@JUDGMENTTAG-ORDER
V.S. Aggarwal, J.@mdashThey admit that they are brothers but love has been lost so much between them that no suggestion to patch the disputes has found favor.
2. plaintiff (Auto Pex Motor Co.) is a partnership firm consisting of two partners Ramesh Chand Sethi and Kapil Sethi. It is engaged in the business of manufacturing and marketing of gaskets (auto goods). It is the sole proprietor of trade mark "Master Label" in relation to gaskets. During the course of business the plaintiff also started using the trade mark Super Master and Gold Master. The predecessors of the plaintiff had adopted trade mark "Master" in relation to gaskets in the year 1970 and continuously used the same up to 24th March, 1994. The trade mark was assigned to the plaintiff vide deed of assignment of 24th August, 1994. The plaintiff has continuously been using the said trade mark. M/s Auto Pex Sales India was the predecessor of the plaintiff.
3. The plaintiff in order to acquire statutory rights for the trade mark Master obtained registration and filed application for its registration. The trade mark was initially registered int eh name of Auto Pex Sales. After it was assigned to the plaintiff it filed an application for bringing the said registration in the name of Chandermohan Sethi and Ramesh Chand Sethi, partners of the plaintiff. Plea has been raised that Chandermohan has since retired from the partnership and Kapil Sethi became the parterre in the firm from 1st January, 1999. An application was filed for recording the said assignment. The plaintiff claims that it has been using the trade mark "Master" label for a long duration. The defendant is engaged in the business of manufacture and marketing the gaskets and have adopted the trade mark Super Master label. Defendant no. 1 is the proprietor the defendant no.2. The said label "Super Master" label has only been adopted recently by the defendants. The defendant even filed a criminal complaint against the plaintiff u/s 78 and 79 of the Trade and Merchandise Marks Act, 1958. It is alleged that the defendant cannot use a similar trade mark Super Master Label and hence the present suit has been filed to restrain the defendants, his agents or servants from manufacturing, selling, offering for sale the gaskets under the trade mark Super Master label and similarly it is prayed that defendants should be restrained from selling, offering for sale, advertising or displaying articles with the same name (Super Master label).
4. During the pendency of the civil suit is 4963/2001 has been filed seeking ad interim injunction on the above lines. By this order the said interim application is proposed to be disposed.
5. In the written statement filed along with the reply to the above said interim application the defendants have contested the matter. IT is asserted that plaintiff does not have any registration in their name. They have only applied for registration of the trade mark. The plaintiff is deliberately alleged to have not disclosed his relationship with defendant no.1. The trade mark "Master" belonged to the father of defendant no.1 and Shri R C Sethi. The five sons of the father of defendant no.1 are using the trade mark Master in same form since the very beginning. There is misrepresentation and concealment of facts by the plaintiff. The plaintiff is alleged to be only targeting the defendant by filing the present suit. It is pleaded that in the year 1973 the word Master was used for the first time by Auto Pex Sales and Agencies by Inder Sain Sethi, R C Sethi, and C M Sethi. The trade mark Master was registered in 1973. In the year 1976 C M Sethi started his proprietorship business under the name Auto Pex Motor Co. Master Gaskets. Shri Ramesh Sethi is one of the partners of the plaintiff had signed several invoices issued by Sethi brothers. In this process, the defendant no.1 had also started using the trade mark Super Master label. It is stated to be in no way infringing the right of the plaintiff.
6. It is not in controversy that trade mark Master had been registered in the name of Auto Pex Sales and Agencies. Inder Sain Sethi, R C Sethi and C M Sethi seemingly were the persons concerned with the said firm. Their names appear in the trade mark journal indicating that they have been suing the same since 1st February, 1970.
7. plaintiffs claim is that vide the deed of assignment it had been so assigned to the plaintiff. The copy of the deed of assignment is dated 24th August, 1994. The document referred to above clearly indicated that M/s Auto Pex Sales and Agencies through its partners R C Sethi had assigned to C M Sethi (M/s Auto Pex Motor Co.) the exclusive use and benefits of the trade mark along with the goodwill. The deed of assignment is signed by Sethi brothers, to which defendant no.1 Deepak Sethi is the proprietor. In other words, defendant no.1 even witnessed the assignment deed.
8. The plea Therefore of the defendants that in fact the said trade mark was a family trade mark and on the death of their father he can continue to use the said trade mark Therefore must fail for purposes of the present order.
9. Reference was made to the fact that defendant no.1 had filed the criminal complaint against the plaintiff. Indeed no opinion need be expressed in this regard. Suffice to say that the court will take care and pass appropriate orders. However, perusal of the criminal complaint, copy of which is on record certainly shows that therein defendants have not asserted that it was the ancestral property. On the contrary, plea has been raised that it is their exclusive property. At this stage, Therefore, much importance cannot be given to the said criminal complaint but once again repeating that nothing said herein should be taken to debar the said court from acting in accordance with law.
10. On behalf of defendant no.1 it was alleged that there is no assignment registered in favor of the plaintiff and Therefore he cannot claim exclusive use of the said trade mark. The answer in this regard would be provided by the decision of this court in the case of
".....It is true that the plaintiff''s application for getting transferred the registered trade mark in its name in the office of the Registrar is still pending but that does not debar the plaintiff to protect the violation of the aforesaid trade mark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima face, clear to me that during the interregnum period when the application for the plaintiff is kept pending for consideration by the Registrar of Trade Marks the dishonest persons cannot be allowed to make use of the said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff. Fortunately there are two judgments of two High Courts supporting this view....."
11. One finds in respectful agreement with the said view and Therefore it cannot be termed that the plaintiff does not have the right to file the said suit.
12. Yet another plea vehemently pressed was that it was a family trade name and after the death of the father, brothers were using the said name in different forms. Before proceeding further one fan conveniently take advantage and refer to the decision of this court in the case of Rajni Dua vs. Bhushan Kumar 1998 PTC (18) 676 this court held that in such like family disputes it is not the rule that no injunction order can be issued. Reverting back to the facts as noted above it is obvious that the said trade mark had been assigned and the defendant no.1 was the witness to the said document. The result would be that there will be no bar in case there is a right of the plaintiff that can be issued.
13. Perusal of the trade marks used by the plaintiff and by defendant no. 1 indicate that not only there is a phonetic similarity between the names and the labels used by the plaintiff and Super Master label being used by the defendant but the photographs also indicate positive similarity in this regard. Consequently it must be held that the plaintiff has prima facie case. The balance of convenience automatically would be in favor of the plaintiff because it is the plaintiff who is using the said trade mark much before the user by the defendants.
14. For these reasons during the pendency of the present suit the defendants, his servants or representatives are restrained from manufacturing, selling or offering for sale or advertising the gaskets bearing the trade mark Super Master label.
15. Rejoinder, if any, may be filed within four weeks.
16. List it for framing of issues on 22nd February, 2002.
