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IN THE HIGH COURT OF DELHI AT NEW DELHI

(Ordinary Original Civil Jurisdiction)

C.S.(OS) 551 of 2011


In the matter of:
JAI PLASTIC COMPANY & OTHERS Versus ASHOK KUMAR PARASRAMKA Trading as IMPEX SYNDICATE Defendant/Applicant Plaintiffs/Respondents

APPLICATION UNDER ORDER 39 RULE 4 READ WITH SECTION 151 OF THE CODE OF CIVIL PROCEDURE, 1908 FOR VACATION OF EX-PARTE INTERIM INJUNCTION DATED 11.03.2011 MOST RESPECTFULLY SHEWETH: The applicant above-named most respectfully submits as under: 1. That the aforesaid suit is pending adjudication before this Honble Court. That this Honble Court vide its order dated 11 th March, 2011 passed in I.A. No. 3587 of 2011 in the present suit, granted an ex-parte ad-interim injunction in favor of the plaintiffs and against the defendant/applicant herein and passed an order in the following terms: .The defendant is restrained from using the trademark ARROW or any other trademark which is identical or deceptively similar to the plaintiffs trademark in respect of sewing machines or any other spare parts and

accessories used in garment industry till the next date of hearing 2. That the defendant most respectfully submits that the ex-parte ad-interim injunction order dated 11.03.2011 is liable to be vacated as the continuation of the same is likely to cause irreparable harm and injury to the defendant and shall lead to death-knell of the defendants business under the aforesaid trademark ARROW which has been honestly and continuously been carried out by the defendant for the past 08 years to the complete knowledge of the plaintiffs.

3. That the defendant is engaged in the business of manufacturing and marketing of industrial sewing machines, falling in Class 07 under its own registered trademark ARROW since 2003, while the plaintiffs allege to be engaged in a completely noncompetitive and unrelated field of manufacturing and marketing of Plastic Tag Pins, Plastic Tag Guns and Textile Cleaning Spray Guns. It is submitted that the plaintiffs admittedly have never ventured into the field of defendants business activities and have not dealt with the goods, being dealt with by the defendant, nor have the plaintiffs shown any intention to do so in the future. It is submitted that business carried on by the defendant, since 2003, has been extensive and has been to the complete knowledge of the plaintiffs. It is submitted that the

defendant has carried on business for the last eight years, under a mark ARROW, which has been used and registered by hundreds of different traders, manufacturers and entities in their respective fields of business activities for last several years, without there being any confusion or deception in the market, for the said name ARROW, being a dictionary word, and being a mark which is so apt to be adopted honestly by different traders in their respective fields of business. It is submitted that the adoption of the said trademark ARROW by the defendant being completely honest, the defendant being the registered proprietor of the said trademark, the goods of the respective parties being completely different, the fact that the defendant has carried on extensive business under the said trademark since 2003, the fact that several others have used and are using the said mark in their own name and right, the mark being apt to be adopted, the ex-parte injunction granted against the defendant is liable to be vacated.

4. The defendant further submits that the plaintiffs have not come to this Honble Court with clean hands, has greatly abused the process of law by filing the instant suit against the defendant, and has concealed material facts from this Honble Court for the purposes of obtaining ex-parte orders. The order dated

11.03.2011, as stated above is thus liable to vacated and the

plaintiffs application under Order 39 rule 1 & 2 deserves to be dismissed.

5. It is submitted that the present suit is premised upon a completely concocted cause of action; the plaintiffs have forged and fabricated documents, and have created evidence against the defendant with a view to mislead this Honble Court and to obtain ex-parte orders against the defendant. It is respectfully

submitted that some of the documents filed by the plaintiffs are forged and fabricated on the face of it, as if such documents were created with a view to institute this present suit and to obtain ex-parte orders against the defendant by prejudicing and misleading this Honble Court. The applicant/defendant

reserves its right to comment upon the said documents at the time of arguments. It is submitted that the plaintiffs having

come to this Honble Court with unclean hands, the plaintiffs are not entitled to the equitable relief of injunction and as such the plaintiffs present suit as well as the application for interim injunction ought to be dismissed with heavy costs. 6. That the plaintiffs have not disclosed complete facts and particulars and have deliberately concealed material facts and particulars from this Honble Court with a view to obtain exparte orders. It is further submitted that the plaintiffs have made deliberate and intentional false representations and have

asserted facts and matters which are false to the complete knowledge of the plaintiffs with a view to prejudice and mislead this Honble Court. The sole purpose and intent of the plaintiffs is to harass the defendant and to cause undue interference in the course of legitimate business activities of the defendant. The present suit is a complete abuse of the process of law and is liable to be dismissed. It is submitted that the plaintiffs have falsely portrayed the defendant as a pirator, while being completely aware that the defendant has been legitimately carrying on a non-competitive business under the said trademark ARROW for the last eight years since 2003, and have not put facts in right perspective before this Honble Court. The true facts and circumstances are as under: (i) That the defendant is engaged in the business of manufacturing and marketing of inter alia sewing machines and parts, fitting and accessories thereof for the past several years. (ii) That the defendant is the true owner and lawful proprietor of the trademark ARROW in respect of the said goods. The said trademark ARROW was honestly and bonafidely adopted by the defendant, being a dictionary word, as back as in the year 2003, after ascertaining that there were no conflicting mark in use by another trader or manufacturer relation to the

business

of

manufacturing

and/or

marketing

of

industrial sewing machines.

The defendant thus

adopted the mark and started using the said trademark in or about January 2003.

(iii)

That the said trademark ARROW has since January 2003 been used openly, continuously, honestly and exclusively in respect of the above said goods by the defendant without any interruption and interference whatsoever from any corner.

(iv)

That the defendant has established a good trade and carried out good sales of the said goods under the said trademark ARROW. Furnished below is the sales figures of the high quality goods sold by the defendant under the said trademark:

PERIOD 2003-2004 2004-2005 2005-2006 2006-2007 2007-2008 2008-2009 2009-2010

SALES FIGURES

That the aforesaid sales figures obtained the defendants from the books of accounts duly maintained by defendants firm in ordinary course of business and the same is true and genuine. The defendants vouchsafe the correctness of the said figures. (v) That on account of high quality of the goods sold by the defendant and by virtue of long, continuous and extensive use of the said trademark ARROW, the same has come to be exclusively identified and associated with defendant among the public and trade in respect of the said goods. The said goods of the defendant bearing the said trademark ARROW

connote and denote to be the goods and merchandise of defendant and none-else to the public and trade. The said trademark ARROW is distinctive of the said goods of the defendants and has become an asset of good value in the business. On account of business activities of the defendant under the said trademark ARROW has acquired enviable goodwill and trade reputation among the public and trade.

(vi)

That in order to secure statutory right to the trademark ARROW, the defendant filed an application under No.1651101 in Class-07 before the Registrar of Trade

Marks on 07/02/2008 in respect of all types of sewing machines and spare parts & accessories thereof. The said application was advertised in the Trade Marks Journal No.1402 dated 16/10/2008 at page 3068. None including the plaintiffs herein opposed the same or lodged any Notice of opposition as is provided under the law. The said application was matured to registration in due process of law and consequently the said trademark was registered in the name of the defendant. The registration of said trademark is valid, subsisting and effective till date under the provisions of the Trade Marks Act, 1999. The plaintiffs had filed the application for rectification before the Intellectual Property Appellate Board (IPAB), Chennai. The defendants have contested the said matter and have filed the Counter Statement. The aforesaid application for rectification is pending. (vii) Beside, the statutory rights to the exclusive use of the said trademark on account of its registration, the defendants have acquired legal, vested and common law rights to the exclusive use of the said trademark ARROW on account of its honest adoption,

continuous, open, bonafide and extensive use. (viii) That in the year 2009, the plaintiffs herein filed a suit before this Honble Court being C.S. (OS) no. 523 of

2009 against several manufacturers and traders of Plastic Tag Pins, Plastic Tag Guns, Textile cleaning spray guns and the applicant herein was named as defendant no.5 in the said suit. The plaintiffs sought an order of injunction restraining the parties in the said suit from manufacturing, marketing or dealing with only the following goods: - Plastic Tag Pins, Plastic Tag Guns, Textile cleaning spray guns. It is submitted that an exparte injunction was granted in favor of the plaintiffs and against the defendants in the said suit on 20.03.2009. Subsequently, the plaintiffs settled the matter with rest of the suit defendants, except the applicant herein and since the applicant herein had never manufactured/dealt with goods in respect of which the injunction was sought by the plaintiffs under the trademark ARROW, nor the defendant had any intention of doing so in the future, the said suit did not concern the defendant at all and the defendant herein did not file any defense in the said suit. Accordingly the plaintiffs were allowed to lead their exparte evidence and the said suit is pending adjudication before this Honble Court. (ix) It is submitted that the defendant in the said suit through its counsel had categorically made a statement that it is not manufacturing Plastic Tag Pins, Plastic Tag Guns,

Textile cleaning spray guns and is only in the business of manufacturing and marketing of industrial sewing machines under the said trademark ARROW, the plaintiffs since June, 2010 were completely aware of the said position. It is submitted that the plaintiffs were not only aware of the defendants use of the said trademark for sewing machines, but they were also made aware that the defendant is the registered proprietor of the said trademark under no. 1651101 in Class 07. It is

submitted that the plaintiffs herein still took no action against the defendant and did not institute this present suit until March, 2011 being completely aware of the defendants use since 2003, registration of the mark ARROW for and in respect of the said goods i.e. sewing machines. (x) It is further submitted that the plaintiffs who have now belatedly approached this Honble Court set up this case so as to appear that the defendant has now ventured into the field of sewing machines, after being restrained from manufacturing and marketing of Plastic Tag Pins, Plastic Tag Guns, Textile cleaning spray guns, in C.S. (OS) no. 523 of 2009. It is submitted that such an

impression which is sought to be created by the plaintiffs is clearly reflected in the order of this Honble Court

dated 11.03.2011 as well, and the plaintiffs have deliberately sought to create this impression so as to obtain ex-parte orders against the defendant. It is

submitted that the plaintiffs have not come to this Honble Court with clean hands and have not disclosed the true facts and circumstances and accordingly, the exp-parte injunction dated 11.03.2011 is liable to be vacated and the present suit is also liable to be dismissed. 7. That the plaintiffs action for alleged infringement of trademark ARROW is not maintainable in law under Section 28(3) and the present suit for infringement is thus liable to be dismissed on the face of it. It is submitted that the defendant admittedly

being the registered proprietor of the trademark ARROW, the any infringement action against the registered proprietor of the mark is statutorily barred. It is respectfully submitted that the

plaintiffs ought to have been advised of the said legal position and yet the plaintiffs have chosen to deliberately institute this present suit and plead an alleged cause of action for infringement, which is not maintainable in law.

8. That the alleged registrations of the plaintiffs are illegal, bad in law and are liable to be cancelled. In any event, admittedly, such alleged registrations are subject to disclaimer conditions

whereby the word ARROW as well as device of ARROW from its alleged registrations are disclaimed and no monopoly is granted to the plaintiffs for such disclaimed portions. The

plaintiffs have themselves admitted the said position in the plaint. It is submitted that in view of the same, the plaintiffs in the present suit cannot claim any monopoly in respect of the word ARROW, which is their only grievance in the present suit and which they have themselves disclaimed from their own alleged registrations and thus their cause of action in the present suit qua the defendant is completely unsustainable on this count alone. 9. That it is further pertinent to note that the said alleged trademark ARROW of the plaintiff is not a coined word and rather the same a popular dictionary word which is incapable of referring to the goods of the plaintiffs alone. The plaintiffs have deliberately and fraudulently suppressed from this Honble Court about the same and are disentitled to any relief, much less, equitable relief from this Honble Court. The plaintiffs

have no exclusivity in the word ARROW, being a dictionary word. It being a dictionary word has been adopted, used and registered by number of persons in the different trade and business within the complete knowledge of the plaintiffs. More, particularly an inspection in the office of Registrar of Trade Marks has revealed that there were number of parties who had

applied for and registered trademarks ARROW with or without suffix and prefix in the different trade with claim of user. The computer generated Search Report is enclosed herewith. A mere look at the search report would reveal that there are hundreds of trademarks, applied for and/or registered, in the name of different persons, incorporating the expression ARROW, and that such manufacturers have in fact claimed to have been using the said trademarks, for a long period of time. It is most respectfully submitted that all such use and registration by third parties have been in complete knowledge of the plaintiff. That the plaintiff ought to have in the circumstances disclosed such instances of use and registration to this Honble Court. However, the plaintiff has kept back such material particulars solely with a view to mislead this Honble Court and to obtain ex-parte orders.

10.

That the alleged goods of the plaintiffs under the said trademark ARROW and those of the defendants are completely distinct. It is submitted that there is no similarity between the

two sets of goods at all, inasmuch the same are sold through different trade channels, their manner of use, nature and characteristics are completely different and the same are not sold at the same shops and/or across the same counters. Thus there is no possibility of any confusion or deception as alleged by the plaintiffs. The plaintiffs alleged claims premised upon

such alleged similarity of goods are completely unfounded and thus the two sets of goods being completely different, the exparte injunction dated 11.03.2011 is liable to be vacated on this count alone. 11. That suit of the plaintiffs suffers from undue and unreasonable delay and latches. The suit of the plaintiffs is also barred by the principles of acquiescence, waiver and estoppel. The

defendant having commenced and established the business under the impugned trademark ARROW honestly and having carried on the same openly and continuously for around 08 years and having put in all their effort, time, energy, skill, resources, in creating and establishing the same. The plaintiffs cannot now be permitted to bring the business of the defendant to a complete halt through the means of the present suit. That the present plaint has been filed after an unjustifiable delay of more than 08 years since when the defendants impugned trademark was bonafidely adopted and used to the knowledge of the plaintiffs. The present suit suffers from laches and unexplainable delay in filing of the same and is thus barred under the equitable principles of waiver and estoppel. That equity demands that no relief be granted to the plaintiffs after having willfully acquiesced in the continuous, open and commercial use of the trademark ARROW by the defendant for such a long period of time. The plaintiffs conduct of prolonged

omission from raising any objections against the same, undeniably implies a waiver of alleged exclusive rights in the plaintiff. 12. That the present suit of the plaintiffs, as to the alleged cause of action for passing-off against the defendant, is liable to be dismissed inasmuch, statutory monopoly granted to the defendant by virtue of registration of trademark ARROW cannot be permitted to be whittled down, or diluted by the plaintiffs by alleging a cause of action for passing-off, more so when the goods of the plaintiff and defendant are different and distinct. It is further pertinent to note there has not even been a single instance of actual confusion between the two set of the goods. It is true that the test of passing-off is one of likelihood of confusion and not actual confusion, it is however, submitted that no confusion for a long period of time is also indicative of the fact, that no such confusion is likely in the future. 13. It is reiterated that the present action by the plaintiffs is only to cause harassment to the defendant and to create an illegal interference in the course of its legitimate business activities. The defendant is engaged in the business of manufacturing and marketing of industrial sewing machines, falling in Class 07 under its own registered trademark ARROW since 2003, while the plaintiffs allege to be engaged in a completely noncompetitive and unrelated field of manufacturing and marketing

of Plastic Tag Pins, Plastic Tag Guns and Textile Cleaning Spray Guns. It is submitted that the plaintiffs admittedly have never ventured into the field of defendants business activities and have not dealt with the goods, being dealt with by the defendant, nor have the plaintiffs shown any intention to do so in the future. It is submitted that business carried on by the defendant, since 2003, has been extensive and has been to the complete knowledge of the plaintiffs. It is submitted that the defendant has carried on business for the last eight years, under a mark ARROW, which has been used and registered by hundreds of different traders, manufacturers and entities in their respective fields of business activities for last several years, without there being any confusion or deception in the market, for the said name ARROW, being a dictionary word, and being a mark which is so apt to be adopted honestly by different traders in their respective fields of business. It is submitted that the adoption of the said trademark ARROW by the defendant being completely honest, the defendant being the registered proprietor of the said trademark, the goods of the respective parties being completely different, the fact that the defendant has carried on extensive business under the said trademark since 2003, the fact that several others have used and are using the said mark in their own name and right, the mark being apt to be adopted, the ex-parte injunction granted against the defendant is liable to be vacated.

14.

It is submitted that the plaintiffs cannot feign ignorance and cannot deny that it had been completely aware of the defendants use and registration of the mark ARROW atleast since March, 2009 when the plaintiffs instituted C.S.(OS) no. 523 of 2009 in this Honble Court, impleading the defendant herein as one of the defendant to the said suit. The plaintiff

admittedly did not institute the present suit until March, 2011 and waited to two long years to agitate its alleged concern. The plaintiff admittedly did not oppose the defendants application for registration of trademark ARROW which was published subsequent in point of time when plaintiffs had instituted the aforesaid suit C.S.(OS) no. 523 of 2009. The plaintiffs thus by its own conduct has acquiesced in use of the said trademark ARROW by the defendant for sewing machines. Not only this, but the plaintiffs themselves concealed from this Honble Court that the mark ARROW is common to the trade and has been used and registered by several persons for and in respect of different goods and services and sought to create an impression as if the mark ARROW is an exclusive monopoly of the plaintiffs.

15.

It is respectfully submitted that the balance of convenience is clearly in favor of the defendant and great irreparable harm and injury would be caused to the defendant and its business if the interim injunction dated 13.03.2011 is allowed to continue to

operate against the defendant. The defendant has, on the date of the injunction order, honestly, bonafidely and extensively used the said trademark ARROW for 08 years. No prejudice has been caused to the plaintiff by the said use of the defendant and no further imminent injury is likely. 16. It is reiterated that the present action is nothing but an attempt on the part of the plaintiff to stifle free and fair competition, and to gain an illegal advantage in law, to which it is not entitled to. The plaintiff has not come to the court with clean hands, has suppressed material facts from this Honble Court and the conduct of the plaintiff is far from being bona fide. There has been a deliberate attempt to mislead this Honble Court for the purposes of obtaining ex-parte orders. The plaintiff has failed

to make out any case for the grant of equitable relief of injunction, in view of what has been stated hereinabove. Thus the plaintiffs application under Order 39 Rules 1 & 2 deserves to be dismissed with heavy costs and the ex-parte ad interim order dated 13.03.2011 deserves to be vacated immediately.

PRAYER: In view of the submissions made hereinabove and in the facts and circumstances of the case, it is most respectfully prayed that this Honble Court may be pleased to:

1. Allow the defendants present application under Order 39 Rule 4 and vacate the ex-parte injunction dated 13.03.2011 immediately. 2. Pass such further order(s) as may be necessary in favor of the defendant and against the plaintiff.

Defendant Through: _______________________________ (M.K. MIGLANI) (GAURAV MIGLANI) Advocates for the Defendant Place: New Delhi Dated: 13.04.2011