Ultra Tech Cement Limited vs Alaknanda Cement Pvt.Ltd. And ... on 28 June, 2011 Bench: S. J. Kathawalla 1 mst IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.1183 OF 2009 IN SUIT NO.743 OF 2009 Ultra Tech Cement Limited Plaintiff versus Alaknanda Cement Pvt.Ltd. and another Defendants Mr.Veerendra Tulzapurkar, Sr.Counsel a/w Mr.Jamsandekar i/by India Law Services for plaintiff. Mr.D.D.Madon, Sr.Counsel a/w Mr.Hemang Engineer i/by Gordhandas & Fozdar for defendants. CORAM : S.J.KATHAWALLA, J. DATE OF RESERVING THE JUDGMENT : 4th March 2011 DATE OF PRONOUNCING THE JUDGMENT : 28th June 2011 JUDGMENT : 1. The issue to be decided in the above Notice of Motion is whether the defendants by using the trade mark "ULTRA TUFF" are guilty of infringing the plaintiff's trade mark "ULTRATECH CEMENT The Engineer's Choice" and/or are guilty of passing off their goods as that of the plaintiff. 2. Briefly set out hereinbelow are the relevant facts in the matter. 3. The plaintiff is a company carrying on the business, inter alia, in the field of manufacturing and marketing of `Cement' and other allied products. The first defendant is a private limited company carrying on the 2 business of goods, inter alia, Cement and building materials. The second defendant is a sole proprietary concern operating as a licensee of the first defendant and carrying on business of goods, inter alia, of cement products. 4. The plaintiff is the registered proprietor of trade mark "ULTRATECH CEMENT The Engineer's Choice" registered under number 1326528 in respect of `cement of all types, building materials (non-metallic), non- metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable building, monuments, not of metal" specified in Class-19 of the Fourth Schedule of the Trade Marks Rules, 2002 (`the Rules') under the Trade Marks Act, 1999 (`The Act') and the same is valid and subsisting. 5. According to the plaintiff, the words "ULTRATECH CEMENT" is a distinctive trade mark forming part of the corporate name, trade name, trade style and business name of the plaintiff. The plaintiff's cement bags have a colour scheme wherein the trade mark "ULTRATECH CEMENT The Engineer's Choice" is depicted in bold black font, having a distinctive get up, lay out and colour scheme and placement of the ISI certification logo appearing on one side of the cement bag. 6. According to the plaintiff, they are using the said trade mark and corporate name, trade name openly, continuously and extensively since the year 2004 in India in respect of "cement". The products sold under the registered trade mark "ULTRATECH CEMENT The Engineer's Choice" consists of the cement and other agnate and cognate goods. According to the plaintiff it has spent considerable time and amount to popularize the said trade mark "ULTRATECH CEMENT The Engineer's Choice". The said trade mark has been used by the plaintiff on an extensive scale in respect of cement. The cement sold, supplied and/or offered for sale by the plaintiff dealing with the trade mark "ULTRATECH CEMENT The Engineer's Choice" has acquired a vast and enviable reputation by virtue 3 of its intrinsic quality and superiority. The said trade mark has therefore come to be associated solely and exclusively with the plaintiff amongst traders and members of the public. By virtue of the popularity of the goods of the plaintiff, there is considerable care and skill exercised by them in manufacturing and marketing the same and the trade mark "ULTRATECH CEMENT The Engineer's Choice" has become distinctive of the plaintiff's goods, which has come to be associated exclusively with the plaintiff, by the members of the industry, trade and public. It is submitted that during the course of the uninterrupted business, the said trade mark and trade name of the plaintiff has become well known in the trade and to the public at large, for the excellent quality and superiority of the goods. Consequently the plaintiff is solely and exclusively entitled to use the trade mark 'ULTRATECH CEMENT The Engineer's Choice" to the exclusion of others. A statement of sales turn over of the plaintiff's goods i.e. cement bearing trade mark 'ULTRATECH CEMENT The Engineer's Choice" for the years 2005-2006 to 2007-2008 and a statement of advertisement and publicity expenses incurred by the plaintiff during the said period duly certified by the plaintiff's Chartered Account is annexed and marked as Exhibit-C to the plaint. 7. According to the plaintiff, the plaintiff came across an advertisement in a daily local newspaper "SAKAL" dated 24th May 2008, published by the second defendant. The advertisement pertained to the requirement for "Dealers for Cement Sales in Pune and Surrounding Areas" and "Marketing Executives and Officers having experience of at least 3-4 years in cement sales" and depicted the mark "ULTRA TUFF CEMENT" in bold black. A copy of the said advertisement is annexed and marked as Exhibit-D to the plaint. According to the plaintiff, subsequently the plaintiff got hold of an almost identical product manufactured and sold by the defendant no.1 under the impugned mark/label "ULTRATUFF CEMENT" which mark is identical with and/or deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT The Engineer's Choice", used by the plaintiff in respect of cement. According to the 4 plaintiff with an ulterior motive to come as close as possible to the plaintiff's goods the gunny bag used by the defendants also has identical placement of its mark "ULTRATUFF CEMENT" with identical colour scheme of white and/or off-white and also the placement of impugned mark, font size of words "ULTRATUFF CEMENT", up to the minutest details of pale yellow strips appearing on extreme left and right sides of the gunny bags has been blatantly copied. Also the placement of the name and address of the defendant no.1 at the bottom of the gunny bag along with the quality "Portland Pozzolana Cement" placed on the top right is identical to the plaintiff's gunny bag. The placement of ISI certification logo on the defendants gunny bag also appears at an identical place as that of the plaintiff with an ISI number. It is thus submitted that the defendants motive is clearly to pass off their goods as that of the plaintiff's goods and trade upon the reputation and good will of the plaintiff. 8. According to the plaintiff, the first defendant has copied all the essential features of the plaintiff's registered trade mark. The words "ULTRATUFF CEMENT" are identical with and/or are deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT". The impugned trade mark is structurally, visually, phonetically and confusingly similar to the plaintiff's prior adopted and registered trade mark "ULTRATECH CEMENT" which is likely to cause confusion and/or association in the minds of the consumers with average intelligence and normal imperfect recollection, as to the source or origin of the goods. The defendants are, therefore, infringing on the plaintiff's registered trade mark and/or trying to pass off their goods and/or enabling others to pass off their goods as and for those of the plaintiff's goods. It is submitted that the use by the defendants of an identical label not only constitutes infringement of the plaintiff's registered trade mark but also the trade name/corporate name of the plaintiff company is being infringed. 9. According to the plaintiff, under the circumstances, by its letter 5 dated 28th May 2008, the plaintiff called upon the defendant no.2 to seize and desist from manufacturing, marketing, distributing, selling, offering for sale, advertising and/or howsoever dealing in cement products or any other products under the impugned mark "ULTRATUFF CEMENT" or any other logo deceptively similar to the plaintiff's registered trade mark "ULTRATECH CEMENT The Engineer's Choice" and/or to pass off or to enable others to pass off the defendants' products as and for the products of the plaintiff. The first defendant in its reply to the said notice through their advocate's letter dated 12th June 2008 denied the contentions contained in the plaintiff's letter dated 28th May 2008. The plaintiff through it's advocate sent a rejoinder letter dated 23rd June 2008 to the defendant no.1's letter dated 12th June 2008 and reiterated it's claims mentioned in the notice dated 28th May 2008. The first defendant by its advocate's letter dated 14th July 2008 once again denied the contentions raised by the plaintiff. The plaintiff thereafter filed the present suit and took out the above Notice of Motion No.1183 of 2009 seeking ad-interim and interim reliefs. By an order dated 20th July 2009, the application of the plaintiff for ad-interim relief was rejected. The Notice of Motion is now taken up for hearing and final disposal. 10. The defendants filed their affidavit-in-reply to the Notice of Motion dated 7th September 2009. According to the defendants, in or about July 2006 the defendant no.1 conceived and adopted the trade mark "ULTRATUFF CEMENT" in respect of all types of cement varieties i.e. Ordinary Portland Cement (also known as OP) and Portland Pozzolana Cement (PP or Fly Ash Based Cement). The defendant no.2 is a partnership firm and one of the directors of the defendant no.1 is a partner of defendant no.2 and defendant no.2 is using the said trade mark under the permission of defendant no.1. It is submitted that the goods as manufactured and marketed by the defendants are sold in gunny bags which bear a distinct design, get up and colour scheme which is totally new and novel. The trade mark "ULTRATUFF" is depicted in a distinctive manner and the word "ULTRA" is appearing above the word "TUFF" and 6 letter `T' of word `TUFF' is starting from the foot of letter `A" of the word `ULTRA'. The gunny bag bears the colour combination of red and black with a white background. 11. According to the defendants, the Notice of Motion taken out by the plaintiff deserves to be dismissed on the following grounds :- (i) The present suit is filed after an inordinate and unexplained delay. No reasons are given for not filing the present suit for more than one year after the plaintiff's advocates addressed correspondence to the defendants; (ii) The plaintiff has suppressed the fact that Grasim Industries is the registered proprietor under Registration No.1244745 of the trade mark "ULTRATECH CEMENT"; (iii) The plaintiff has suppressed the fact that the plaintiff is granted registration for the Trade Mark Type `Device'. The plaintiff is not granted registration as a `Word Mark' for the words "ULTRATECH CEMENT The Engineer's Choice"; (iv) The registration granted to the plaintiff does not confer any exclusive right to the plaintiff in the matter "ULTRA" and "ULTRATECH"; (v) The plaintiff's registered trade mark consists of several matters namely "ULTRATECH CEMENT The Engineer's Choice". The words contained in the plaintiff's trade mark namely "ULTRA" and "ULTRATECH" are separately registered by other proprietors; (vi) That in view of the provisions of Section 17(2) of the Trade Marks Act, 1999 ('the Act'), the registration granted to the plaintiff does not confer any exclusive right in the matter "ULTRA" and "ULTRATECH" which are forming only a part of the whole of the plaintiff's registered trade 7 mark; (vii) That the words "ULTRA" AND "ULTRATECH" are common to the trade and are otherwise of a non-distinctive character as is evident from the Search Report dated 7th April 2009 annexed at Exhibit-1 to the reply; (viii) That the word "ULTRA" or "ULTRATECH" has not acquired any distinctiveness qua the plaintiff's goods. The plaintiff's trade mark has not acquired any secondary significance and therefore, the plaintiff is not entitled to claim any monopoly rights in a trade mark which contains the word "ULTRA" or "ULTRATECH"; (ix) That the prefix "ULTRA" being a common word to the trade is a descriptive word and combination thereof with a descriptive word "TECH" that denotes technical is not distinctive of the plaintiff's goods; (x) That the word "ULTRA" itself stands registered under No. 700622 dated 5th March 1996 in respect of identical goods in the name of "Ultra Tile Private Limited" based in Chennai who claims to have used the same from 1st August 1993 and the trade mark "Ultratech" is registered under No.1322426 in the name of Rajiv Gupta who has claimed user from 6th November 1996. The date of the registration application by Rajiv Gupta is 29th November 2004 which is prior to the plaintiff's application date of 17th December 2004; (xi) That the trade marks "Ultracast" and "UltraBond Eco" are also registered trade marks which have been registered earlier and prior to the use by the plaintiff of its trade mark "ULTRATECH CEMENT The Engineer's Choice". The plaintiff has, therefore, adopted a trade mark, of which there is an owner, who had earlier made an assertion of ownership by registration or by user and hence the plaintiff cannot claim to be the proprietor of the trade mark; 8 (xii) The plaintiff has only copied somebody else's trade mark and therefore cannot claim to be the owner of or proprietor of the word "ULTRATECH CEMENT" and maintain an action of passing off. This contention of the defendants is supported by an unreported order of this Court (Coram : S.A.Bobde, J.), dated 21st/22nd April 2003 in Notice of Motion No.506 of 2003 in Suit No.550 of 2003 in the matter of Ayushakti Ayurved Pvt. Ltd. and others Vs. Hindustan Lever Limited; (xiii) That the plaintiff is not entitled to the relief of passing off as the defendants' trade mark is structurally, visually and phonetically different from the plaintiff's label. There is no similarity in the plaintiff's label and the plaintiff's gunny bags in which the cement is sold. 12. The defendants have further submitted that the sale of cement under the trade mark "ULTRATUFF" by the defendant no.1 for the period between 1.7.2006 and 31.3.2007 is Rs.1,40,19,788/-, for the period 2007-2008 is Rs.3,40,51,722/- and for the period 2008-2009 is Rs. 2,72,52,517/- and for the year 2009-2010 is Rs.2,08,59,304/-. The sale of cement by defendant no.2 for the year 2008-2009 is Rs.2,55,14,607/- and for the year 2009-2010 is Rs.4,26,83,567/-. The defendants have in support of their contentions relied on the certificates and statements of turn over as well as copies of bills/invoices which are annexed as Exhibits-3A to 3C, 4 and 5A to 5D to their affidavit-in-reply. The defendants have also submitted that they have incurred advertisement expenses for promoting the sale of cement under the trade mark "ULTRATUFF" to the tune of Rs.4.30 lakhs, Rs.6.70 lakhs, Rs.5,25 lakhs and Rs.5.46 lakhs for the years 2006-2007, 2007-2008, 2008-2009 and 2009-2010 respectively. The certificates issued by the Chartered Accountant of the defendants in respect thereof are annexed as Exhibits-6A to 6C and 7 to the affidavit-in-reply of the defendant no.1. The defendants have also relied on an additional representation made by them to the Trade Marks Registrar wherein the date of user of the trade mark 9 "ULTRATUFF CEMENT" is shown as 5th January 2007. It is submitted on behalf of the defendants that for the aforestated reasons the Notice of Motion be dismissed with costs. 13. The plaintiff filed an affidavit-in-rejoinder dated 12th June 2009, wherein they have denied/disputed the aforestated submissions advanced on behalf of the defendants. 14. Mr.Tulzapurkar, learned Senior Advocate appearing for the plaintiff, in rejoinder pointed out that the defendants have stated in paragraph 17 of their affidavit in reply that the defendant no.1 had conceived and adopted the trade mark "ULTRATUFF CEMENT" in the month of July 2006. The defendants have also stated that they have made an application for registration of the trade mark "ULTRATUFF CEMENT" on 18th March 2008. The application for registration of the trade mark "ULTRATUFF", made by the defendant is annexed to the reply at page 84. In the application for registration of the trade mark "ULTRATUFF", the defendants have claimed user of the impugned trade mark since 5th January 2007. The claim of user by the defendants is therefore different in paragraph 17 of the affidavit-in-reply and in the application made for registration of the trade mark "ULTRATUFF CEMENT". He further submitted that defendants have stated in their affidavit-in-reply that they are using the impugned trade mark "ULTRATUFF" since July 2006 and have produced the purported invoices to prove the same. The plaintiff has in the rejoinder pointed out that the invoices produced by the defendants are fabricated. Mr.Tulzapurkar took me through each and every invoice annexed to the reply and has pointed out how the defendants have subsequently added the word "ULTRATUFF" on copies of the bills/invoices relied upon by them. He has submitted that the defendants have not been honest with the Court and on this ground alone the plaintiff is entitled to the reliefs as sought for by them against the defendants. 10 15. Mr.Tulzapurkar further submitted that for deciding the question of deceptive similarity between two trade marks what is required to be considered by the Court are the essential features of the trade marks, and no microscopic examination is permitted nor any etymological meaning of the words used need to be considered. The Court has to consider the question from the point of view of an ordinary man of average intelligence. The words other than the one which form essential features are to be ignored. The essential features namely the word marks/trade marks "ULTRATECH" and "ULTRATUFF" are to be compared and as stated above, the same are phonetically, visually and structurally similar. Mr.Tulzapurkar submitted that considering the class of purchasers, there can be no doubt that there can be deception and/or confusion and/or there is likelihood of association. The plaintiff's registered trade mark having been fixed in the minds of the purchasers, is bound to be recalled by an unwary purchaser when he sees the impugned mark particularly in respect of identical goods. The purchaser is bound to be put in the state of wonderment if totally not confused or deceived. In support of these contentions Mr.Tulzapurkar relied on the decisions of this Court in case of James Chadwick & Bros. Ltd. Vs. The National Sewing Thread Co. Ltd. (AIR-1951-BOM-147) and M/s.Hiralal Prabhudas Vs. M/s.Ganesh Trading Co. (AIR-1984-BOM-218) and the decisions of the Apex Court in National Sewing Thread Co. Ltd. Chidambaram Vs. James Chadwick and Bros. (AIR-1953-SC-357) and Amritdhara Pharmacy Vs. Satya Deo Gupta (AIR-1963-SC-449). 16. Dealing with the contention of the defendants that in view of the provisions of section 17(2) of the Act the registration granted to the plaintiff does not confer any exclusive right in the matter of "ULTRA" and "ULTRATECH" which form only a part of the whole of the plaintiff's registered trade mark, Mr.Tulzapurkar has submitted that all that section 17 of the Act lays down is that the registration of a trade mark shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered, unless the part is a subject matter of a 11 separate application for registration or is separately registered or is distinctive. Sub section 2(a)(i) and 2(a)(ii) and sub section (b) of Section 17 of the Act show that the three things mentioned therein are disjunctive and not cumulative. In the present case, though the word "ULTRATECH" is not separately registered nor is the subject of a separate application, the same being distinctive, the case falls under sub section 2(b) of section 17. Hence, the defendants' contention that the plaintiff cannot maintain an action for infringement is unsustainable, firstly, for the reason that the essential features are required to be considered and secondly, the word "ULTRATECH" is distinctive. The fact that the plaintiff's mark is registered without any disclaimers or limitations, itself proves that the word "ULTRATECH" is a distinctive mark and the plaintiff has satisfied the criteria laid down in sections 9 and 11 of the said Act. Mr.Tulzapurkar in support of his contention relied on paragraph 35 of the decision of the learned Single Judge of Calcutta High Court in Three-N-Products Private Ltd. Vs. Emami Ltd; GA Nos.2951 and 3976 of 2007 and CS No.204 of 2007 decided on 26th August 2008 and relied upon by the defendants. It is therefore, submitted that the defendants reliance on section 17 of the Act is misplaced. 17. Mr.Tulzapurkar in response to the defendants contention that the word "ULTRA" is common to the trade and therefore there is no likelihood of deception or confusion, has submitted that it is now well established that mere presence of a mark in the register does not prove its user. The person relying on such trade marks having common element is required to establish extensive user. The defendants have failed to prove the extensive user of the mark containing the word "ULTRA". In support of this submission Mr.Tulzapurkar has relied on the decision of the Apex Court in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd. (AIR-1960-SC-142) and the decisions of this Court in Pidilite Industries Limited Vs. S.M.Associates 2004(28)-PTC-193 and M/s.D.R.Cosmetics Pvt.Ltd. Vs. J.R.Industries (AIR-2008-BOM-122). Mr.Tulzapurkar has further submitted that the defendants themselves 12 have applied for registration of the impugned trade mark containing the word "ULTRATUFF". The defendants are therefore now estopped from contending that the plaintiff's mark containing the word "ULTRATECH" is descriptive or common to the trade. In support of this submission he has laid reliance on the decision of Automatic Electric Ltd. Vs. R.K.Dhawan (1999-PTC-81) which decision was approved by a Division Bench of the Delhi High Court in the case of Indian Hotels Co. Ltd. Vs. Jiva Institute of Vedic Science and Culture (MIPR 2008(3)-0082). 18. Mr.Tulzapurkar has next submitted that the plaintiff has established the reputation of its mark. The plaintiff by placing the figures pertaining to sales and advertisement expenses in respect of its trade mark "ULTRATECH" has established the reputation of its mark. The plaintiff's case for passing off is based on the deception and confusion caused by the impugned trade mark of which the word "ULTRATUFF" forms an essential part and which is deceptively similar to the plaintiff's trade mark of which the essential feature is the word "ULTRATECH", both the essential features being very close to each other. The goods are ordered with reference to the word marks. The defendants contention that the gunny bags in which cement is sold by the plaintiff and the defendants are different and therefore there is no question of passing off, is unsustainable. Mr.Tulzapurkar has further submitted that the defendants are the subsequent adopter of the impugned mark as their application for registration shows that the mark is used since 5th January 2007 i.e. almost two years after the plaintiff started using its mark. The defendants were aware of the plaintiff's mark and adopted the impugned mark with full knowledge and once the impugned mark is found to be similar, then the defendants cannot rely on the user made after knowledge of the plaintiff's mark. It is the defendants' case that they have adopted the impugned mark after full inquiry. Thus, the defendants adopted the mark with full knowledge of the plaintiff's mark and therefore cannot raise any plea in equity. In support of this submission Mr.Tulzapurkar has relied on a decision of the Division Bench of this Court in the case of Bal Pharma 13 Ltd. Vs. Centaur Laboratories Pvt. Ltd. 2002(24)-PTC-226 (Bom)(DB). 19. Mr.Tulzapurkar has next submitted that the defendants contention that the plaintiff has copied somebody else's mark is also not sustainable. Firstly, the plaintiff is the registered proprietor of the trade mark. As held by this Court in case of Podar Tyres Vs. Bedrock Sales Corporation Limited (AIR-1993-BOM-237), the validity of registration cannot be raised at this stage. Secondly, even if the mark "ULTRATECH" is registered in the name of Rajiv Gupta, the same is in respect of Plywood, Block Boards, Flush Doors etc. which goods are different from the goods for which the plaintiff's mark is registered. Thirdly, the registration of the mark in the name of Rajiv Gupta cannot be a defense to the plaintiff's action both for infringement and passing off against the defendants. The effect of registration in the name of Rajiv Gupta is that the plaintiff cannot complain of infringement against Rajiv Gupta in view of the provisions of Section 30(e) of the Act. The registered proprietor has a right to prevent any other person from using a similar mark. 20. Mr.Tulzapurkar has further submitted that there is no equity in favour of the defendants. The invoices produced by the defendants are fabricated as is clear from the copies annexed at pages 56 to 71 of the affidavit-in-reply. The word "ULTRATUFF" is superimposed on the said invoices. It is pertinent to note that the certificate annexed at page 72 does not show the advertisement expenses incurred in respect of the goods sold under the impugned mark. Firstly, the said certificate is silent as to the mark for which the expenses are incurred. Secondly, the said expenses cannot be in respect of the impugned mark as the said figures are for the period from July 2006 when on the defendants own showing, their user in the application for registration is from January 2007. As the defendants have come to the Court with fabricated documents, they are not entitled to raise any plea in equity so as to avoid an injunction being granted. Mr.Tulzapurkar in support of this submission has relied on the decision of the Apex Court in case of Gujarat Bottling Vs. Hindustan 14 Coca Cola (AIR-1995-SC-2372). 21. I have considered the rival submissions advanced on behalf of the plaintiff as well as the defendants and the case law cited by the parties. From Exhibit-A to the plaint at page 24 it is clear that the plaintiff's trade mark "ULTRATECH CEMENT The Engineer's Choice" was registered as a label mark on 17th December 2004 and that the said trade mark was used by the plaintiff since 31st October 2004. Exhibit-C to the plaint is the copy of certificate issued by the Chartered Accountant of the plaintiff wherein it is certified that the plaintiff M/s.Ultra Tech Cement Limited has incurred the following amounts towards advertisement expenses for the years 2005-2006 to 2007-2008 : Year Amount (Rs. Crs.) 2005-2006 37.46 2006-2007 62.23 2007-2008 75.62 It is further certified by the Chartered Accountant of the plaintiff that following are the sales volume in Million Metric Tonnes and Turnover in crores of the plaintiff for the years 2005-2006 to 2007-2008. Year Sales Volume Turnover (Million MT) (Rs.Crs.) 2005-2006 15.55 3299.45 2006-2007 17.68 4910.52 2007-2008 17.11 5509.22 The defendants have submitted that the claim of the plaintiff that they have been using the mark "ULTRATECH CEMENT The Engineer's Choice" since 31st October 2004 is not correct. However, it is established from the certificate issued by the Chartered Account of the plaintiff that the plaintiff is selling the cement under the brand name "ULTRATECH 15 CEMENT The Engineer's Choice" at least from the year 2005. 22. The defendant no.1 in its affidavit-in-reply dated 25th April 2009 has alleged that it is manufacturing and selling the cement under the trade mark "ULTRATUFF CEMENT" since July 2006. However, in the application/representation dated 18th March 2008 (Exhibit-9 to the affidavit-in-reply of the defendants) the date of user of the mark "ULTRATUFF CEMENT" is shown as 5th January 2007. The plaintiff has relied on the certificates issued by the Chartered Accountant of the company setting out the cement sales figures of the company for the financial years 2006-2007 to 2008-2009. All the certificates issued by the Chartered Accountant in respect of the defendant no.1 are dated 25th April 2009. The Chartered Accountant of the defendant no.2 has also issued a certificate dated 24th April 2009 certifying the sales figures during the period 1.6.2008 to 31.3.2009. Admittedly the defendant no.1 is also manufacturing cement under the brand name "SURYA" from the year 1999-2000. However, in the said certificates it is no where mentioned that the sales figures as well as advertisement expenditure shown in the certificates, issued by the Chartered Account pertain to "ULTRATUFF CEMENT" and not to "SURYA CEMENT". In fact in support of the contention that the defendant no.1 started manufacturing and selling "ULTRATUFF CEMENT" since July 2006, the defendant no.1 in paragraph 30 of its affidavit-in-reply has stated "hereto annexed and marked as "Exhibit 5A to Ex.5P" are bill copies having reference to the Trade Mark "ULTRATUFF" of defendant no.1." A perusal of Exhibits 5A to 5P shows that the said invoices are fabricated and the word "ULTRATUFF" is superimposed on the said invoices. The plaintiff has pointed out in its affidavit-in-rejoinder that the said bills/invoices relied upon by the defendants are fabricated. The defendants having realized that they have alleged in their affidavit-in-reply that they started using the mark "ULTRATUFF" since July 2006, whereas in their application for registration of the trade mark "ULTRATUFF CEMENT" dated 18th March 2008 they have admitted the user of the impugned trade mark only since 16 5th January 2007, made an application to the trade mark registry on 11th September 2009 for carrying out the correction in their application by rectifying the date of user from 7th January 2007 to 6th July 2006. Since it was obvious from the bills annexed to the affidavit-in-reply at Exhibits-5A to 5P that the word "ULTRATUFF" was subsequently added on the copies of the bills retained by the defendant no.1, this Court directed the defendant no.1 to produce before this Court all their bill books. Upon perusal of the said bill books this Court noted that the defendant no.1 has on every bill added the word "ULTRATUFF" before the word "CEMENT". This Court therefore, by its order dated 27th January 2011 directed the defendants to file an affidavit setting out the brand names under which the defendants have manufactured and sold cement/clinker since the year 1996 and as to who has overwritten "ULTRATUFF" in the column "Description and Specifications of the Goods" in the carbon copies of invoices of defendant no.1, at what stage the said overwriting was effected and whether the original invoices also bear such overwriting. In view thereof, an affidavit dated 16th February 2011 of Shri Kamal Nayan Poddar, Director of defendant no.1 is filed. Paragraphs 4 to 7 of the said affidavit are reproduced hereunder :- "4. I say that Defendant no.1 used to resell cement manufactured by large cement companies. Thereafter, sometime in 1999-2000, Defendant No.1 also started manufacturing and selling cement under the name "SURYA". From the year 2006-2007, Defendant no.1 started manufacturing and selling cement under the name "Ultra Tuff" cement. 5. For the purpose of filing this affidavit, I enquired with the office staff of Defendant No.1 regarding the issuance of bills/invoices. I was informed that initially, on the bills/invoices issued by the office staff of Defendant No.1, the description of goods was mentioned only as cement. Inadvertently, this practice of not stating the brand name on the bills/ invoices continued even after Defendant No.1 started selling cement under the name "Ultra Tuff" cement. 6. As the sale of cement under the name "Ultra Tuff" cement started to increase, it was felt necessary to seek protection of the trademark by applying for registration of 17 the trademark. In the beginning of the year 2008, Defendant No.1 made enquiries for taking steps for registration of the trademark. Defendant No.1 was informed by their Trade mark attorney that it would be necessary to mention in the trade mark application the date of user and also to provide information to the Trade mark Registry regarding the sales of cement under the name "Ultra Tuff" cement. 7. In order to ascertain the date of user and actual sales and to thereafter provide the aforesaid information to the Trade mark Registry, the office staff of Defendant No.1 in the beginning of the year 2008 undertook the exercise of identifying the bill books which set out the sales of cement under the name "Ultra Tuff" cement. The office staff added the words "Ultra Tuff" on the bill books for the sole purpose of identifying the sales of cement under the name "Ultra Tuff" cement. This information was then relied upon for the purpose of preparing and filing of the Defendant No.1's application in March 2008 for registration of the trademark "Ultra Tuff" cement." 23. Admittedly, sometime in 1999-2000 defendant no.1 started manufacturing and selling cement under the brand name 'Surya'. The Ld. Advocate appearing for the defendants has informed the court that defendant no.1 continued and still continues to sell cement under the brand name Surya even after the defendant no.1 started manufacturing cement under the name ULTRATUFF CEMENT. The Director of the defendant no.1, Shri Vishal Ashok Kanodia in his affidavit-in-reply dated 25th April 2009, as set out hereinabove relied upon the copies of the bills issued by the defendant no.1 and has categorically stated on oath as follows :- "Hereto annexed and marked EXHIBIT "5/A to Exhibit 5/P" are bill copies having reference to the trade mark Ultratuff of Defendant No.1". A mere glance at the said bills shows that the word ULTRATUFF is subsequently superimposed on the said bills and that too in different ink. However, Shri Kanodia who is the Deponent of the Affidavit-in-Reply 18 dated 25th April, 2009 not only did not give any clarification as is now sought to be given but instead relied on the said bills and more particularly relied on the reference made therein to the trademark ULTRATUFF. The bills annexed to the affidavit-in-reply dated 25th April 2009 pertain to the period October 2006 to August 2008. The said bills are relied upon by the Director of the defendant no.1 Shri Kanodia since he has alleged in his Affidavit that the defendant no.1 conceived and adopted the mark ULTRATUFF in July 2006. However, the Director of the Defendant did not realize that in the application made to the trade mark Registry (Exhibit 9 at Pg,84 to his reply) dated 18th March 2008, the date of User of the mark ULTRATUFF CEMENT is shown as 5th January 2007. This itself prima facie establishes that the bills relied upon by the defendant no.1 from October 2006 superimposing the word ULTRATUFF thereon are not the bills pertaining to the sale of cement under the mark ULTRATUFF. When this contradiction in the dates pertaining to adoption/user along with the fact that the bills relied upon by the defendant no.1 were fabricated was pointed out by the Plaintiff in its Rejoinder, no Sur-Rejoinder was filed by the defendant no.1. Instead the defendant no.1 annexed Form-16 along with an affidavit-in-support to its Written Statement dated 7th September 2010 wherein the Registrar of Trade Marks, is requested to correct the date of user to 1-7-2006 instead of 5-1-2007. Interestingly though the Written Statement is verified by Shri Kamal Nayan Podar who is also the Deponent of the Affidavit dated 16th February 2011, filed in this Court pursuant to its directions, Mr. Podar though having annexed the same bills once again to the Written Statement with the words ULTRATUFF superimposed thereon has not deemed it fit to give the explanation in the said Written Statement about the subsequent addition of the word ULTRATUFF on the said bills as is now sought to be done. Instead the defendant no.1 has annexed Affidavits of its Dealers stating that the cement purchased by them under the said bills were under the trade mark ULTRATUFF. It is only after this Court directed the defendant no.1 to file its Affidavit, as set out hereinabove that Mr. Kamal Nayan Podar has attempted to give an explanation that in order to ascertain the date of user 19 and actual sales and to thereafter give the said information to the Trade Mark Registry, the office staff of defendant no.1 in the beginning of the year 2008 undertook the exercise of identifying the bill books which set out the sales of cement under the name ULTRATUFF CEMENT and the office staff added the words ULTRATUFF on the Bill Books for the sole purpose of identifying the sales of cement under the name ULTRATUFF CEMENT. This information was then relied upon for the purpose of preparation and filing of the defendant no.1's application in March 2008 for registration of the Trade Mark ULTRATUFF CEMENT. 24. In view of the aforestated facts I am convinced that the said explanation given by Shri Kamal Nayan Podar is false and incorrect to his knowledge. In addition his falsehood is exposed by the fact that as stated by him the application made to the Trade Mark Registry for registration of the trade mark ULTRATUFF is dated 18th March 2008. If for the purpose of identifying the sales the word ULTRATUFF was written on the bills by the office staff upto March 2008, Mr. Podar has not explained as to why the word ULTRATUFF is superimposed on the bills dated 22nd May 2008 and 20th August 2008 which are annexed (at Pages 88 and 89 to the Written Statement). Again if this exercise was carried out prior to the submission of the Application dated 18th March 2008 surely the Application would not have shown the date of user as 7th January 2007 which was sought to be corrected in September 2009/2010 only after the Plaintiff exposed the falsehood of the defendant no.1 qua the date of user of the trade mark ULTRATUFF. As set out hereinabove it was at that stage the defendant no.1 by an Affidavit dated 8th September 2009 of Shri Kamal Nayan Poddar (Exhibit to the written statement) furnished the information of its purported sales to the Trade Mark Registry and not in March 2008 as is now alleged. Even after an opportunity was given to the defendant no.1 to give its explanation on affidavit the defendant no.1 has not come out clear but the Director of defendant no.1 has made false statements on oath. I am therefore more than prima facie satisfied that the defendant no.1 has not started using the mark ULTRATUFF since July 2006 as 20 alleged and has throughout made false statements and relied on documents which are fabricated with the intention of misleading the court. The Affidavits filed by the dealers also therefore appears to be false. The defence raised by the Defendants therefore deserves to be rejected on this ground alone. In any event as submitted by Mr. Tulzapurkar the defendants are not entitled to raise any plea in equity so as to avoid an injunction being granted. 25. The defendants have further submitted that the impugned mark ULTRATUFF is not deceptively similar to the Plaintiff's registered trade mark ULTRATECH. This Court in its decision in M/s.Hiralal Prabhudas V/s. M/s. Ganesh Trading Co., reported in AIR 1984 Bom. 218, has aptly summarized the principles for deciding the question of deceptive similarities in Paragraph 5 as follows :- "5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e)overall structure, phonetic similarity and similarity of idea are imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances." 26. In James Chadwick & Bros Ltd. Vs. The National Sewing Thread Co. Ltd., reported in AIR 1951 Bom. 147, at 154 this court referring to the observations of the Master of the Rolls in Seville 21 Perfumery case has reiterated that whilst comparing the two marks what is required to be considered are the essential features and has observed in Paragraph 13 as follows :- "[13] Reliance was also placed on June's case (Seville Perfumery Ltd. v. June Perfect Ltd., and F. W. Woolworth & Co. Ltd. (1941) 58 R.P.C. 147). In that case the distinguishing feature of the registered trade mark & the proposed trade mark was the word "June," & the Master of the Rolls in his judgment at p.162 observes : "Now the question of resemblance & the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any." The learned Master of the Rolls also says that (p.162): "In such cases the marks comes to be remembered by some feature in it which strikes the eye & fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark." "Therefore the test we must apply in this case is, what is the feature in the appellants' trade mark which strikes the eye & fixes itself in the recollection, & the only answer to the question is that it is the Eagle which so strikes the eye & fixes itself in the recollection............" The above decision was upheld by the Hon'ble Supreme Court in the case of National Sewing Thread Co. Ltd., Chidambaram v/s James Chadwick & Bros reported in AIR 1953 SC 357 wherein it was reiterated that the Court has to consider the question from the view point of an average man of ordinary intelligence. In Paragraph 22 of its decision the Hon'ble Apex Court observed :- "(22) The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of S. 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose 22 proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing." 27. The Hon'ble Supreme Court in its decision in Amritdhara Pharmacy V/s. Satya Deo Gupta reported in AIR 1963 SC449 at 453 paragraph 8 while considering the marks Amritdhara and Lakshmandhara held that no microscopic examination is permitted nor any question arises of considering the etymological meaning of the word marks. The court observed in Paragraph 8 of its decision as follows :- "(8).....................An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and current of Lakshman'. 'Current of Lakshman' in a literate sense has no meaning; to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him, but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between 'Amritdhara' and 'Lakshmandhara' He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments." 28. The defendants have contended that the plaintiffs registered trade 23 mark "Ultra Tech Cement The Engineers Choice" consists of 6 words and the impugned mark "Ultra Tuff Cement" contains only 3 words. Both the marks are therefore different and cannot be said to be deceptively similar. In my view, such a contention on the part of the defendant is baseless and untenable. The court is not required to conduct a microscopic examination of the two marks. As held in the aforesaid decisions the words other than the one which forms the essential feature are to be ignored. The essential feature of the two marks are the words Ultra Tech and Ultra Tuff. It is only these words which form the essential features of the two marks, which are to be compared, and I am prima facie satisfied that the same are phonetically, visually and structurally similar. From the advertisement expenses and sales figures produced by the plaintiffs and set out herein above the plaintiff has prima facie established the reputation of its mark and the defendants contention that the two bags are different and therefore there is no question of passing off is also unsustainable. Considering the nature of the goods and class of purchasers there certainly is likelihood of deception and confusion and also there is likelihood of association. As submitted by the Plaintiff, the Plaintiff's registered trade mark having being fixed in the mind of the purchaser, it is bound to be recalled by an unwary purchaser when he sees the impugned mark particularly in respect of identical goods . The plaintiff is correct in its submission that the purchaser is bound to be put in the state of wonderment if totally not confused or deceived. 29. The Defendants have next relied on Section 17 of the Trade & Marks Act, 1999 in support of their contention that the registration granted to the plaintiff does not confer any exclusive right in the matter "ULTRA" and "ULTRATECH" which form only a part of the whole of the plaintiff's registered trade mark. Section 17 of the Act is for the sake of convenience reproduced here under :- "17. (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive 24 right to the use of the trademark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark - (a) contains any part - (i)which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii)which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character; The registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered." From the language used in Section 17 it is clear that when a trade mark consists of several marks the registration confers upon the proprietor exclusive rights to the use of trade mark taken as a whole. As held in the aforestated decisions while comparing the marks, the Court has to consider and compare the essential features of both the marks. If the essential features are similar, then confusion and deception can be said to arise. As submitted by the plaintiff, all that Section 17 lays down is that the registration of a trade mark shall not confer any exclusive rights in the matter forming only a part of the whole of trade mark so registered unless the part is the subject matter of a separate application for registration or is separately registered or is distinctive. The provisions of Section 17 contained in Sub Section 2(a)(i) and 2(a) (ii) and Sub Section (b) show that the three things mentioned therein are disjunctive and not cumulative. 25 In the present case the word ULTRATECH is distinctive. As submitted by the plaintiff the fact that the plaintiff's mark is registered without any disclaimers or limitations itself shows that the word ULTRATECH is a distinctive mark and the plaintiff have satisfied the criteria laid down in Sections 9 and 11 of the Trade & Marks Act, 1999. Therefore in the present case though the word ULTRATECH is not separately registered nor is a subject of a separate application, the same being distinctive shall not be hit by Section 17 (2) as submitted by the defendants. Both the Ld. Advocates have relied on various paragraphs of the decision of the Calcutta High Court in the case of Three-N Products Private Ltd., V/s. Emami Ltd., GA Nos. 2951 and 3976 of 2007 and CS No.204 of 2007, Paragraph 35 of the said decision is relevant and is reproduced hereunder: "35. The words 'the registration thereof shall not confer any exclusive right" towards the end of Section 17(2) have to be understood in the context. The import of such words is that the registration of the composite mark will not ipso facto confer any exclusive right as to the parts of the composite mark. But if the owner can establish exclusivity aliunde, the owner can assert the exclusivity. The registered owner is entitled to protection of its goodwill in such prominent feature as in an action for passing off unless the registered owner seeks to rely on Section 17(2)(b) of the Act in respect of a distinctive matter not common to the trade." In view thereof, the defendants contentions/arguments with regard to reliance on Section 17 of the Trade Marks Act, 1999 is misplaced. 30. The defendants have contended that the word ULTRA is common to the trade and therefore there is no likelihood of deception or confusion. This contention has been considered by the Hon'ble Supreme Court in the Case of Corn Products Refining Co. V/s. Shangrila Food Products Ltd. AIR 1960 SC142 and has held/observed in Paragraph 15 as follows :- "(15) The series of marks containing the common 26 element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user of the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 &Willesden Varnish Co. Ltd. v. Young & Marten Ltd., (1922) 39 RPC 285 at p.289. It also appears that the appellant itself stated in one of the affidavits used in its behalf that there were biscuits in the market bearing the marks 'Glucose Biscuits' and Glucoa Lactine biscuits'. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having 'Gluco' or 'Vita' as a prefix or a suffix." Following the judgment in the decision of Corn Products Refining Co. (Supra) a Learned Single Judge of this court in the decision of Pidilite Industries Ltd. V/s. SM Associates reported in 2004 (28) PTC 193, has in Paragraph 58 observed as follows :- "(58). .......................... The judgment in Corn Products requires the Defendant to prove that the marks must be not merely in use but in "extensive use". Thus, even in interim proceedings, it is not sufficient merely for the Defendant to show prima-facie that there is some user of the marks. There must be prima facie evidence to show extensive use. At the final hearing of the suit the level of proof required is higher - the matter requiring to be proved viz. 'extensive or substantial use' remaining the same. For instance, in a given case, a Defendant may well establish conclusively in interlocutory proceedings that there was actual use of the marks in the market. He would 27 thus have fulfilled the first requirement viz. actual use. He may however candidly admit that the extent of use is minimal. The Defendant could not in such circumstances resist an injunction on the series arguments contending that at the interim stage the extent of use is not material." Similar view was taken in M/s. D. R. Cosmetics Pvt. Ltd. V/s. J. R. Industries reported in AIR 2008 Bom.122 at 128, wherein this Court in Paragraph 21 of its decision observed/held as follows :- "21. The other contention of the Defendant is that there are other products in which a similar device has been used as part of a label mark. While dealing with this submission, the Plaintiffs have stated in their rejoinder that this plea of the Defendant is bad and no evidence has been adduced to support that there are actual sales of such products in the market. There is prima facie merit in the contention of the Plaintiffs that merely annexing some labels is not enough. In the absence of cogent proof of the actual conduct of business involving such label mark in the market. The Plaintiff have also submitted that it is not possible to monitor all such competing products when such sales are small and in far flung areas of the country. The existence of more than one imitation cannot justify what is wrong." Thus, mere presence of a mark in a Register does not prove its user. The person relying on such marks having common elements is required to establish extensive user. The Defendants have failed to prove extensive user of the mark containing the word "ULTRA". In view thereof the defendants contention that the word ULTRA is common to the trade and therefore there is no likelihood of deception or confusion is also not sustainable. 31. The defendants have further contended that the Plaintiff's mark containing the word ULTRATECH is descriptive or common to the trade. However, the defendants have themselves applied for registration of the impugned mark containing the word ULTRATUFF. The Delhi High Court in its decision in the case of Automatic Electric Limited V/s. R. K. Dhawan reported in 1999 PTC 81, has observed in paragraph 16 as 28 follows :- "16. The defendants got their trade mark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression. User of the word "DIMMER" by others cannot be a defence available to the defendants, if it could be shown that the same is being used in violation of the statutory right of the plaintiff............." The above decision was approved by the Division Bench of the Delhi High Court in the case of Indian Hotels Co. Ltd. V/s. Jiva Institute of Vedic Science & Culture reported in MIPR 2008 (3) 0082 at 0103. Paragraph 40 of the said decision is reproduced hereunder :- "40. It was next argued by Mr. Rohtagi that the word "JIVA" is a descriptive word which cannot be protected as a trade mark by a Civil Court. We do not think so, the Appellant has itself applied for registration of the Jiva as a trade mark and cannot, therefore, argue that the mark is descriptive. In Automatic Electric Limited v. R.K. Dhawan and Anr. 1999 PTC (91) 81 this Court has in similar circumstances repelled the contention and held, that since the Defendant had itself sought to claim a proprietary right and monopoly in "DIMMER DOT", the disputed trade mark it did not lie in its mouth to say that the said mark was a generic expression. The Court observed: 16. The Defendants got their trade mark "DIMMER DOT" registered in Australia. The fact that the Defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT" is a generic expression." Thus defendants who have admittedly applied for registration of the impugned mark containing the word "ULTRATUFF" are therefore estopped from contending that the plaintiff's mark containing the word ULTRATECH is descriptive or common to the trade and therefore cannot be registered. 32. The Defendants' contention that the Plaintiffs have copied somebody else's mark is also not sustainable. As submitted by the 29 plaintiff, firstly, the Plaintiff is the registered proprietor of the trade mark. As held by this Court in the case of Podar Tyres Vs. Bedrock Sales Corporation Ltd reported in AIR 1993 Bom. Page 237 paragraph 41 the validity of registration cannot be raised at this stage. Secondly, even if the mark ULTRATECH is registered in the name of Rajiv Gupta, the same is in respect of Plywood, Block boards, Flush Doors, which goods are different from the goods for which the Plaintiff's mark is registered. Thirdly, the registration of the mark in the name of Rajiv Gupta cannot be a defense to the Plaintiff's action both for infringement and passing off against the Defendants. The effect of infringement against Rajiv Gupta is that the Plaintiff cannot complain of infringement against Rajiv Gupta in view of the provision of Section 30(e) of the Act. The registered proprietor has a right to prevent any other person from using a similar mark. 33. The defendants have submitted that the plaintiff has filed the suit one year after the first notice was served on the defendant and is therefore not entitled to any relief on the ground of delay. The defendants are certainly the subsequent adopter of the impugned mark. The defendants were therefore aware of the plaintiff's mark and adopted the impugned mark with full knowledge and once the impugned mark is found to be similar, the defendants cannot rely on the user made after knowledge of the plaintiff's mark. It is the defendant's case that they adopted the mark after full enquiry. Thus the defendants adopted the mark with full knowledge of the plaintiff's mark and therefore cannot raise any plea in equity. This view gains support from the decision of the Division Bench of this Court in Bal Pharma Ltd. V/s. Centaur Laboratories Pvt. Ltd. reported in 2002 (24) PTC 226 (BOM) (DB). The relevant observations contained in paragraphs 9 and 11 of the said decision are reproduced hereunder :- "9. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, Learned Counsel appearing for the Respondent cites a judgement of the Supreme Court in Power Control Appliances and others v/s Sumeet Machines Pvt. Ltd. 1994 2 SCC 448 wherein the 30 Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v/s Electirx and quoted a passage therefrom in Paragraph 34 of its judgement. Our attention was also drawn to the judgment in Electrolux itself. Reference to the judgement in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injunction. The judgement indicates that in a situation where the Defendant to an action has been using the mark, even if concurrently, even if making himself aware of the fact as to whether the same mark is the subject matter of registration and belongs to another person, the first person cannot be heard to complain for he has been using it negligently as much as he has not taken the elementary precaution of making himself aware by looking at the public record of the Registrar as to whether the mark in question is the property of another. If however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the mark then he runs the risk of the registered proprietor challenging his action for infringement and merely because it is done at a subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgement shows that in order to deny an interlocutory injunction, the delay must be such as to have induced the Defendant or atleast to have lulled him into a false sense of security to continue to use the trademark in the belief of he was the monarch of all he surveyed. In our judgement, such are not the circumstances here. We are not satisfied from the records that a search was taken of the Registry by the Appellant to assure itself that there was no other person who owned the mark MICRODINE. Assuming that the search was taken, and the Appellant has done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way we do not think that the defense can succeed, at this stage atleast." "11. Finally, that brings us to the question of balance of convenience. Even on balance of convenience, we are of the view that the Learned Single Judge is right. The damage caused to the goodwill of the proprietor of a trade mark may be intangible and not computable in terms of money, but has long term effect of devaluing the trade mark itself which is the property of the registered proprietor. Another person, who consciously and without taking the necessary steps to assure himself of existence of such mark, uses it and invest money therein, does not obviously have the balance of convenience in his favour. At any rate, 31 at this stage at least we are satisfied that the Judgement of the Learned Single Judge can not be faulted on the ground of balance of convenience also............." 34. In the decision of Poddar Tyres Limited Vs. Bedrock Sales Corporation Limited and another (supra) the learned Single Judge of this Court has relied on the following observations of the Division Bench of this Court in Express Bottlers Services Pvt.Ltd. Vs. Pepsico Inc. (Appeal No.436 of 1989 in Notice of Motion No.1920 of 1988 in Suit No.2903 of 1986) decided on 8th February 1991 which reads thus :- "Since, however, it was stated on behalf of the defendant that Kurdukar, J., was in error in declining to consider balance of convenience, we shall touch upon that aspect, though we must make it clear that, in our view, it is only in unusual circumstances that the balance of convenience should play a part in a matter where the plaintiff is the owner of a registered trade mark." (emphasis added) The learned Single Judge after referring to the above observations of the Division Bench held as follows :- "It is obvious that, in the present case there are no such `unusual circumstances' which would impel the Court to go into the question of balance of convenience in the teeth of the fact that the plaintiffs are the registered proprietors of the trade mark." 35. A Division Bench of this Court in Schering Corporation & Others Vs. Kilitch Co. (Pharma) Pvt. Ltd. (1994-IPLR-1) has relied on the observations of the learned Single Judge of the Delhi High Court in M/s.Hindustan Pencils Pvt.Ltd. Vs. India Stationery Products Co. and another (AIR-1990-Delhi-19) paragraph 39 of which reads thus : "39. ... ... ... Any infringer who uses or adopts some one else's mark must be aware of the consequences which may follow. The defendants run the risk in using a mark which belonged to some one else. It continued its business uninterruptedly for a number of years before any 32 action was taken by the plaintiffs against it. Any growth after notice is at the risk and peril of the defendant. The defendant certainly had notice of application of the plaintiff having been filed against it in the year 1985 for cancellation of registration of the copyright. The defendant should have been warned at that stage, that the plaintiff is not likely to accept the user of its mark by the defendant. If the defendant continued to do business by using the impugned mark, it did so at its own peril. The continued user cannot be set up as a defence under these circumstances." 36. In my view, considering the facts in the present case and the aforestated decisions there is no manner of doubt, that the contention of the defendants that the plaintiff is not entitled to any relief on the ground of delay is not tenable and that the balance of convenience is in favour of the plaintiff and against the defendants. 37. There are no equities in favour of the Defendants. As the Defendants as set out herein above have come to the Court with fabricated documents, they are not entitled to raise any plea in equity so as to avoid an injunction being granted. This observations gains support from the decision of the Hon'ble Supreme Court in Gujarat Bottling V/s. Hindustan Coca Cola reported in AIR 1995 SC, paragraph 50 reads thus:- "50. In this context, it would be relevant to mention that in the instant case GBCL had approached the High Court for the injunction order, granted earlier, to be vacated. Under order 39 of the Code of Civil Procedure, jurisdiction of the Court to interfere with an order o interlocutory or temporary injunction is purely equitable and, therefore, the Court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the Court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the court has to show that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the 33 person who seeks an order of injunction under order 39 Rule 2 of the Code of Civil Procedure, but also in respect of the party approaching the Court for vacating the ad-interim or temporary injunction order already granted in the pending suit or proceedings." 38. In the above circumstances, the Notice of Motion is allowed in terms of prayer clauses (a) and (b). The defendants shall pay costs of the Notice of Motion to the plaintiff. 39. The learned advocate appearing for defendants prays for stay of the operation of this order. At his request, the effect and operation of this order is stayed for a period of four weeks from today. (S.J.KATHAWALLA, J.)