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Judgment
Ram Prasanna Sharma, J
This miscellaneous appeal preferred under Section 104 read with Order XLIII Rule 1(r) read with Section 151 of the Code of Civil Procedure, 1908
is against impugned order dated 06.8.2019 passed by District Judge, Bilaspur in Civil Suit No.34A/2019 wherein the said Court dismissed the
application filed by the appellant under Order 39 Rule 1 & 2 read with Section 151 of CPC.
As per the appellant, respondent No.1 was incorporated as Private Limited Company under the Companies Act, 1956 by the Registrar of the
Companies under the name of Black Diamond Track Parts Pvt. Ltd. and main object was to manufacture, assemble, sell, purchase, job, repair,
fabricate develop and otherwise deal in undercarriage and track parts of all mining machineries and their spares, chains, conveyor structures, steel
structures, steel and its components and any of the bye-products which will be obtained in the process of manufacturing. The appellant/plaintiff is
registered in the name of Black Diamond Motors Private Limited which manufactures bodies of Tippers, Tip Trailers etc. Both are distinct and
separate corporate entities under the Companies Act. On 15.9.2005/21.9.2005, the appellant/ plaintiff was incorporated as Private Limited Company
and in the month of December 2006 they commenced its operation. The appellant company was issued certificate of Registration of Trade Mark in
Class 12 which is exclusively for Tipper, Tip Trailers, Flat Bed Trailers , Ash Handling Bulkers & Trailer made Carriers. On 31.03.2018, respondent
No.1 applied for registration of Trade Mark under Class-12 which is pending before Registrar, Trade Mark, Mumbai. The respondents with malafide
intent to cause loss of goodwill and personal monetary gain, copied the mono and sticker of the appellant company and had put up an identical sticker
bearing the registered Trade Mark of the appellant company. Aggrieved by the act of the respondents, the appellant company instituted Civil Suit
before the trial Court for grant of declaration and permanent injunction and also to restrain the respondents from using the identical name and Trade
Mark, but the trial Court rejected the same contrary to the factual matrix and legal aspects of the matter. As per the appellant, he has made prima
facie case, balance of convenience and irreparable injury in his favour, therefore, injunction ought to have been granted by the trial Court in favour of
the appellant. He placed reliance in the matters of Ruston and Hornby Ltd. vs. Zamindars Engineering Co. reported in AIR 1970, SC 164;9
Consolidated Food Corporation vs. Brandon and Co. Private Ltd. reported in AIR 1965 Bombay 3;5 Ramdev Food Products Pvt. Ltd. vs. Arvindbhai
Rambhai Patel & Ors. reported in AIR 2006 SC 3304 and Dhunseri Tea & Industries Ltd. vs. Dhansiri Plantation Pvt. Ltd. reported in AIR 2008
(NOC) 2271 (Cal).
On the other hand, learned counsel for the respondents submit that their company has been established since 28.01.1999 which was incorporated as
Private Limited Company and started business initially in the year 1983. Father of respondent No.2 namely Shri Parvinder Singh Bhatia started
business in the name of Black Diamond Industries, a propriety firm having registered address at Korba, Chhattisgarh and later on the company
became a Private Limited Company with a name of Black Diamond Equipments which means the word 'Black Diamond' is collective mark under the
Trade Mark Act and under the name of Black Diamond the answering respondents are running their business since 1983. It is further submitted on
behalf of the respondents that one of the Director of their company namely Shri Pushpender Singh Bhatia has resigned from the Company on
31.3.2014 and now he is the Director of the appellant company. As per the respondents, this important fact was suppressed by the appellant before
the trial Court and the same was duly noted by the learned trial Court in the impugned order. A copy of the resignation of Director Pushpender Sing
Bhatia is filed and marked as Annexure-R/4. It is also submitted that one of the Director of the Company namely Charan Pal Singh Bhatia has also
resigned from the respondent company on 05.8.2019. As the brand name 'Black Diamond' is used by the respondents side since 1983, they are the
bonafide users of that name and having goodwill since 1991, whereas the appellant company got registered in the year 2006 and using brand name
since 2009 which is subsequent to the use of the respondents. As the respondents Company is the prior user of the brand name, it cannot be prevented
from using the said brand. Therefore, it is not a case where interference of this Court is required with the order of the trial Court. To support their
arguments, learned counsel for the respondents placed reliance in the matters of Best Sellers Retail (India) Private Limited vs. Aditya Birla Nuvo
Limited and Others. reported in (2012) 6 SCC 792; Seema Arshad Zaheer and Others vs. Municipal Corpn. Of Greater Mumbai and Others. reported
in (2006) 5 SCC 282; M/s. R.J, Components and Shafts vs. M/s. Deepak Industries Limited & Ors. reported in 2017 SC (Del) 3408W; ander Ltd.
And Another vs. Antox India P. Ltd. reported in 1990 (Supp) SCC 727; Neon Laboratories Limited vs. Medical Technologies Limited and Others,
reported in (2016) 2 SCC 672 and S. Syed Mohideen vs. P. Sulochana Bai reported in (2016)2 SCC 683.
The first question for consideration before this Court is as to which company is using brand name Black Diamond first in time. Prima facie from the
documents produced by both sides, it appears that the respondents side is using the brand name Black Diamond since 1991, while the suit is filed by
the appellant company on the basis of registration of Trade Mark in the year 2009. Therefore, the respondents side is prior user of the Trade Mark in
question. There is nothing on record to show that any of the customer of the appellant side is confused with the Trade Mark of Black Diamond and
shifted to the respondents company. The appellant himself was the Director of the respondent Company for some duration but that fact was not
submitted before the trial Court that is why the trial Court noted that basic facts have been suppressed in the present case. When the appellant himself
was the Director of the respondent Company he was fully aware of the use of Trade Marck 'Black Diamond' in that capacity. Creation of goodwill is
not a short term job. It takes time for creation of goodwill and its sustainability. When the respondents side started business in the year 1991, having
created goodwill and sustainability for that long period. Therefore, rights of prior user are recognised superior than that of registration of the Trade
Mark which is done in the year 2009. Even after registration, the appellant cannot disturb with the rights of the prior user. Rights conferred by
registration are subject to the rights of the prior user of the trade mark. As per Section 34 of the Trade Mark Act, 1999 a proprietor of a trade mark
does not have the right to prevent the use by another party of an identical or similar mark where that user commenced prior to the user or date of
registration of the propriety.
It is not a case where the trial Court has exercised its jurisdiction arbitrarily or perversely or ignored the settled principles of law regulating grant or
refusing interlocutory injunction. Looking to the facts and circumstances of the case, it appears that the appellant side was earlier the Director of the
respondent company and therefore, the appellant side has no prima facie case against the prior user. Again balance of convenience is not in favour of
the appellant as respondent side is prior user of the trade mark. As both sides are running the business in the same field and in absence of any
evidence regarding shifting of customer from one side to another, no irreparable injury is caused to the appellant. The finding arrived at by the trial
Court is not liable to be interfered with.
Accordingly, the appeal is liable to be and is hereby dismissed.