Trade Mark “LuLu” cannot be Appropriated by saying that it is a Generic Word meaning ''Pearl'' [Case Law]

Trade Marks Act, 1999 - Ss. 2(zb), 2 (m), 2 (2), 2 (3), 29,  30 (2) (e), 33 - Infringement of registered trade marks - Effect of acquiescence.

The interim orders passed by the learned Single Judge, suspending the ad interim orders of injunction passed by the trial court, should be maintained until disposal of the injunction applications by the trial court on merit. In my opinion, in the facts of this case, such a course has to be adopted mainly for the reason that the appellants/defendants were doing business for a considerable length of time with “LuLu” as part of their trade name and the action against them was brought in only in the year 2018. However, this will not stand in the way the plaintiff claiming enforcement of its legal right, if it establishes legal grounds before the trial court.

IN THE HIGH COURT OF KERALA AT ERNAKULAM

A.HARIPRASAD, J.

F.A.O Nos.50, 51, 59, 60, 61 & 62 of 2018

Dated this the 22nd day of May, 2018 

AGAINST THE ORDER DATED 24-02-2018 IN I.A NO.1007 OF 2018 AND I.A NO.1008 OF 2018 IN O.S NO.6 OF 2018 ON THE FILES OF THE ADDITIONAL VII DISTRICT COURT, ERNAKULAM.

APPELLANT/RESPONDENTS/DEFENDANTS

1. KANNUR LULU GOLD LIMITED, A COMPANY INCORPORATED UNDER THE COMPANIES ACT, CIN:U36911KL2006PLC019602, REPRESENTED BY ITS DIRECTOR MR.P.P.ABDUL HAMEED, NO.TV1131C, D, APSARA TOWER, THAVAKKARA ROAD, KANNUR - 670 001.

2. THALASSERY LULU GOLD SUPERMARKET PRIVATE LIMITED, A COMPANY INCORPORATED UNDER THE COMPANIES ACT, CIN:U36911KL2007PTC021353, REPRESENTED BY ITS DIRECTOR MR.P.P.ABDUL HAMEED, 44/2252A, WARD II, A.V.K.NAIR ROAD, THALASSERY-670 101.

3 CALICUT LULU GOLD PRIVATE LIMITED, A COMPANY INCORPORATED UNDER THE COMPANIES ACT, CIN:U536911KL2011PTC028798, REPRESENTED BY ITS DIRECTOR MR.P.P.ABDUL HAMEED, DOOR NO.44/2252A, WARD II, A.V.K.NAIR ROAD, THALASSERY- 670 101.

BY ADVS.SRI.S.SREEKUMAR (SENIOR) & SRI.P.MARTIN JOSE.

RESPONDENT/PETITIONER/PLAINTIFF

LULU INTERNATIONAL SHOPPING MALL PRIVATE LIMITED, AN INDIAN COMPANY, CIN:U52190KL2004PTC017414, REPRESENTED BY ITS DIRECTOR MR.NISHAD M.A., S/O.M.C.ASHRAF, AGED 36 YEARS, 34/1000 N.H.47, EDAPALLY, KOCHI, ERNAKULAM-682 024.

BY ADV. SRI.PHILIP T.VARGHESE SRI.THOMAS T.VARGHESE SMT.ACHU SUBHA ABRAHAM SMT.V.T.LITHA.

 J U D G M E N T 

Lulu International Shopping Mall Private Limited, a company incorporated under the Companies Act, filed three suits before the District Court, Ernakulam with identical prayers. The defendants in the suit, aggrieved by the ad interim order of injunction reliefs granted in favour of the plaintiff/petitioner, have approached this Court with separate appeals, challenging the legality of the interim orders. Altogether six appeals are filed against two sets of orders in each suit.

2. Heard the learned Senior counsel appearing for the appellants and the learned counsel appearing for the respondent.

3. Essentially, the identical prayers in the suits are for a declaration that the plaintiff is the sole and exclusive owner of a well known trade mark “LuLu” having exclusive right to use the same in respect of any goods and/or services and also for a perpetual injunction retraining the defendants, their successors etc. from using, in the course of trade in respect of any goods and/or services, the company names and/or the trade mark “LuLu” as part of their trade name and also for a perpetual injunction against the defendants, their successors etc. from passing off their goods and/or services in the course of trade by using the plaintiff's earlier well known trade mark “LuLu”, whether as part of their company name or as trade mark. A decree for mandatory injunction, directing the defendants to surrender to the plaintiff on oath for destruction without compensation all the sign boards, packaging materials, bags, containers, etc., having the plaintiff's trade mark “LuLu” printed thereon is also claimed. Yet another relief sought for in the suit is damages for infringement and passing off the plaintiff's trade mark.

4. Along with the suits, separate applications for temporary injunction for restraining the defendants/appellants from infringing the trade mark of the plaintiff/respondent and for a temporary injunction against passing off the goods and services over which the plaintiff claimed right are also filed. In those applications in each suit, interim orders were granted by the court below and hence these appeals.

5. Basically two questions arise in these appeals. First one is regarding maintainability of the appeals against the ad interim orders of injunction. It is indubitable that an appeal against an ad interim order of injunction can be maintained purely on legal grounds, since this Court sitting in appeal cannot appreciate the factual contentions because of non filing of a counter statement or a counter affidavit refuting the allegations raised by the plaintiff in its injunction applications. In other words, the appellants (defendants) cannot challenge factual issues involved in the temporary injunction applications, without filing counter statements and their challenge should be limited to the legality of the orders impugned in these appeals. Second aspect to be considered in these appeals is regarding the prima facie legal right of the plaintiff/respondent to claim ad interim orders in all these suits pending disposal of the injunction applications.

6. I shall deal with legality of the appeal as the first point. Learned counsel appearing for the plaintiff/respondent strongly contended that these appeals are incompetent since there is absolutely no illegality committed by the lower court, either in the matter of exercise of jurisdiction or in appreciating the contentions raised by the plaintiff in the injunction applications. It is also contended that the appellants/defendants have rushed to this Court without making any attempt to file a counter statement to the injunction applications and contest the matter on merits.

7. In F.A.O No.50 of 2018, a learned Single Judge of this Court as per order on I.A No.181 of 2018 dated 09-03-2018 passed a direction that the order passed by the lower court on the injunction applications shall not be implemented. Likewise, in F.A.O No.51 of 2018 also, a similar order was passed by the learned Single Judge. Learned counsel appearing for the plaintiff would contend that by virtue of the said orders, preventing enforcement of the trial court's injunction order, the plaintiff has been put to a great prejudice. According to him, the appeals themselves are not maintainable for the obvious reason that there is no legal or factual basis for the challenge. However, this contention will be examined as the next ground. At the outset, it would be proper to consider whether an appeal can be filed challenging legality of an ad interim order.

8. Learned counsel for the plaintiff/respondent relying on a Division Bench decision of this Court in Ajmal Hassan v. Muhammed Shaffeeque, 2013 (3) KLT 64, contended that interference by way of an appeal with an ad interim order of temporary injunction passed ex parte would not be resorted to except in the rarest of rare cases. True, an appeal against an ad interim order is not to be resorted to as a matter of course.

9. Law declared in Innovative Pharma Surgicals v. Pigeon Medical Devices Pvt. Ltd. and others (A.I.R 2004 A.P 310) by a Division Bench is that an appeal should be filed against an ad interim order of injunction only in an extraordinary circumstance under which the party is able to explain as to why he prefers an appeal in the High Court, instead of choosing to file a petition to vacate the ad interim injunction.

10. The Supreme Court in A.Venkatasubbiah Naidu v. S. Challappan and Others (AIR 2000 SC 3032), has also recognized the right of a party to challenge an ad interim order of injunction passed under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908, in an appeal.

11. Learned Senior counsel for the appellants contended that ex facie the ad interim orders are legally unjustifiable and even without controverting the facts alleged in the petitions, the appellants will be able to substantiate the incorrectness of the orders passed. According to him, the materials produced by the plaintiff itself will be insufficient to hold that they are entitled to the trade mark “LuLu” and that the plaintiff company is not the prior user of the above trade mark. So much so, the plaintiff is not legally entitled to bring in an action either alleging infringement or passing off. It is the submission of the learned Senior counsel for the appellants that no factual issue need be addressed for establishing the inaccuracy of the orders passed by the court below. Serious challenges have been raised by the appellants against the claim of right by the plaintiff to file a suit for aforementioned comprehensive reliefs. Having heard elaborately the submissions on both sides, I am of the view that it cannot be said that the appeals are incompetent, as purely legal issues are raised for attacking correctness of the orders passed by the court below. Even without referring to the facts involved, the appellants could raise some points regarding maintainability of the impugned orders. Therefore, I find that the appeals are maintainable against ad interim orders in the facts and circumstances of these cases.

12. Now, I shall deal with the challenges levelled against the ad interim orders passed by the court below in all the three suits. Before dealing with the rival contentions, it will be apposite to refer to certain provisions in the Trade Marks Act, 1999 (in short 'the Act'). The expression ''trade mark'' has been defined in Section 2(zb) of the Act, which reads as follows : 

“trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and - (i) in relation to Chapter XII ( other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.;” 

13. Definition of the term “mark”, as seen from Section 2 (m) of the Act, reads as follows : 

“”mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;” 

14. Sub Section 2 of Section 2 of the Act may also be relevant for our purpose. Hence I quote : 

(2) In this Act, unless the context otherwise requires, any reference - 

(a) to “trade mark” shall include reference to “collective mark” or “certification trade mark”; 

(b) to the use of a mark shall be construed as a reference to the use of printed or other visual representation of the mark; 

(c) to the use of a mark,- 

(i) in relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods; 

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services; 

(d) to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of section 3; 

(e) to the Trade Marks Registry shall be construed as including a reference to any office of the Trade Marks Registry.” 

15. Sub Section 3 of Section 2 of the Act says that for the purpose of this Act, goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business and so with descriptions of goods and description of services.

16. It is the case of the appellants in F.A.O Nos.50 and 62 of 2018 (defendants in O.S No.6 of 2018) that the first appellant company was incorporated under the companies Act on 07-07-2006. Second appellant therein was incorporated on 26-10-2007 and the third appellant was on 05-07-2011. Appellants therein are engaged in retail business in gold jwellery at Kannur, Thalassery and Calicut. Initially, the share holders of the company formed a partnership as per deed dated 20-06-2000 in the name and style “Lulu Gold” and commenced user of the trade mark “Lulu Gold” and made advertisements in visual and print media. On 20-06-2000, partners of M/s. Lulu Gold applied for registration of the trade mark in Class 14 and was granted registration by the Registrar of Trade Marks. Later, the owners of the trade mark assigned the trade mark in favour of the first appellant company in 2016.

17. Appellants in F.A.O Nos.51 and 60 of 2018 (defendants in O.S No.4 of 2018) raised a similar contention that a partnership firm constituted on 31-05-2000 under the name and style “Lulu Sarees” were later challenged its legal entity into an incorporated company under the name and style M/s. Kannur Lulu Sarees and Textiles (Pvt.) Ltd. using the trade mark “Lulu Sarees” under Class 24. The trade name 'Lulu Sarees” was registered under the Act with effect from 31-05-2000.

18. Appellants in F.A.O Nos.59 and 61 of 2018 (defendants in O.S No.5 of 2018) raised almost similar contentions. They also contended that “Lulu Sarees” and “Lulu Gold” have been registered with the Registrar of Trade Marks in the year 2000 and they were using the trade mark in this country extensively by giving advertisements in various media.

19. It is the contention of the appellants that the plaintiff company was incorporated only on 06-09-2004. Plaintiff established “Lulu Centre” in the year 2013 in Ernakulam and they, for the first time, started business venture in India thereafter. It is also contended by the appellants that the plaintiff's obtainment of trade mark registration in Class 42 with the trade name “Lulu Centre” was by some hook or crook without disclosing the existence of “Lulu Sarees” and “Lulu Gold”.

20. Learned counsel for the plaintiff/respondent strongly refuted these allegations. In the plaints, loquacious averments are made to the effect that the plaintiff 's Managing Director and Founder and Chairman had set his foot in Abu Dhabi in the year 1973 and through sheer hard work, determination and personal sacrifice, he built up the business by expanding and diversifying. It is the contention raised by the learned counsel for the plaintiff that from 12-01-1994 onwards Lulu Centre - LLC was established in Abu Dhabi. One native of U.A.E and the plaintiff 's Managing Director were the partners in the business. LuLu Centre LLC, Abu Dhabi was involved in retail sale of stationery, utensils, tools, etc. This is evident from document No.4 produced along with the plaint, contended the learned counsel. It is also contended that the period between 1973 and 1994 witnessed growth of oil industry in the Middle East, which led to significant commercial and economic development in the region. Large number of foreign workers and workers from India constituted a significant portion of the migrant workers in the Middle East. Furthermore, amongst the migrant workers from India, citizens from the State of Kerala constituted a major group. Exponential migration of people from Kerala in pursuit of job resulted in percolating the reputation of “Lulu Centre LLC” established in Abu Dhabi to various parts of the State of Kerala. It is further contended on behalf of the plaintiff that much before commencement of the business by the appellants/defendants, the reputation of the plaintiff's business concern in Abu Dhabi had reached at various parts of India, including the State of Kerala.

21. Learned Senior counsel appearing for the appellants contended that predominant part of the plaint is devoted to eulogize the Managing Director, Founder and Chairman of “LuLu Group International”. According to the learned Senior counsel, individual charisma cannot over ride the legal rights of the parties. True, courts should decide cases only on the basis of established legal principles and proved facts. Reputation, stature etc. of an individual may become relevant only if that is a question to be decided in a case. That is certainly not a relevant aspect in this case and therefore law should apply with equal force to both the parties.

22. Admittedly, the word “LuLu” in Arabic means “Pearl”. It is therefore contended by the learned counsel for the plaintiff that the appellants' contention that “LuLu” is a generic word cannot be countenanced for many legal reasons. It is strongly contended that the word “LuLu” is not used only in jwellery business by the plaintiff, but in all its multifarious activities the same trade name has been used continuously from 1994.

23. Relying on T.V.Venugopal v. Ushodaya Enterprises Ltd and Another ((2011)4 SCC 85) , it has been contended by the learned counsel for the plaintiff that the trade mark “LuLu” is not a generic or descriptive mark. The Supreme Court in paragraph 41 of the above judgment has differentiated between generic, descriptive or suggestive mark as follows; (1) a generic mark can never be a trade mark; (2) a descriptive mark can become a trade mark, if it acquires secondary meaning; and (3) a suggestive mark is inherently distinctive. In that case, the dispute was regarding use of the word 'Eenadu'. In that context in paragraph 58, the Supreme Court held as follows : 

“58. Mr.Sundaram submitted that 'Eenadu' is not a generic name, but in fact would be a 'fancy' name outside the State of Andhra Pradesh and within the State of Andhra Pradesh it is a name which is not in common use, and therefore, would be a 'fancy' name. In any event, 'Eenadu' is not generic in the Trade Mark's sense of the word since it is not the use of the product name itself. What is meant by generic for Trade Mark law is that when you call a cake a cake or a shoe a shoe. When a shoe is called a cake or a cake is called a shoe, it is neither descriptive nor generic. On the contrary, it is 'fancy'. The name 'Eenadu', therefore, for any of the products of the Respondent company would not be a generic name at all. The Appellant overlooks that his complaint as to name being generic can only arise qua product using generic or descriptive name. It is nobody's case that 'Eenadu' is descriptive of Agarbathi.” 

24. It is true that the trade mark “LuLu” cannot be appropriated by the appellants by saying that it is a generic word meaning ''Pearl''. It is to be remembered that ''LuLu'' does not mean “Pearl” in any of the Indian languages, certainly not in Malayalam.

25. Learned Senior counsel for the appellants raised a contention that the actions are barred by limitation by virtue of Article 88 of Limitation Act. It is strongly contended that going by the plaint averments, the plaintiff had come to know of the business run by the appellants with trade names of which ''LuLu'' is an integral part as early as on 29-06-2012. By virtue of Article 88 of the Limitation Act, the suit should have been instituted before 28-06-2015. Hence, it is contended that a suit instituted in the year 2018 is hopelessly barred by limitation. In answer to this contention, learned counsel for the plaintiff contended that infringement and passing off give rise to a continuous cause of action for the plaintiff and therefore the question of limitation does not arise in this case. It is to be remembered that a plea regarding limitation is a vexed question of fact and law, which cannot be decided in these appeals. For considering the question of limitation, court will have to consider the pleadings and other materials placed before it. Therefore this question cannot be decided in these appeals without any factual foundation.

26. Another contention raised by the learned Senior counsel is that the plaint claims are barred by acquiescence. Effect of acquiescence is mentioned in Section 33 of the Act, which reads as follows : 

“33. Effect of acquiescence.- (1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark - (a) to apply for a declaration that the registration of the later trade mark is invalid, or (b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.

(2) Where sub-section(1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.” 

27. On a reading of Section 33 of the Act, it can be seen that the plaintiff's registration was later in point of time than that of the appellants. Whether this provision can be invoked in the given case is a matter to be decided by the court below on appreciating the rival contentions. However, it cannot be considered in an appeal of this nature.

28. Another contention raised by the learned Senior counsel is that the appellants are holders of the trade mark under Classes 14 and 24, whereas plaintiff's registration under four trade names is only under Class 42. Further, the plaintiff's application for registration of the trade name “LuLu” in all 45 classes was not allowed by the authorities. Therefore, the plaintiff is not entitled to claim any relief against the appellants. Per contra, the learned counsel for the plaintiff contended that proceedings are pending before the appropriate authorities in respect of the plaintiff's objection regarding the registration of trade marks by the appellants.

29. Section 29 of the Act deals with infringement of registered trade marks. It is pertinent to remember that both the contestants have registration of the trade name “LuLu” in different classes. On a plain reading of Section 29 of the Act, it can be seen that a registered trade mark is infringed by any person, other than a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. Section 30 (2) (e) of the Act would say that a registered trade mark is not infringed, where the use of a registered trade mark, being one of two or more trade marks registered under this Act, which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. It is contended on behalf of the plaintiff that notwithstanding the said provisions, the plaintiff has a right of action for passing off and infringement. To buttress this contention, reliance is placed on a decision in Clinique Laboratories LLC and Another v. Gufic Limited and Another, 2009 (41) PTC 41 (Del). Interpreting Section 124 of the Act and Order 39 Rules 1 and 2 of the Code, the High Court of Delhi held as follows : 

“8 . In my view, Section 29 of the Act providing for infringement of the registered trademark does not contemplate infringement by another registered proprietor. Sections 29(1), (2) & (4) expressly provide that "registered trademark is infringed by a person who, not being a registered proprietor ..." Though, Section 29(5) which has been newly introduced in the 1999 Act does not use the same language but in my view the same would be irrelevant for the present purposes. Section 30(2)(e) further fortifies the said position by expressly providing that the registered trademark is not infringed where the use being as one of two or more trademarks registered under the Act which are identical or nearly resemble each other and in exercise of the right to use of that trademark given by registration thereof. However, Sections 28(3), 29 & 30(2)(e) cannot be read in isolation. If the intent was that there could be no action for infringement against the registered proprietor, the legislature while giving the right for rectification before the Registrar would not have in Section 31 made the registration as only prima-facie evidence of validity thereof. If that had been the intention all that would have been said is that as long as the registration exists it is valid, without any question of prima-facie or not. Then the courts would have had to wait for the outcome of the rectification proceedings.

9. Registration has been made only prima-facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28(1) while being subject to other provisions of Act, further provides that "registration of the trademark, if valid, give to the registered proprietor" exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1)(b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while further providing for stay of suit in such cases, in Sub-section (5) expressly provided that such stay would not preclude the court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an unescapable conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the court is empowered in such case to pass any interlocutory order. The court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124(5) has thus empowered the court under Section 124(5) to grant injunction against use of a registered trademark also if the court is satisfied of the invalidity thereof. Though in view of Section 31, the test would be much stricter; 

10. In my opinion, unless the provisions are so read, effect cannot be given thereto.

11. Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the court is satisfied otherwise on the basis of material on record and in the facts of the case, the court is empowered to injunct use of registered trademark also. I do not find any reason to limit/restrict the applicability of Sub-section (5) as suggested by the senior counsel for the defendant, in the absence of the legislature providing so. If the legislature had felt that there could be no infringement by a registered trademark, there was no need to provide for such a suit as in Section 124(1)(b) and (i). In fact, Sub-clause (i) of 124 (1) shows that the suit can be instituted even where the rectification proceedings are pending i.e. where the plaintiff is even at the time of institution of the suit aware of the defendant having a registered trademark.

12. I also find merit in the contention of the senior counsel for the plaintiff with reference to Section 31(2) of the Act. Section 31(2) suggests that the court notwithstanding registration being prima-facie evidence of validity as provided in Section 31(1) can hold the registered trademark to be invalid. The court can hold the registration to be invalid, on any ground or for non compliance of any of the conditions for registration provided under the Act. It further provides that if the invalidity of registration is averred for the reason of non compliance of Section 9(1), i.e. of evidence of distinctiveness having not been submitted before the Registrar, then the party pleading validity of registration shall be entitled to give evidence in legal proceedings where validity is challenged, of the mark having acquired distinctiveness on date of registration. Section 32 permits evidence of acquisition of distinctive character within the meaning of Section 9(1) post registration, also being led in such proceedings. It follows that where validity of registration is challenged on grounds other than provided in Section 9(1) of the Act, the test is whether the criteria laid down in such other provisions of the Act, for registration has been satisfied or not. Since, Section 124 otherwise provides for stay of proceedings in such suit and only permits passing an interlocutory order, such finding of invalidity naturally has to be on the touchstone of principles for interlocutory order only and not as at the time of final decision of the suit, in as much as the finding in the rectification proceedings has been otherwise made binding in the suit and on all aspects of validity i.e. under Section 9 as well as under Section 11.

13. Neither counsel has cited any direct judgment on this aspect. Nor have I been able to find any.

14. I thus conclude that a suit for infringement of registered trademark is maintainable against another registered proprietor of identical or similar trademark and in such suit, while staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the defendant can be made by the court, if the court is prima facie convinced of invalidity of registration of the defendant's mark.” 

30. In the case of an action for passing off, it need not wait for orders of the Registrar or the Appellate Board as required in Section 124 of the Act.

31. Reliance is placed on Lupin v. Johnson and Johnson, 2015 (61) PTC 1 (Bom), a Full Bench decision by the High Court of Bombay, wherein it has been held that in cases where registration of trade mark was ex facie illegal, fraudulent or shock conscience of the Court, Court is not powerless to refuse to grant an injunction. It is further held that for establishing these grounds, a very high threshold of prima facie poof was required. Again, it is open to a Court to go into the question of validity of registration of plaintiff's trade mark for the limited purpose, to arrive at a prima facie finding.

32. Learned counsel appearing for the plaintiff contended that “LuLu Group International” is one economic entity having world wide reputation, as their presence in one form or other, as a group, could be perceived in various countries. Further, “LuLu Group International”, as a collective entity is involved in various business activities and therefore they should be treated as one economic entity. Relying on a decision in Sakthi Traders v. Sakthi Sugars and Another, 2004 (29) PTC 273 (IPAB), learned counsel for the plaintiff contended that merely because their registration of trade mark in India was at a later point of time, the plaintiff's right to get reliefs against infringement and passing off cannot be denied.

33. Learned counsel on both sides relied on a decision of the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited and Others, (2018) 2 SCC 1. Appellant before the Supreme Court (plaintiff) had launched the world's first commercial hybrid car called “Prius” in Japan in the year 1997 and in other countries during 2000-2001. It had claimed registration of the trade mark “Prius” in different countries as early as the year 1990. The mark “Prius” was adopted by the plaintiff in India in the year 2009 and the above car was launched only in the year 2010, whereas the same mark was adopted by the defendants in the year 2001 and registration thereof was obtained in the year 2002-2003. In the above case, the Supreme Court considered the doctrine of territoriality. Learned counsel for the plaintiff relying on the above decision contended, based on paragraph 34, that the plaintiff's reputation, spilled over from Middle East, has reached Kerala much before registration of the mark by the appellants. Therefore, the plaintiff has primacy over the mark. In paragraph 34, the following observations are made by the Supreme Court. It reads as follows : 

“34. To give effect to the territoriality principle, the courts must necessarily have to determine if there has been a spillover of the reputation and goodwill of the mark used by the claimant who has brought the passing-off action. In the course of such determination it may be necessary to seek and ascertain the existence of not necessarily a real market but the presence of the claimant through its mark within a particular territorial jurisdiction in a more subtle form which can best be manifested by the following illustrations, though they arise from decisions of courts which may not be final in that particular jurisdiction.” 

34. On the contrary, the learned counsel for the appellants relying on paragraph 19 of the same decision contended that laches and delay on the part of the plaintiff in instituting the suit should be taken as a reason for disallowing the reliefs.

35. Learned counsel for the plaintiff relying on a decision in S. Syed Mohideen v. P.Sulochana Bai, (2016) 2 SCC 683 contended that registration of a trade mark merely recognizes rights which are already pre-existing in common law and does not create any new right. Registration of trade mark, is no defence to passing off action under the Act.

36. After considering the various provisions of the Act, the observation by the High Court of Delhi in Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250, was approved by the Apex court in the above decision. In paragraph 33.2. It is observed as follows : 

“33.2. We uphold the said view which has been followed and relied upon by the courts in India over a long time. The said views emanating from the courts in India clearly speak in one voice, which is, that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between the two registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the court to determine whose rights between the two registered proprietors are better and superior in common law which have been recognised in the form of the registration by the Act.” 

37. Learned counsel for the plaintiff relying on a decision in George V. Records, SARL v. Kiran Jogani and Another, 2004 (28) PTC 347 (Del), contended that popularity of the trade name “LuLu” had spilled over to India from Middle East much before the appellants/defendants started business in India with the same name. The defendants must be aware of the reputation of the plaintiff at the time of user of the trade mark. Despite the fact that the plaintiff did not do business in this country at a time when the defendants got registration, adoption of the name by the defendants could not be said to be honest and therefore the plaintiff is entitled to get injunction orders in their favour. It is also contended by the learned counsel for the plaintiff that in actions of this nature grant of ad interim injunction is the rule, because invasion of the plaintiff's proprietary right over the mark and passing off goods and services by the defendants by practicing deception are to be prevented at the threshold.

38. Per contra, learned Senior counsel for the appellants contended that strong reasons are established by the appellants to show that their registration of trade mark prior in point of time has to be respected and their rights are to be protected in the interest of justice. The materials available on record at this stage would show that the appellants obtained registration of the mark in the year 2000, admittedly prior to the registration of the trade mark under the Act by the plaintiff. Registration obtained by the contesting parties are under different classes. Prima facie, there are materials to hold that the appellants had started business with a trade name “LuLu” as a component in and around 2000. It is true, a mere registration prior in point of time will not confer any absolute right on the appellants to defeat the legal rights of the plaintiff, if it establishes spilling over of reputation of “LuLu LLC, Abu Dhabi”. Those aspects are to be considered by the trial court elaborately in the light of the pleadings and evidence. In an appeal of this nature, it is legally impossible to consider such vexed questions of fact.

Having regard to the facts and circumstances, and after hearing the learned counsel elaborately, I am of the view that the interim orders passed by the learned Single Judge, suspending the ad interim orders of injunction passed by the trial court, should be maintained until disposal of the injunction applications by the trial court on merit. In my opinion, in the facts of this case, such a course has to be adopted mainly for the reason that the appellants/defendants were doing business for a considerable length of time with “LuLu” as part of their trade name and the action against them was brought in only in the year 2018. However, this will not stand in the way the plaintiff claiming enforcement of its legal right, if it establishes legal grounds before the trial court.

In the result, the appeals are disposed as above and the court below is directed to hear and dispose of the temporary injunction applications in all the suits, on the basis of the pleadings and evidence and also in accordance with law. It is made clear that this Court has not expressed any final opinion regarding merits of the injunction applications. The trial court shall take up the matter on 28th May, 2018 and dispose of the injunction application within one month thereafter.