Smt. Harbans Kaur vs Gurmarg Appliances Pvt. Ltd. and Others

Shiv Narayan Dhingra, J.

IA No. 11476/2007 & 13684/2007

By this order, I shall dispose of the above two applications under Order 39 Rules 1 & 2 CPC made by the plaintiff and defendant respectively. In both the above applications the prayer made is that plaintiff/defendant be restrained from using the trademark "Tanashi".

The plaintiff�s case is that plaintiff was carrying on business of manufacturing and trading electrical and electronic goods under the trademark "Tanashi" a new coined and invented word of the plaintiff�s firm and plaintiff was using the same since 1993. This trademark was being used in respect of electrical and electronic goods. The trademark "Tanashi" was also got registered by the plaintiff in Class-9 vide trademark registration number 1290305 with respect to DC Micro Motors, VCDs, DVDs, TVs, telephone codeless, amplifiers, home theatre appliances etc. The plaintiff appointed defendant No. 2 M/s Gurmarg International as a dealer for the purpose of marketing and selling the products of the plaintiff under trademark "Tanashi" in the region of Punjab, Haryana, Himachal Pradesh and Jammu and Kashmir. The trademark "Tanashi" was previously being used by a firm viz Reliance Plastic Industries and this trademark was assigned to the plaintiff vide assignment deed dated 29th January 2003. The firm Reliance Plastic Industries had earlier applied for registration of this trademark vide application number 963980 in Class-9. However, due to delay on the part of the Registrar of Trademarks in processing this application, the plaintiff moved fresh application for registration of this trademark and the fresh application was allowed. The plaintiff came to know during the course of business that defendant had issued a caution notice in the Network newspaper dated 5th September 2007 where the trademark "Tanashi" was claimed by defendant No. 1 and it was claimed that defendant No. 1 was the registered proprietor of the trademark "Tanashi". The plaintiff then learnt about defendant�s No. 1 being associated with defendant No. 2 and found that the plaintiff�s trademark "Tanashi" had been hijacked by defendant No. 1 and 2 and defendants No. 1 and 2 formed a company under a tradename "Tanashi" and started doing business under the name "Tanashi" Group of Companies and they adopted "Tanashi" as a part of their firm name as well. The defendants started manufacturing spurious and fake goods under the trade name "Tanashi" causing serious dent to reputation of plaintiff.

The defendants in the written statement-cum-counter claim had taken the stand that the plaintiff was pirator and had instituted the suit to camouflage its own improprieties. It is stated that the trademark "Tanashi" was adopted by Mr. Baldev son of Shri Gurender Singh in the year 2000 and the business was being done in the name of Asian Trade Link. The trademark was assigned to defendant No. 4 who used it openly and specifically publicized the same through, various media. Defendant No. 1 started marketing the products of defendant No. 2 and 4 under the trademark "Tanashi" in the year 2003. The products were being got manufactured from different sources including the plaintiff. The trademark "Tanashi" was never assigned to the plaintiff and defendant No. 2 was never appointed as a dealer by the plaintiff. The plaintiff, for the some period got its products manufactured from the plaintiff without any marking and defendant used to put the trademark "Tanashi" and do the business under their trademark "Tanashi". The plaintiff also used to manufacture the goods for other brands such as Akai, Trinity, Bush etc.

It is also submitted that the defendants got the trademark "Tanashi" registered in its name. The application of the defendant was published in the trademark Journal and the objections were invited from all the parties but the plaintiff did not file any objection against defendants� trademark "Tanashi" and trademark "Tanashi" was ultimately registered in the name of defendants as their registered trademark. The counterclaim is made by the defendants that it was plaintiff who was passing off its goods as that of the defendants.

Both parties have filed their documents showing that the trademark "Tanashi" was registered in the name of both parties. I have also gone through different photographs, bills and invoices placed on record. In view of Section 28 of the Trademarks Act, 1999 where two or more registered proprietors of an identical trademark exist, the exclusive right to use the trademark to any of the parties is not available and both the parties can use the trademark. The two registered proprietors of trademark cannot bring an action of infringement against each other. However, they can bring action of infringement of trademark only against a third party. Similarly the action of passing off the goods also would not lie because both the plaintiff and defendants are marketing their goods under their own company name using the registered trademark "Tanashi". There are no allegations that misrepresentation about the manufacturer was being made.

I, therefore consider that both the applications, one moved by the plaintiff and other by defendants have no force and are hereby dismissed.

Crl. M No. 14610/2007

This application u/s 340 of Code of Criminal Procedure has been made by the plaintiff to initiate action u/s 191, 192, 193, 196, 199, 177 and 182 of Indian Penal Code against the defendants/non applicants.

I consider that it would be appropriate to decide this application at the end of the trial when the Court would be in a position to ascertain as to who made false assertions.

CS(OS) 1987/2007

List this matter before the Joint Registrar on 30th April, 2009, the date already fixed for cross examination of witness.