Full Judgment Text
Reportable
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (OS) 146 OF 2008
Reserved on : March 28 , 2008.
% Date of Decision: April 4, 2008
# M/s Micolube India Limited ..... Appellant
! Through Mr. K.G. Bansal, Advocate.
versus
$ M/s Maggon Auto Centre ..... Respondent
^ Through Mr. Sandeep Sethi, Sr. Adv. With
Mr. Lakshay Sawhney and Mr. Apoorva
Kulkarni, Adv.
CORAM:
* HON'BLE MR. JUSTICE MANMOHAN SARIN
* HON'BLE MR. JUSTICE MANMOHAN
1. Whether Reporters of local papers may be allowed to see the judgment?
2. To be referred to the Reporter or not? YES
3. Whether the judgment should be reported in the digest? YES
J U D G M E N T
MANMOHAN, J:
1. The Appellant has filed the present appeal being FAO (OS) 146/2008 for setting
th
aside the order dated 7 February, 2008 passed by the learned Single Judge in IA no.
FAO (OS) 146/2008 Page 1 of 8
11702/2007 and 12433/2007 in CS (OS) No. 2015/2007. The Appellant has further
prayed that its application being IA No. 11702/2007 under Order 39 Rules 1 & 2 CPC
read with Section 151 CPC be allowed and the Respondents be restrained from using
the impugned Trade Mark/Label (i.e. MICO) or any other trade mark/label identical with
or deceptively similar to the Appellant‟s mark in relation to lubricants/petroleum
products, engine oil, and gear oil, etc. till the disposal of the suit
2. The learned Single Judge has dismissed the Appellants‟ application under Order
th
39 Rules 1 & 2 CPC and vacated the ex parte ad interim order of injunction dated 9
th
October, 2007. The Single Judge in his order dated 7 February 2007 has concluded
that the Appellant/plaintiff has concealed and suppressed material facts and further that
the ingredients of passing off as per settled principles are prima facie not established in
the present case.
3. Mr. Bansal, learned counsel for the Appellant, contended that the Single Judge
failed to appreciate that the Appellant was a prior user of the Trade Mark “MICO”
(hereinafter refers as „the said mark‟). He stated that the Appellant has been using the
mark since 1960 and in 1985, the said mark had been registered in its favour for
lubricants. He further contended that the defendant who had been using the Trade
Mark MICO for its Spark Plugs earlier had only in February 2007 commenced using the
said mark for lubricants. He stated that there is evidence to show extensive
advertisements by the Appellant for lubricants and it was impermissible for the
Respondents to venture into marketing of lubricants with the mark which was being
FAO (OS) 146/2008 Page 2 of 8
used by the Appellant. He further submitted that the learned Single Judge has
erroneously reached the findings of suppression and on that basis, rejected the relief
which the Appellant was very much entitled to.
4. With regard to the findings of the Single Judge that the Appellant had not taken
out any search report, Mr. Bansal submitted that the same would apply to the
Respondent inasmuch as a search could have been done by the Respondent also,
which would have revealed that the Appellant‟s trade mark for lubricants had been
registered long before.
5. Mr. Bansal placed reliance on judgments in Yash Arora vs. Tushar Enterprises
& Ors. 2008 II AD (Delhi) 165, Shri Swaran Singh Trading as Appliances Emporium
vs. M/s. Usha Industries (India) and Anr. 1986 PTC 287, N.R. Dongre and Ors. Vs.
Whirlpool Corporation and Ors. AIR 1995 Delhi 300 and Laxmikant V. Patel vs.
Chetanbhat Shah and Anr. AIR 2002 SC 275. Mr. Bansal submitted that it may be
permissible for Respondents to use the said trade mark for products other than
lubricants for which the Appellant had a registered trade mark.
6. Mr. Sethi submitted that the Appellant had no prima facie case in its favour and
the Appellant had approached this Court with unclean hands as it had suppressed and
concealed facts. Mr. Sethi further submitted that the bona fides of the Appellant are
suspect as would be apparent from the absence of any advertisement or sales figure.
He also referred to the invincible representation of the Respondent No.2 and in this
FAO (OS) 146/2008 Page 3 of 8
connection he relied on paras 1 and 2 of the written statement. The said paras are
reproduced hereinbelow for ready reference.
“ Defendant No.2 – Motor Industries Co. Limited is a company
incorporated under the Companies Act, 1913 on November 12,
1951. Immediately upon incorporation, Defendant No.2 Company
has adopted/invented „MICO‟ (an acronym of its corporate name)
and for nearly 60 years it has continuously been using MICO as its
distinctive trade mark in respect of all the products
manufactured/marketed by it. Defendant No.2 Company is inter
alia engaged in the business of manufacturing and marketing of
diverse automotive products including spark plugs, fuel injection
equipment, filter and filter elements, fan belts, special purpose
machines, auto electrical products, hydraulic and pneumatic
equipment portable electric power tools packaging machines, car
audio systems and security systems. Since incorporation,
Defendant No.2 Company is the market leader in automotive
ancillary products and in most of the products
manufactured/marketed by it for e.g. spark plugs etc., there is no
competition at all for Defendant No.2 Company. The annual
turnover of Defendant No.2 Company for the year ended December
31, 2006 is Rs.3,783 crores and Defendant No.2 Company
employs about 11,000 personnel including a R&D team consisting
of 300 highly qualified Engineers/Technicians. Defendant No.2
Company has 4 manufacturing units, 18 Branch Offices and its
products are distributed in India through a distribution network of
over 4,000 Distributors and Authorized Wholesalers, located in
early city/town in India including, Defendant No.1, Defendant No.2
Company is a subsidiary of Robert Bosch BmBll, a world leader in
automotive parts market, having an annual turnover of over EURO
43.7 billion.
The invented mark “MICO” has been used by Defendant No.2
Company has been used its distinctive trade mark in respect of all
products manufactured by Defendant No.2 Company since early
1950s and as a result of continuous use, the trademark “MICO” has
obtained nationwide reputation and goodwill and has become
synonymous with Defendant No.2 Company and the products
bearing trade mark “MICO” are associated and recognized by the
general public and in trade circles with the name of Defendant No.2
Company, especially in relation to automotive products. Defendant
No.2 Company is the registered proprietor of the trade mark
“MICO” in a number of classes and first batch of registration has
FAO (OS) 146/2008 Page 4 of 8
been awarded to Defendant No.2 Company on July 13, 1953. A list
of the trademark registration obtained by Defendant No.2
Company in different classes has been filed as a document with the
written statement. In addition, Defendant No.2 Company has
registration for “MICO” in several countries since 1969 and the
same are valid and subsisting till date and a list of such
registrations are annexed as a document. In addition, in a number
of cases, Defendant No.2 has contested and succeeded in
protecting its right as the registered proprietor of “MICO” trade
mark. Orders passed in favour of Defendant No.2 Company are
filed as documents with the written statement. From the foregoing,
it is apparent that the trade mark “MICO” has been continuously
used since 1953 by Defendant No.2 Company and amongst the
general public and automotive trade circles, the trade mark “MICO”
is recognized as the trademark of Defendant No.2 Company.
Hence, MICO is a „well known trademark‟ in terms of Section 2(zg)
of Trade Mark Act, 1999 and Defendant NO.2 Company is the
„registered proprietor‟ (as defined in Section 2(w) of the Act) in
respect of the invented trademark “MICO‟ since 1950. The
Defendant No.2 Company incurs huge amounts on advertisement
of its products and the amounts spent in the lat five years are as
follows :
Year Amount in
Crores
(a) 2006 42.92
(b) 2005 33.46
(c) 2004 10.66
(d) 2003 6.23
(e) 2002 6.57”
.
7. Initially the Plaintiff pressed his case for injunction on ground of infringement, but
when the Defendants disclosed that they also held a registered Trade Mark in the word
MICO for the same class of goods, the Plaintiff pressed his case for injunction on the
ground of passing off. Undoubtedly, as held in cases cited by the Appellant, passing
off can succeed where infringement action fails. But we find that though the plea of
passing off had been taken generally in the plaint, the specific and particular allegations
of passing off are missing.
FAO (OS) 146/2008 Page 5 of 8
8. In fact, on perusal of the record we find that though the Appellant/plaintiff has
contended that it has been using the said mark for lubricants and petroleum products
since 1960, it has given no facts and figures to indicate the extent of its presence in the
market. There is also no material on record to show that the consumers were being
misled into believing that the products of Respondent No. 2 were those of the Appellant.
There is no material on record to indicate that the use of the mark by Respondent No. 2
in the field of lubricants was calculated to injure the business or goodwill of the
Appellant.
9. We also find that usage of the said mark by Respondent No. 2 for other
automotive products is prior to that of Appellant. The Respondent No. 2‟s mark is
extremely well known worldwide as also in India. Moreover, spark plugs and lubricants
are closely related goods and there cannot be a dispute as to this issue because they
have identical trading channels and the same class of consumers. In fact, it seems to us
that by adopting an identical mark, the Appellants had tried to pre-empt the legitimate
expansion of the Respondent No. 2 business under its trade mark to lubricants and
petroleum products, which the said Respondent was legally entitled to on the strength of
its existing extensive prior use of the word MICO for spark plugs.
10. In our view the Single Judge has rightly concluded that “ Prima facie, it appears
that when the trademark „MICO‟ is employed prospective customers would link it with
the defendant No.2 rather than the plaintiff. Therefore, because of the overwhelming
FAO (OS) 146/2008 Page 6 of 8
market share of the defendant No.2 in respect of automotive parts sold under the mark
„MICO‟, it would be difficult to accept, at this prima facie stage, that the defendant No.2
has misrepresented to prospective customers of the plaintiff with an object of injuring
the plaintiff‟s business or goodwill….”
11. The law cited by Mr. Bansal does not stipulate that if the plaintiff is a prior user of
the Mark for a specific class of goods, then he is entitled to an injunction as a matter of
right. In the case of passing off action between the two parties using the same mark,
the prior registration of the trade mark in different class of goods cannot be the sole
determinative factor for mandating an injunction. There are several factors to be taken
into account. In the present case as it has been found that the Respondent‟s use of the
mark is prior in time, even though the usage is for other allied and cognate goods, the
Appellant is not entitled to injunction on ground of passing off. The Hon‟ble Supreme
Court in catena of cases has held that passing off is an equitable remedy and the
Appellant can only be granted relief, if its conduct is fair, honest and if it has approached
the Court with clean hands.
12. We have perused the plaint and in particular paras 22 to 25. We find that the
case set out by the plaintiff in the plaint was that while the plaintiff is registered
proprietor of the Trade Mark MICO under Class IV which include lubricants, the
Defendant/Respondent No. 2 does not have any right to use the said mark in any
manner either in relation to lubricants or for any other specification of goods and
business. From the turnover of Respondent No. 2 and specially the wide and prior
FAO (OS) 146/2008 Page 7 of 8
usage of an invented word MICO for a cognate and allied products in the same
automotive sector, we find it difficult to believe that the Appellant did not know prior to
institution of its civil suit that the Respondent No. 2 had prior registration for diverse
automotive products and a specific subsequent registration for the same Mark for
lubricants and petroleum products. We are in agreement with the learned Single Judge
that the Appellant has concealed and suppressed material facts from this Court.
13. We are of the view that following the computerization of the Trade Mark
Registry, the court while considering grant of an ex parte injunction should normally
require the plaintiff to disclose whether a search has been carried out in the Trade Mark
Registry to ascertain whether the defendants had a registration in their favour in respect
of the mark in question and in respect of the goods and services. Insistence on such
disclosure would facilitate making of the required order in a suit for infringement or
passing off.
14. The present appeal is dismissed with costs of Rs.15,000/- (Rupees fifteen
thousand), Rs.7,500/- being paid to the respondents and Rs.7,500/- to the Delhi High
Court Legal Services Committee. Needless to say that our observations are prima facie
and would not prejudice either party at the stage of disposal of the suit.
[MANMOHAN]
Judge.
[MANMOHAN SARIN]
Judge.
April 4, 2008
rb
FAO (OS) 146/2008 Page 8 of 8
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO (OS) 146 OF 2008
Reserved on : March 28 , 2008.
% Date of Decision: April 4, 2008
# M/s Micolube India Limited ..... Appellant
! Through Mr. K.G. Bansal, Advocate.
versus
$ M/s Maggon Auto Centre ..... Respondent
^ Through Mr. Sandeep Sethi, Sr. Adv. With
Mr. Lakshay Sawhney and Mr. Apoorva
Kulkarni, Adv.
CORAM:
* HON'BLE MR. JUSTICE MANMOHAN SARIN
* HON'BLE MR. JUSTICE MANMOHAN
1. Whether Reporters of local papers may be allowed to see the judgment?
2. To be referred to the Reporter or not? YES
3. Whether the judgment should be reported in the digest? YES
J U D G M E N T
MANMOHAN, J:
1. The Appellant has filed the present appeal being FAO (OS) 146/2008 for setting
th
aside the order dated 7 February, 2008 passed by the learned Single Judge in IA no.
FAO (OS) 146/2008 Page 1 of 8
11702/2007 and 12433/2007 in CS (OS) No. 2015/2007. The Appellant has further
prayed that its application being IA No. 11702/2007 under Order 39 Rules 1 & 2 CPC
read with Section 151 CPC be allowed and the Respondents be restrained from using
the impugned Trade Mark/Label (i.e. MICO) or any other trade mark/label identical with
or deceptively similar to the Appellant‟s mark in relation to lubricants/petroleum
products, engine oil, and gear oil, etc. till the disposal of the suit
2. The learned Single Judge has dismissed the Appellants‟ application under Order
th
39 Rules 1 & 2 CPC and vacated the ex parte ad interim order of injunction dated 9
th
October, 2007. The Single Judge in his order dated 7 February 2007 has concluded
that the Appellant/plaintiff has concealed and suppressed material facts and further that
the ingredients of passing off as per settled principles are prima facie not established in
the present case.
3. Mr. Bansal, learned counsel for the Appellant, contended that the Single Judge
failed to appreciate that the Appellant was a prior user of the Trade Mark “MICO”
(hereinafter refers as „the said mark‟). He stated that the Appellant has been using the
mark since 1960 and in 1985, the said mark had been registered in its favour for
lubricants. He further contended that the defendant who had been using the Trade
Mark MICO for its Spark Plugs earlier had only in February 2007 commenced using the
said mark for lubricants. He stated that there is evidence to show extensive
advertisements by the Appellant for lubricants and it was impermissible for the
Respondents to venture into marketing of lubricants with the mark which was being
FAO (OS) 146/2008 Page 2 of 8
used by the Appellant. He further submitted that the learned Single Judge has
erroneously reached the findings of suppression and on that basis, rejected the relief
which the Appellant was very much entitled to.
4. With regard to the findings of the Single Judge that the Appellant had not taken
out any search report, Mr. Bansal submitted that the same would apply to the
Respondent inasmuch as a search could have been done by the Respondent also,
which would have revealed that the Appellant‟s trade mark for lubricants had been
registered long before.
5. Mr. Bansal placed reliance on judgments in Yash Arora vs. Tushar Enterprises
& Ors. 2008 II AD (Delhi) 165, Shri Swaran Singh Trading as Appliances Emporium
vs. M/s. Usha Industries (India) and Anr. 1986 PTC 287, N.R. Dongre and Ors. Vs.
Whirlpool Corporation and Ors. AIR 1995 Delhi 300 and Laxmikant V. Patel vs.
Chetanbhat Shah and Anr. AIR 2002 SC 275. Mr. Bansal submitted that it may be
permissible for Respondents to use the said trade mark for products other than
lubricants for which the Appellant had a registered trade mark.
6. Mr. Sethi submitted that the Appellant had no prima facie case in its favour and
the Appellant had approached this Court with unclean hands as it had suppressed and
concealed facts. Mr. Sethi further submitted that the bona fides of the Appellant are
suspect as would be apparent from the absence of any advertisement or sales figure.
He also referred to the invincible representation of the Respondent No.2 and in this
FAO (OS) 146/2008 Page 3 of 8
connection he relied on paras 1 and 2 of the written statement. The said paras are
reproduced hereinbelow for ready reference.
“ Defendant No.2 – Motor Industries Co. Limited is a company
incorporated under the Companies Act, 1913 on November 12,
1951. Immediately upon incorporation, Defendant No.2 Company
has adopted/invented „MICO‟ (an acronym of its corporate name)
and for nearly 60 years it has continuously been using MICO as its
distinctive trade mark in respect of all the products
manufactured/marketed by it. Defendant No.2 Company is inter
alia engaged in the business of manufacturing and marketing of
diverse automotive products including spark plugs, fuel injection
equipment, filter and filter elements, fan belts, special purpose
machines, auto electrical products, hydraulic and pneumatic
equipment portable electric power tools packaging machines, car
audio systems and security systems. Since incorporation,
Defendant No.2 Company is the market leader in automotive
ancillary products and in most of the products
manufactured/marketed by it for e.g. spark plugs etc., there is no
competition at all for Defendant No.2 Company. The annual
turnover of Defendant No.2 Company for the year ended December
31, 2006 is Rs.3,783 crores and Defendant No.2 Company
employs about 11,000 personnel including a R&D team consisting
of 300 highly qualified Engineers/Technicians. Defendant No.2
Company has 4 manufacturing units, 18 Branch Offices and its
products are distributed in India through a distribution network of
over 4,000 Distributors and Authorized Wholesalers, located in
early city/town in India including, Defendant No.1, Defendant No.2
Company is a subsidiary of Robert Bosch BmBll, a world leader in
automotive parts market, having an annual turnover of over EURO
43.7 billion.
The invented mark “MICO” has been used by Defendant No.2
Company has been used its distinctive trade mark in respect of all
products manufactured by Defendant No.2 Company since early
1950s and as a result of continuous use, the trademark “MICO” has
obtained nationwide reputation and goodwill and has become
synonymous with Defendant No.2 Company and the products
bearing trade mark “MICO” are associated and recognized by the
general public and in trade circles with the name of Defendant No.2
Company, especially in relation to automotive products. Defendant
No.2 Company is the registered proprietor of the trade mark
“MICO” in a number of classes and first batch of registration has
FAO (OS) 146/2008 Page 4 of 8
been awarded to Defendant No.2 Company on July 13, 1953. A list
of the trademark registration obtained by Defendant No.2
Company in different classes has been filed as a document with the
written statement. In addition, Defendant No.2 Company has
registration for “MICO” in several countries since 1969 and the
same are valid and subsisting till date and a list of such
registrations are annexed as a document. In addition, in a number
of cases, Defendant No.2 has contested and succeeded in
protecting its right as the registered proprietor of “MICO” trade
mark. Orders passed in favour of Defendant No.2 Company are
filed as documents with the written statement. From the foregoing,
it is apparent that the trade mark “MICO” has been continuously
used since 1953 by Defendant No.2 Company and amongst the
general public and automotive trade circles, the trade mark “MICO”
is recognized as the trademark of Defendant No.2 Company.
Hence, MICO is a „well known trademark‟ in terms of Section 2(zg)
of Trade Mark Act, 1999 and Defendant NO.2 Company is the
„registered proprietor‟ (as defined in Section 2(w) of the Act) in
respect of the invented trademark “MICO‟ since 1950. The
Defendant No.2 Company incurs huge amounts on advertisement
of its products and the amounts spent in the lat five years are as
follows :
Year Amount in
Crores
(a) 2006 42.92
(b) 2005 33.46
(c) 2004 10.66
(d) 2003 6.23
(e) 2002 6.57”
.
7. Initially the Plaintiff pressed his case for injunction on ground of infringement, but
when the Defendants disclosed that they also held a registered Trade Mark in the word
MICO for the same class of goods, the Plaintiff pressed his case for injunction on the
ground of passing off. Undoubtedly, as held in cases cited by the Appellant, passing
off can succeed where infringement action fails. But we find that though the plea of
passing off had been taken generally in the plaint, the specific and particular allegations
of passing off are missing.
FAO (OS) 146/2008 Page 5 of 8
8. In fact, on perusal of the record we find that though the Appellant/plaintiff has
contended that it has been using the said mark for lubricants and petroleum products
since 1960, it has given no facts and figures to indicate the extent of its presence in the
market. There is also no material on record to show that the consumers were being
misled into believing that the products of Respondent No. 2 were those of the Appellant.
There is no material on record to indicate that the use of the mark by Respondent No. 2
in the field of lubricants was calculated to injure the business or goodwill of the
Appellant.
9. We also find that usage of the said mark by Respondent No. 2 for other
automotive products is prior to that of Appellant. The Respondent No. 2‟s mark is
extremely well known worldwide as also in India. Moreover, spark plugs and lubricants
are closely related goods and there cannot be a dispute as to this issue because they
have identical trading channels and the same class of consumers. In fact, it seems to us
that by adopting an identical mark, the Appellants had tried to pre-empt the legitimate
expansion of the Respondent No. 2 business under its trade mark to lubricants and
petroleum products, which the said Respondent was legally entitled to on the strength of
its existing extensive prior use of the word MICO for spark plugs.
10. In our view the Single Judge has rightly concluded that “ Prima facie, it appears
that when the trademark „MICO‟ is employed prospective customers would link it with
the defendant No.2 rather than the plaintiff. Therefore, because of the overwhelming
FAO (OS) 146/2008 Page 6 of 8
market share of the defendant No.2 in respect of automotive parts sold under the mark
„MICO‟, it would be difficult to accept, at this prima facie stage, that the defendant No.2
has misrepresented to prospective customers of the plaintiff with an object of injuring
the plaintiff‟s business or goodwill….”
11. The law cited by Mr. Bansal does not stipulate that if the plaintiff is a prior user of
the Mark for a specific class of goods, then he is entitled to an injunction as a matter of
right. In the case of passing off action between the two parties using the same mark,
the prior registration of the trade mark in different class of goods cannot be the sole
determinative factor for mandating an injunction. There are several factors to be taken
into account. In the present case as it has been found that the Respondent‟s use of the
mark is prior in time, even though the usage is for other allied and cognate goods, the
Appellant is not entitled to injunction on ground of passing off. The Hon‟ble Supreme
Court in catena of cases has held that passing off is an equitable remedy and the
Appellant can only be granted relief, if its conduct is fair, honest and if it has approached
the Court with clean hands.
12. We have perused the plaint and in particular paras 22 to 25. We find that the
case set out by the plaintiff in the plaint was that while the plaintiff is registered
proprietor of the Trade Mark MICO under Class IV which include lubricants, the
Defendant/Respondent No. 2 does not have any right to use the said mark in any
manner either in relation to lubricants or for any other specification of goods and
business. From the turnover of Respondent No. 2 and specially the wide and prior
FAO (OS) 146/2008 Page 7 of 8
usage of an invented word MICO for a cognate and allied products in the same
automotive sector, we find it difficult to believe that the Appellant did not know prior to
institution of its civil suit that the Respondent No. 2 had prior registration for diverse
automotive products and a specific subsequent registration for the same Mark for
lubricants and petroleum products. We are in agreement with the learned Single Judge
that the Appellant has concealed and suppressed material facts from this Court.
13. We are of the view that following the computerization of the Trade Mark
Registry, the court while considering grant of an ex parte injunction should normally
require the plaintiff to disclose whether a search has been carried out in the Trade Mark
Registry to ascertain whether the defendants had a registration in their favour in respect
of the mark in question and in respect of the goods and services. Insistence on such
disclosure would facilitate making of the required order in a suit for infringement or
passing off.
14. The present appeal is dismissed with costs of Rs.15,000/- (Rupees fifteen
thousand), Rs.7,500/- being paid to the respondents and Rs.7,500/- to the Delhi High
Court Legal Services Committee. Needless to say that our observations are prima facie
and would not prejudice either party at the stage of disposal of the suit.
[MANMOHAN]
Judge.
[MANMOHAN SARIN]
Judge.
April 4, 2008
rb
FAO (OS) 146/2008 Page 8 of 8