.PW-1/1; Original Board Resolution dated 28
December, 2011
2. Ex.PW-1/D1; Copy of the Registration Certificate
197998 B for the mark "JOHNSON" in class 11.
st
3. Ex.P-5; A copy of the Partnership Deed dated 1
April, 1967 entered into between Sh. Chain Lal
Jain and Sh. Muni Lal Jain and Sh. Satish Kr.
Jain.
th
4. Ex.P-6; A copy of the Trust Deed dated 26
June, 1979 vide which M/s Jain Youngsters Trust
was constituted.
5. Ex.P-7; A copy of the Deed of Assignment
nd
dated 22 December, 1979 entered into
between M/s Jain Industries and M/s Jain
Youngsters Trust
st
6. Ex.PW-1/3; The original letter dated 21 March,
1979 addressed to the Trade Mark Registry by
M/s Delhi Registration Service on behalf of M/s
Jain Industries
7. Ex.PW-1/D2; Copy of the Registration Certificate
pertaining to the mark "JOHNSON" bearing
Registration No.319955
th
8. Ex.P-8; A copy of the Trust Deed dated 8 June,
1984 vide which M/s C.L. Jain Trust was
constituted.
9. Ex.P-9; A copy of the Deed of Assignment dated
st
1 July, 1984 entered into between M/s Jain
Youngsters Trust and M/s C.L. Jain Trust.
10. Ex.P-10; A copy of the Deed of Assignment dated
th
5 October, 1987 entered into between M/s C.L.
Jain Trust and M/s Johnson (Sales) India.
nd
11. Ex.P-2; A copy of the Agreement dated 2 April,
1992 entered into between M/s Johnson (Sales)
CS(OS) No.816/2008 Page 37 of 54

India and M/s Classic Equipments Pvt. Ltd..
12. Ex.PW-1/D4; A Copy of the Deed of Assignment
th
dated 9 March, 1994 entered into between M/s
Classic Equipments Pvt. Ltd. and M/s Vidyut
Udyog.
13. Ex.P-1; The copy of the Assignment Deed dated
th
9 March, 1994 entered into between M/s Classic
Equipments Pvt. Ltd. and M/s Jain Associates.
th
14. Ex.PW-1/4; Original letter dated 24 January,
1995 addressed to M/s Classic Equipments Pvt.
Ltd. by M/s Delhi Registration Service.
15. Ex.PW-1/5; The original order No.PR/985 dated
th
20 January, 1995 passed by the Registrar of
Trade Marks
th
16. Ex.PW-1/6; A copy of Form TM-24 dated 17
May, 1995 filed by M/s Vidyut Udyog before the
Trade Mark Registry.
17. Ex.PW-1/7; The original order No.PR/25 dated
th
14 February, 1997 passed by the Registrar of
Trade Marks
th
18. Ex.P-3; The copy of the Form TM-16 dated 18
January, 1995 filed by M/s Classic Equipments
Pvt. Ltd.
th
19. Ex.P-21; The copy of the Form TM-36 dated 17
May, 1995 filed by M/s Classic Equipments Pvt.
Ltd.
nd
20. Ex.PW-1/8; The original Agreement dated 2
April, 1997 entered into between M/s Vidyut
Udyog and M/s Johnson Appliances Pvt. Ltd.
21. Mark E; A copy of the Legal Proceedings
th
Certificate dated 26 September, 1997 issued by
the Registrar of Trade Marks.
th
22. Ex.PW-1/9; A copy of the order dated 15
September, 2004 passed by the Registrar of
Trade Marks.
23. Mark F; A copy of the Appeal as preferred by the
plaintiff before the IPAB against the Registrar’s
CS(OS) No.816/2008 Page 38 of 54

th
order dated 15 September, 2004.
th
24. Ex.PW-1/10; A copy of the order dated 10
February, 2005 passed by the IPAB setting aside
the Registrar’s order.
25. Ex.PW-1/11; The original Renewal Certificate
th
dated 14 March, 2007.
26. Mark G (Colly); Copies of sales invoices of M/s
Vidyut Udyog, the plaintiff-Company and its
permitted user.
27. Mark H (Colly); Copies of the newspaper
advertisements issued by the plaintiff-Company.
st
28. Ex.P-11; Copy of the Assignment Deed dated 1
April, 1999 entered into between M/s Classic
Equipments Pvt. Ltd. and defendant No.4 i.e. M/s
Johnson Enterprises.
29. Ex.P-4; Copy of the exclusive License/Permitted
th
User Agreement dated 27 May, 2006 entered
into between defendant Nos. 3 and 4.
th
30. Ex.PW-1/12; The original letter dated 9
September, 1999 issued by Trademark Registry
to M/s Classic Equipments Pvt. Ltd.
31. Ex.PW-1/13; The original pamphlet, price list,
guarantee card, etc., issued by the plaintiff.
32. Ex.P-16; The original pamphlet issued by
defendant No.4.
33. Ex.P-17; Copy of the invoice raised by defendant
No.1 on defendant No.3 for Johnson water
heaters.
34. Ex.P-18; Copies of the invoices raised by
defendant No.5 for Johnson water heaters.
35. Ex.P-20; Original photograph of the carton of
Johnson water geyser indicating defendant No.1
as its manufacturer.
36. Ex.P-19; The original carton of Johnson water
geyser indicating defendant No.2 as its
manufacturer and defendant No.3 as its marketer
CS(OS) No.816/2008 Page 39 of 54

and also the licensed user of defendant No.4.
37. Ex.PW-1/14; A copy of the sales turnover as filed
by defendant No.4 on the court record.

54. I shall now discuss the matter issues wise. Issues No.1 to 3
are connected with each other, thus the same are taken up together
55. Mr. Bansal, learned counsel for the defendants in support of
his submission has referred the pleadings, documents as well as the
answers given by the PW-1 in his cross-examination to the question
Nos. 18, 19, 65, 44-46, 69, 70, 71, 74, 75, 97, 102. He submits that
PW-1 has clearly admitted in his cross-examination that water
boilers are covered by both the Registrations i.e. 197998 and
319955. The water boilers can heat upto 100 degrees and generate
steam, and the water heaters (storage type) will not heat upto the
boiling point, consequently generating steam because there is a
thermostat along with the cut off device provided in it. The
th
Assignment dated 9 March, 1994 between M/s Classic Equipments
Pvt. Ltd and M/s Vidyut Udyog was by splitting the category of water
boilers and goods assigned were water boilers “being technically
known as water boilers”. In the water heaters, thermostat and cut
off devices are fitted and therefore in the said water heaters,
temperature cannot rise beyond a particular level thus the steam will
not be generated. The electric water heaters (storage type) cannot
st
boil water and generate steam. The Deed of Assignment dated 1
April, 1999 was witnessed by the plaintiff’s witness himself and has
identified his own signatures at Point ‘A’. The various disputes
pending between defendant No.4 and M/s Classic Equipments Pvt.
CS(OS) No.816/2008 Page 40 of 54

Ltd. and M/s Blumac Electricals India and Deed of Assignment dated
st
1 April, 1999 are not relevant for the present proceedings.
56. In his examination and cross examination, DW-1 has not
denied the factual position that when M/s Classic Equipments Pvt.
Ltd. became the proprietor of the mark "JOHNSON" in relation to the
nd
goods in question on 2 April, 1992, there were two Assignment
Deeds executed by M/s Classic Equipments Pvt. Ltd. wherein one
Deed of Assignment had assigned the trademark "JOHNSON" in
relation to electric storage type water heaters (excluding the instant
type geysers) covered under Registration No.197998-B in class 11 in
favour of one M/s Vidyut Udyog and another Deed of Assignment
had assigned the trademark "JOHNSON" in relation to electric coil
stoves, electric hot plates and electrical cooking ranges covered
under Registration No. 319955 in class 11 in favour of one M/s Jain
Associates. The Trade Mark Registry vide their order PR/985 dated
th th
20 January, 1995 allowed both the assignments dated 9 March,
1994.
57. Consequently, the Registered Trade Mark No. 197998 B got
split up into 197998 B in Class 11 and 197998 B (Spl.) and the
Registered Trademark No. 319955 got split up into 319955 and
319955 (Spl.).
58. In view of the said split, the item "Water boiler" which was
covered under both the applications i.e. 197998 B and 319955 got
bifurcated into "Water Heaters (electric) (excluding the instant type
geysers)" and "Water Heaters (instant type geysers)". While the
former went to M/s. Vidyut Udyog under Registration No. 197998 B
(which was subsequently taken over by the plaintiff), the latter
remained with M/s Classic Equipments Pvt. Ltd. under the
CS(OS) No.816/2008 Page 41 of 54

Registration No. 319955. M/s Delhi Registration Service vide letter
th
dated 24 January, 1995 informed M/s Classic Equipments Pvt. Ltd.
th
about the order dated 20 January, 1995 whereby both the
th
Assignment Deeds dated 9 March, 1994 were allowed by the Trade
Mark Registry.
59. Subsequent to the order PR/985, the requisite Form TM-24
and Form TM-36 were filed by M/s Vidyut Udyog pertaining to the
th
Assignment Deed dated 9 March, 1994 in its favour and the said
order was reaffirmed by the Trade Mark Registry vide its order PR-25
th
dated 14 February, 1997. As far as the further split in the mark
319955 in the aforementioned order is concerned, the same was
done because of an Assignment Deed entered on the same date i.e.
th
9 March, 1994 between M/s Classic Equipments Pvt. Ltd. and M/s
Jain Associates pertaining to Electric Coil stoves, electric hot plates
and electric cooking ranges. The most important fact of the matter is
that the Trade Marks Attorney who were handling the matters on
behalf of both the parties, are same. The relevant date is the date of
assignment. On that date and for reasonable time, one has to see
the conduct of the parties and how they have understood and
perceived the written documents. Once the document is a written
document, and is duly signed, different inference cannot be drawn
and thus, the same has to be read as it is.
60. Either at the time of assignment or within the reasonable time,
the defendant No.4 or its assignee never protested or raised any
objection that one of the descriptions of goods i.e. water boilers was
retained by M/s Classic Equipments Pvt. Ltd. or it has at any time
come to the share of the defendant. It appears that later on when
the defendant No.4 felt aggrieved; it started raising the objection
CS(OS) No.816/2008 Page 42 of 54

that the two sets of goods i.e. water boilers and electric storage of
type water heaters are different items. Even the Assignment Deeds
were silent in this regard. The second mark i.e. 319955 assigned to
defendant No.4 was the associated mark with the earlier registered
mark.
61. The defendant No.4 is now trying to create the artificial
distinction between electric storage type water heaters (excluding
instant type geysers) and electric water heaters (excluding instant
type geysers) and is in turn terming the former as “Hammams”. But
they are used and understood as being synonymous in common
market parlance.
62. It is evident from the print out of the screen shot taken from
the website www.indiamart.com and also the printout filed by the
defendant No.4 from the same website demonstrates the same
electric water heaters/geysers. For the purpose of the present suit, it
can broadly be classified in two categories i.e. the instant type and
excluding instant type. While the former is the one in which the
water is not required to be stored, in fact it gets heated instantly as
and when it enters the heater/geyser and passes through the
heating element before it exits the geyser/heater, the latter is the
one wherein the water first gets stored and then gets heated.
63. The expression “excluding instant type” itself connotes the said
product is “storage type”.
64. The nomenclature used by the defendant No.4 for their
product is also “Electric Storage Geyser” who is in fact using the
expression “geyser” and “heater” interchangeably. Even the
nomenclature used in ISI Specification i.e. IS 2082 filed by the said
CS(OS) No.816/2008 Page 43 of 54

defendant No.4 for the product in question is stationary storage type
electric water heaters.
65. There is no distinction between the two expressions as evident
th
from Form TM-16 dated 18 January, 1995 that was filed on behalf
of M/s Classic Equipments Pvt. Ltd. by M/s Delhi Registration
Service, wherein a request was made to read the expression electric
storage type water heaters (excluding instant type geysers) that was
th
used in the Assignment Deed dated 9 March, 1994 entered into
between M/s Classic Equipments Pvt. Ltd. and M/s Vidyut Udyog as
“Electric water heaters (excluding instant type geysers)”
66. It is stated that had there been any difference whatsoever
between the aforementioned two expressions as alleged, the
difference in wording in the FormTM-16 would not have occurred.
67. The defendant No.4 without any valid reasons is trying to
create confusion about another assignment as the present suit is not
st
even remotely connected with the Assignment dated 1 April, 1999
entered into between M/s Classic Equipments Pvt. Ltd. and
defendant No.4 and/or other legal proceedings between M/s Classic
Equipments Pvt. Ltd., M/s Blumac Electricals India and Sh. Vinod
st
Kumar Jain. The Deed of Assignment dated 1 April, 1999 did not
even mention the trademark "JOHNSON" in relation to the product in
question inasmuch as the rights of M/s Classic Equipments Pvt. Ltd.
are concerned.
th
68. Subsequent to the Deed of Assignment dated 9 March 1994
between M/s Classis Equipments Pvt. Ltd. and M/s Vidyut Udyog
made an application to the Trade Mark Registry vide Form TM-36
th
dated 17 May, 1995 through Delhi Registration Service for striking
CS(OS) No.816/2008 Page 44 of 54

out the goods i.e. water heaters (electric) (excluding the instant type
geysers) from the category of goods under their registered
trademark No. 197998 B in class 11.
69. With regard to Trade Mark Application No. 398342 in class 11
under which the defendant No.4 is claiming rights qua electric
geysers has been abandoned by the said defendant. The details of
the same have been filed by the plaintiff in the replication in CS(OS)
No.166/2004 which has been annexed as Annexure C.
70. The Application No.319955 was to be associated with
Application No. 197998 B. Both these applications contained the
item “water boiler”. Subsequent to the two Assignment Deeds dated
th
9 March, 1994, these two applications were split by order No.
th
PR/985 dated 20 January, 1995 passed by the Trade Mark Registry
and hence, “water boiler” got split into storage type geysers and
st
instant type geysers. Accordingly, in Assignment Deed dated 1
April, 1999, M/s Classic Equipments Pvt. Ltd. could have assigned
instant type geysers to defendant No.4. The defendant cannot take
th
shield under PR/414 dated 26 September, 1997 which has been
passed on the basis of an incorrect statement.
71. It is the settled principle that the assignor cannot possibly
transfer more rights than he himself has to the assignee. Reliance is
placed on Thukral Mechanical Works v. P.M. Diesel Pvt. Ltd.
(2009) 2 SCC 768. Even Section 44 of the Act reads as under:-
“44. Assignability and transmissibility or associated
trade marks .—Associated trade marks shall be assignable
and transmissible only as a whole and not separately, but,
subject to the provisions of this Act, they shall, for all other
purposes, be deemed to have been registered as separate
trade marks.”
CS(OS) No.816/2008 Page 45 of 54

72. Thus, it is clear that in relation to the Trade Mark Registration
No. 319955, the said trademark was associated with trademark
197998. Further, Section 44 of the Trade Marks Act, 1999 mandates
that the associated trademarks have to be assigned as a whole and
not separately. Thus, in the present case, since the trademarks No.
197998 and 319955 are associated, by virtue of the Deed of
th
Assignment dated 9 March, 1994, they were assigned together,
which resulted in orders being PR/985 and PR/25 being issued by the
Trade Mark Registry. With regard to the Trade Mark Application No.
398342, it is the plaintiff's submission that the trademark No.
398342 was abandoned and the same was confirmed by the letter
th
dated 9 July, 1999 issued by the Trade Marks Registry.
73. The real fact is that the defendant No.4 has no rights in the
mark "JOHNSON" inasmuch as it relates to the electric water heaters
(excluding instant type geysers) and is further corroborated by the
nd
fact that the said defendant had on 2 March, 2009 filed a fresh
Trade Mark Application bearing No. 1791284 under class 11 for the
stationary storage type electric water heaters amongst other items.
74. Admittedly, the defendant No.4 was aware of the assignment
made in favour of M/s Vidyut Udyog by M/s Classic Equipments Pvt.
Ltd. in 1994 and the said defendant was also aware of the takeover
nd
of M/s Vidyut Udyog by the plaintiff on 2 April, 1997 inasmuch as
the said defendant was one of the Directors in the plaintiff-Company
at that point of time. The said defendant had resigned from the
st
directorship of the plaintiff-Company on 1 October, 1997. Even
st
after the assignment in favour of the said defendant dated 1 April,
1999 by which the said defendant is claiming rights for the goods in
CS(OS) No.816/2008 Page 46 of 54

question, the said defendant did not take any action against the
plaintiff.
75. Pertaining to the issue No.4, regarding the delay and
acquiescence, it is the admitted position that the defendant No.4
enjoys rights for the mark "JOHNSON" for various other electric
appliances. The sporadic instances of the use of the mark
"JOHNSON" by the defendant No.4 in relation to the product in
question never came to the knowledge of the plaintiff till December,
2006. Even the advertisement placed by the defendant No.4
pertaining to the product in question is of 2007.
76. The defendant No.4 has admitted that there are several parties
which are manufacturing “storage type water heaters” for the said
defendant and the defendant No. 4 is being paid royalty for the
same by the defendant No.3 (licensed manufacturer) in India.
77. In evidence, the defendant No.4 has not been able to bring
any additional evidence or witness to prove that the Assignment
Deeds in question were not properly documented and their terms are
not applicable. One can understand that by virtue of assignment, the
defendant No.4 may have lost the description of goods i.e. electric
geysers however, once the assignment is complete, the documents
cannot be treated as invalid document. The terms are to be read in a
simple manner.
th
78. This Court vide order dated 25 March, 2010 granted
injunction to the plaintiff and imposed a cost of Rs.1 lakh on the
defendant No.4. The said order was challenged by the defendant
No.4 in FAO (OS) 461/2010 which has also been dismissed by this
th
Court vide judgment dated 8 February, 2011. The review petition
CS(OS) No.816/2008 Page 47 of 54

149/2011 preferred by the defendant No.4 against the said order
th rd
dated 8 February, 2011 has been dismissed on 23 March, 2011.
Even the Supreme Court was not inclined to interfere with the said
th
order dated 8 February, 2011 and dismissed the SLP(C) No.16615-
th
16/2011 vide its order dated 5 August, 2011.
79. As far as the issue No.1 is concerned, the Legal Proceeding
Certificate showing the name of plaintiff as the subsequent
proprietor has been filed as Mark E. The defendant No.4 has denied
the fact that the said registration is entered in the name of the
plaintiff. On the face of the record, the plaintiff has been able to
discharge the burden of issue No.1. Thus, the same is decided
accordingly.
80. With regard to issue No.2, the defendant No.4 has failed to
discharge its burden, and the same is decided against the defendant
No.4. Issue No.3 is pertaining to infringement. As already held that
the plaintiff is the proprietor of the trademark in relation to goods in
question, the same description of items cannot be permitted to
defendant No.4 otherwise, it would amount to infringement and
passing off. Thus, the plaintiff succeeds in issue No.3 which is
decided against the defendants.
81. Now, with regard to question of delay, defendants submit that
they have been using the mark in question since the year 2006 and
the present suit was filed after eight years and the plaintiff had the
knowledge about the use, thus there is delay in bringing an action.
Hence, the plaintiff is not entitled to discretionary relief of injunction.
There is no clinching, cogent and clear evidence available on record
to show that the plaintiff was definitely aware about such user .
CS(OS) No.816/2008 Page 48 of 54

82. The issue of delay and acquiescence has been considered by
Courts in various matters. Some of them are referred to as under:
a) In the case of Midas Hygiene Industries Pvt. Ltd. v. Sudhir
Bhatia and others , 2004 (28) PTC 121, relevant para-5 of the
said judgment reads as under:
“5. The law on the subject is well settled. In cases of
infringement either of Trade Mark or of Copyright
normally an injunction must follow. Mere delay in
bringing action is not sufficient to defeat grant of
injunction in such cases. The grant of injunction also
becomes necessary if it prima facie appears that the
adoption of the Mark was itself dishonest.”

b) In the case of Swarn Singh v. Usha Industries (India) and
Anr. , AIR 1986 Delhi 343 (DB) it was held as under:

“There is then the question of delay. Learned counsel
for the respondents had urged that the delay is fatal
to the grant of an injunction. We are not so satisfied.
A delay in the matter of seeking an injunction may be
aground for refusing an injunction in certain
circumstances. In the present case, we are dealing
with a statutory right based on the provisions of the
trade and Merchandise Marks Act, 1958. An exclusive
right is granted by the registration to the holder of a
registered trade mark. We do not think statutory
rights can be lost by delay. The effect of a registered
mark is so clearly defined in the statute as to be not
capable of being misunderstood. Even if there is some
delay, the exclusive right cannot be lost. The
registered mark cannot be reduced to a nullity…..”

a) In the case of Hindustan Pencils Pvt. Ltd. v. M/s India
Stationery Products Co. , AIR 1990 DELHI 19 , it was held as
under:
CS(OS) No.816/2008 Page 49 of 54

“29. If an action is taken by the registered owner and
no interim injunction is granted, the effect is that
goods bearing the infringing mark or spurious goods
would continue to be sold in the market. After a
number of years when the case is finally disposed of,
after trial, and the plaintiff succeeds and gets a
permanent injunction then, possibly, the plaintiff may
also be compensated by his being awarded damages
or an account of profits. In that sense the non-grant
of the interim injunction would not, ultimately,
prejudice the plaintiff for he may be compensated
with payment of money but during this period when
the defendant is allowed to continue to infringe the
intellectual property it is the consumer or the
purchaser who alone suffers and who ultimately
cannot be compensated. Therefore, in order to curb
the menace of manufacture, production and sale of
spurious goods and the blatant violation of intellectual
property it will be proper for the Court to take into
consideration the interest of the general public. In
this regard reference may usefully be made to the
following observations of McCarthy at page 346, para
30.21, which deals with the protection of third
parties:
"Some Courts also consider the necessity of
protecting third parties. In trade mark
infringement cases, "third parties" means the
buying public. If the equities are closely
balanced, the right of the public not to be
deceived or confused may turn the scales in
favour of a preliminary injunction."
30. It would appear to be difficult to accept hat relief
of temporary injunction should not be granted,
because of the delay on, the part of the plaintiff, even
though the Court feels, at that point of time, that,
ultimately permanent injunction will have to be
granted.
31. Even though there may be some doubt as to
whether laces or acquiescence can deny the relief of a
permanent injunction, judicial opinion has been
CS(OS) No.816/2008 Page 50 of 54

consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating
the plaintiff s rights then in that case, even if there is
an inordinate delay on the part of the plaintiff in
taking action against the defendant, the relief of
injunction is not denied. The defense of laces or
inordinate delay is a defense in equity. Inequity both
the parties mud's come to the Court with clean
hands. An equitable defense can be put up by a party
who has acted fairly and honestly. A person who is
guilty of violating the law or infringing or usurping
somebody else's right cannot clarify the continued
misuse of the usurped right. It was observed by
Romer, J. in the matter of an application brought be
J. R. Parkington and Co. Ld., (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. In other words, the
equitable relief will be afforded only to that party who
is not guilty of a fraud and whose conduct shows that,
there had been, on his part, an honest concurrent
user of the mark in question. If a party, for no
apparent or a valid reason, adopts, with or without
modifications, a mark belonging to another, whether
registered or not, it will be difficult for that party to
avoid an order of injunction because the Court may
rightly assume that such adoption of the mark by the
party was noting honest one. The Court would be
justified in concluding that the defendant, in such an
action, wanted to cash in on the plaintiffs name and
reputation and that was the sole, primary or the real
motive of the defendant adopting such a mark. Even
if, in such a case, there may be an inordinate delay
on the part of the plaintiff in bringing a suit for
injunction, the application of the plaintiff for an
CS(OS) No.816/2008 Page 51 of 54

interim injunction cannot be dismissed on the ground
that the defendant has been using the mark for a
number of years. Dealing with this aspect Harry D.
Nims in his "The Law of Unfair Competition and Trade
Marks", Fourth Edition, Volume Two at page 1282
noted as follows:
"Where infringement is deliberate and willful and
the defendant acts fraudulently with knowledge
that he is violating plaintiff s rights, essential
elements of estoppels are lacking and in such a
case the protection of plaintiffs rights by
injunctive relief never is properly denied."The
doctrine of estoppels can only be invoked to
promote fair dealings"."
b) In the case of M/s. Bengal Waterproof Limited v. M/s.
Bombay Waterproof Manufacturing Company and
Another , 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.”
CS(OS) No.816/2008 Page 52 of 54

83. No party can be allowed to use the identical mark in any style
whatsoever. The defendant No.4 has no rights in respect of it with
respect to electric water heaters (excluding instant type geysers).
th
The exclusive License/Permitted User Agreement dated 27 May,
2006 entered into between defendant Nos.3 and 4 does not even
relate to the mark "JOHNSON" in relation to electric water heaters,
(excluding the instant type geysers). The defendants have no right
over the mark "JOHNSON" in relation to the electric water heaters
(excluding the instant type geysers).
84. Even if there is any delay, the same is not taken in an action
of infringement of trademark as referred above. In trademarks
matter, every sale gives a fresh cause of action, the cause of action
is of recurring nature. Even otherwise the plaintiff is able to explain
the same and this Court is satisfied with the explanation given.
85. The issue is accordingly decided in favour of the plaintiff and
against the defendant.
86. As issues No.1 to 4 are decided in favour of the plaintiff, the
issue No.5 is also decided against the defendants in view of the
findings arrived at in deciding the issues No. 1 to 4 as there was
cause of action in favour of the plaintiff at the time of filing of the
suit. No cogent reason has been assigned by defendant No.4 that
the suit lacks cause of action. The said issue is accordingly decided
against the defendant No.4 who has failed to discharge its burden.
87. With regard to issue No.6, the plaintiff has not been able to
prove the damages strictly as per the law. Even otherwise, the
parties are related to each other. This Court is not inclined to
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exercise its discretion to impose punitive damages in the nature of
relations. The said issue is decided accordingly.
88. Issue No.7 is about relief. For the reasons mentioned above,
the plaintiff is entitled for decree of permanent injunction in its
favour and against the defendants in terms of prayers (a) & (c) of
the plaint. So far as prayer (b) is concerned, no relief is granted,
however, the plaintiff is entitled for actual costs and counsel’s fee.
89. Decree be drawn accordingly.

(MANMOHAN SINGH)
JUDGE
SEPTEMBER 06, 2016


CS(OS) No.816/2008 Page 54 of 54