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Judgment
Prabha Srideven, J
This matter has been urgently moved for grant of stay after service on the Counsel for the respondent.
2 . The application is for removal of the mark ""Babal Hind"" under No. 1359845 in Class 30. According to the applicant, the applicant adopted the mark
Gateway of India"" in 1988 in respect of export and sale of rice. According to the learned Counsel, this mark is exclusively identified with the
applicant's quality products. According to the applicant, he also adopted the mark ""Babal Hind"" in the year 2003. ""Babal Hind"" is the Arabic translation
of the mark ""Gateway of India"". It is the grievance of the applicant that the respondent has adopted an identical mark ""Babal Hind"". The applicant has
alleged that the user was wrongly published with regard to respondent's application No. 846009. There is another registration in the name of the
respondent in application No. 1120956. Applications have been filed by the applicant in respect of other marks and they are all prevailing. The
respondents knowing fully well that ""Babal Hind"" means ""Gateway of India"" and/or ""India Gate"" filed the application without complying with the
mandatory provisions of the law or informing the Registrar about the meaning of the word ""Babal Hind"". The mark proceeded to registration without
the respondent providing translation of the word ""Babal Hind"" or imposing any disclaimer. The respondent has filed a Civil Suit against the third parties
who have prior registered rights in the trade mark ""India Gate"" where the respondent has alleged that they are the registered proprietor of the mark
Babal Hind"" which is the impugned mark. According to the applicant, their rights are superior to the rights claimed by the respondent because of prior
adoption of the mark. Therefore they prayed for removing the registration. The applicant has obtained registration on 28.4.2000 with effect from
14.12.1990 of the mark ""Gateway of India"" with device. It was published in the Journal in 1996, the user was claimed from 1.3.1988. The respondent
preferred an application for device in 2006 applied for on May 27, 2005 as a ""proposed to be used"" mark. In the written statement filed by the
respondent herein in the Suit C.S. (O.S.) No. 1180/2009 they have stated that ""Babal Hind"" in Arabic means ""India Gate"". It is also stated that the
respondent has been using the mark since 27.5.2005 and the Suit is not maintainable inter alia under Section 32(e) of the Act. The respondents trade
mark has been widely advertised in prominent journals and the applicants have been aware of it.
3 . The respondents application for ""India Gate"" in application No. 846009 dated March 17, 1999 claiming user from 1.1.56 was advertised in the
journal on December 20, 2004. They have filed a TM 16 application for amendment of the counter statement claiming that the user was wrongly
mentioned. The Learned Counsel appearing for both the sides reiterated their respective stand and the learned Counsel for the respondent relied on
several decisions.
The decisions cited basically set out the position that
(i) 2001 PTC 797 (Del)(DB) - B.L. & Co. and others, Petitioners Vs. Pfizer Products Inc., Respondent -""...while the delay in institution of a suit for
an action for passing off may not be fatal, it is one of the important and relevant considerations before granting an ex-parte/interlocutory injunction.
(ii) 2000 PTC 326 - Om Prakash Gupta, Plaintiff Vs. Parveen Kumar & Anr., Defendants: The attempt to obtain interim injunction which is delayed
cannot be granted.
Allegations of fraud were also made against each other. But the main trump card of the applicant is an order of stay granted by us in M.P. No. 170
of 2011 in ORA 160/2011/TM/DEL (Modern Flour Mills Pvt. Ltd., Applicant vs. KRBL Ltd. & Another Respondents). There the mark was the same
mark. Three matters have been filed where the controversy is almost identical. ORA/145/2011/TM/DEL - M/s. KRBL Limited, Applicant Vs. M/s.
Vikram Roller Flour Mills Limited & Others, Respondents was filed by the respondent herein. The mark was ""India Gate"". We refused to grant stay
because prima facie the evidence was unreliable. This order is dated 7.10.2011 in M.P. No. 152/2011 in ORA/145/2011/TM/DEL. The respondents in
ORA/145/2011/TM/DEL also filed rectification application. In M.P. No. 170/2011 in ORA/160/2011/TM/DEL filed by Modern Flour Mills Pvt. Ltd.,
the following extrac from the order is relevant:
5 . .......But considering the submissions made we are prima facie of the opinion that had the respondent disclosed BABAL HIND meant India Gate
in Arabic, the Registrar may have seen all the cited marks India Gate and his decision to grant registration may have been different.
Therefore, we dispose of the miscellaneous petition as follows:
The effect of the registration of the mark Babal Hind shall be stayed as regards applicant on the basis of the registered mark ""BABAL HIND"" which
is the subject matter of the present rectification proceedings.
The applicant herein claims that he is entitled to an identical order. In ORA/156/2011/TM/DEL filed by M/s Vikram Roller Flour Mills Ltd., Applicant
Vs. M/ KRBL Limited, Respondent, an undertaking was given by the respondent herein and the extract are the following:
However, to avoid protracted litigation the learned counsel for respondent came forward to give this undertaking and the same is recorded:
The respondent will not seek any relief against the applicant on he basis of the registered mark ""BABAL HIND"" which is the subject matter of the
present rectification proceedings.
It is made clear that this undertaking will not preclude the respondent from asserting any common law rights that they may have on the basis of their
alleged user of the mark ""INDIA GATE"" with or without device from 1993. Recording this, the miscellaneous petition No. 167/2011 is disposed of. No
order as to costs.
In ORA/156/2011/TM/DEL and ORA/160/2011/TM/DEL the mark was ""Babal Hind"". I both those cases, the relief was restricted to the respective
applicants. We have to see whether the applicant herein deserves the grant of stay.
An interim order of stay is a matter of discretion and it will depend on the facts of the particular case and merely because interim stay was granted
in favor of another party in respect of registration of one mark it does not automatically follow that anyone attacking the same mark will obtain an
order of stay. We will have to assess the prima facie case, balance of convenience, irreparable hardship and irretrievable injury. Contrary stands have
been taken in the Suit and the ORA, both by the applicants and the respondents. When the applicant wants a stay, the Court should be moved at the
earliest juncture. In this case the applicant has taken his own time to move the stay application. The applicant has approached this Board after two
years. They had knowledge of the respondents registration in the year 2009 when the respondents filed their Written Statement in the suit filed by the
applicant. The respondent had stated about the impugned registration. The respondent had filed an application in ORA/150/2009/TM/DEL for
rectification of the applicants trade mark under No. 541858 in Class 30 where again the impugned registration was mentioned. Having not taken any
steps for two years, we do not think there is any urgency for any interim relief to be granted. The balance of convenience is not in favor of the
applicant. We may arrive at a conclusion based on the evidence and the pleadings. But right now we are concerned with the application for interim
relief. The applicant does not deserve the discretionary relief of stay and it is therefore dismissed.