Trackon Couriers Private Limited v. B. N. Srinivas

14. He further submitted that, in addition to the above composite/label marks, the Plaintiff had also secured registration for the mark “TRACKON COURIERS PRIVATE LIMITED” (word per se) under Registration No. 5238333 in Class 39, applied for on 8th December 2021 with a user claim of that date. He, however, submitted that this had inadvertently not been annexed along with the Plaint. He thus submitted that, given the fact that the Plaintiff was the registered proprietor of the TRACKON Marks of which “TRACKON” was a prominent, essential and leading feature, the Plaintiff was entitled to the statutory protection afforded to a registered proprietor of a registered label mark under the provisions of the Trade Marks Act, 1999.

15. In support of his contention that the Plaintiff had immense goodwill and reputation in the TRACKON Marks, Mr. Dhond placed reliance upon (i) the extensive use, promotion and publicity of the TRACKON Marks in relation to the

Plaintiff’s services through prominent and widely circulated publications such as The Economic Times, Business World and The Times of India; (ii) the continuous use of the TRACKON Marks as part of the Plaintiff’s domain name and on the Plaintiff’s website “www.trackon.in” since the year 2005, through which the Plaintiff had consistently promoted its services under the said marks; (iii) the active and continuous use of the TRACKON Marks across multiple social media platforms, further reinforcing public recognition and recall; (iv) the substantial investments in advertising and business promotion, including expenditure of approximately INR

1.57 crores towards advertising and INR 5.45 crores towards business promotion, even for the limited period commencing from 2018; and (v) the consistently high and growing turnover figures, with the Plaintiff’s turnover for the year 2023–2024 alone exceeding INR 404.28 crores. Mr. Dhond highlighted that the Defendant had not even seriously disputed the Plaintiff's immense reputation and goodwill other than making a vague and general denial.

16. Mr. Dhond then submitted that the Plaintiff was constrained to institute the present Suit as, notwithstanding the termination of the business association with the Defendant and assurances given by the Defendant to change its name, the Defendant was using the impugned mark which was virtually identical and/or deceptively similar to the TRACKON Marks in respect of services identical to those offered by the Plaintiff.

17. Mr. Dhond then pointed out that the Defendant had not even disputed the similarity of the marks or the services. He thus submitted that, given the fact that the Plaintiff was undeniably the registered proprietor of the TRACKON Marks of which “TRACKON” was the prominent, essential and leading feature, use of the impugned mark by the Defendant would clearly amount to both, infringement and passing off.

18. Mr. Dhond then invited my attention to the chain of correspondence exchanged between the Plaintiff and the Defendant between 28th October 2023 to 6th November 2023, which, according to him, clearly and unequivocally established that the Defendant had agreed to stop using “TRACKON” and change its name. He pointed out that in an email dated 12th October 2023, the subject of which was "Change of Name", the Plaintiff had specifically called upon the Defendant to stop using “TRACKON” and change its name and the Defendant had by an email dated 28th October 2023, expressly stated that it had no objection to the contents of the said emails while seeking clarification only on certain ancillary issues.

19. Mr. Dhond submitted that the subsequent email exchanges between the parties were confined strictly to operational and commercial issues and did not, in any manner, amount to a withdrawal or rescission of the Defendant’s consent to change its name. He further pointed out that the minutes of the meeting held on 3rd November 2023 recorded that the Defendant had agreed to change its name. Mr. Dhond pointed out that, the Defendant had, infact replied to the email dated 6th November 2023 sent on the same email thread, and had raised only certain commercial and operational concerns, while categorically recording that “the rest is agreed as per the discussions.”

20. Mr. Dhond submitted that the aforesaid correspondence clearly established an unequivocal acceptance on the part of the Defendant to stop using “TRACKON”. He further submitted that the Defendant had neither disputed the authenticity of these emails nor meaningfully dealt with the same in the pleadings, except for a bare and evasive denial in the Affidavit in Reply. He pointed out that even this denial was without any reference to, much less any explanation for, the Defendant’s own emails. In these circumstances he submitted that the Defendant’s adoption and use of the impugned mark “TRACK-ON” was plainly dishonest and lacking bona fides.

21. He then pointed out that the defences taken in the Affidavit in Reply were entirely on the basis of an unsubstantiated plea of prior use, unsupported by any evidence, and that the defences raised were illusory, devoid of merit, and failed to dislodge the Plaintiff’s clear case of infringement and passing off. Mr. Dhond pointed out that the Defendant, in the application for registration of the impugned mark, filed on 2nd July 2024 the had stated that the same was on a “proposed-to-beused” basis, which itself demonstrated the falsity of the Defendant’s claim of prior use.

22. Mr. Dhond then submitted that although the Defendant had asserted in the Affidavit in Reply that there existed a prior sole proprietorship under the name “TRACK-ON COURIERS & CARGO SERVICES”, which was alleged to have been subsequently converted into the present partnership, there was no reference whatsoever in the Partnership Deed, or in any contemporaneous document, to any such prior sole proprietorship or to its alleged conversion into a partnership.

23. He submitted that this omission was fatal to the Defendant’s case since, if, in fact, a sole proprietorship had existed and had been taken over or converted into a partnership, the Partnership Deed would have contained an express recital to that effect. He submitted that the complete absence of any such recital or reference clearly demonstrated the fact that the Defendant’s contention regarding an alleged prior sole proprietorship was false, self-serving, and had been conjured up only to fabricate a false claim of prior use.

24. He also pointed out that, despite asserting use of the impugned mark since 1998, the Defendant had failed to produce a single document in support of such alleged independent or prior use. Mr. Dhond therefore submitted that the plea of prior or independent use was plainly false, a rank afterthought, and must necessarily be rejected as such.

25. He submitted that, in view of the Plaintiff’s undisputed prior rights, the identity of the competing marks and services, the Defendant’s dishonest adoption with full knowledge of the TRACKON Marks, the admitted permissive use coupled with an express undertaking by the Defendant to change its name, and the complete absence of any equitable defence, the Plaintiff has clearly established a case for the grant of interim relief, both in law and in equity. Submissions on behalf of the Defendant:

26. Dr. Tulzapurkar, learned senior counsel, opposed the present Interim Application essentially on three grounds (A) this Court did not have jurisdiction, (B) the Plaintiff had pleaded an inconsistent case, and (C) the Plaintiff had suppressed material documents.

27. Mr. Tulzapurkar submitted that the Plaintiff was not entitled to any reliefs since this Hon’ble Court did not have jurisdiction to entertain the present Suit. He pointed out that the Suit was for infringement and passing off and that insofar as the claim for infringement was concerned, the Plaintiff's contention was that the Plaintiff carries on business in Mumbai. He pointed out that the Plaintiff had, in paragraph 30 of the Plaint, inter alia, stated as follows:

Mr. Tulzapurkar then pointed out that, in the Petition seeking leave under Clause XII of the Letters Patent, by which the Plaintiff had sought to combine the causes of action for infringement and passing off, the Plaintiff had made the following averments: “i. That the Plaintiff has an office within the jurisdiction of this Hon’ble Court at the address mentioned in the cause title, and that the cause of action has substantially arisen within the jurisdiction of this Court; ii. That since the Defendant is located outside Mumbai and both parties provide services outside Mumbai, part of the cause of action has arisen outside the jurisdiction of this Hon’ble Court; iii. That the cause of action insofar as passing off is concerned has arisen outside the jurisdiction of this Hon’ble Court; and iv. That the Plaintiff seeks to combine the reliefs of passing off with infringement to avoid multiplicity of proceedings and that, upon grant of such leave, this Court would have jurisdiction to try the reliefs relating to passing off.” Basis the above, Dr. Tulzapurkar submitted that it was evident that the Plaintiff had sought to invoke the provisions of Section 134(2) of the Trade Marks Act, 1999, to institute the present Suit for infringement in this Court solely on the ground that the Plaintiff has an office in Mumbai. He, however, pointed out that the Plaintiff’s registered office is in Delhi and that the Plaintiff’s Mumbai office is neither the corporate office nor the principal place of business. He thus submitted that the jurisdiction of this Court could not be invoked under Section 134 of the Trade Marks Act, 1999.

28. Dr. Tulzapurkar then placed reliance upon the judgment of the Hon’ble Supreme Court in Indian Performing Rights Society Limited v. Sanjay Dalia and Another[6], to submit that the Supreme Court had categorically held that Section 134(2) must be construed in a manner that prevents the mischief of a Plaintiff dragging a Defendant to a forum which has no real or substantial connection with the dispute, particularly where the cause of action has arisen elsewhere or where the Defendant does not carry on business. He further pointed out that the judgment of the Hon’ble Supreme Court in Indian Performing Rights Society Limited had been consistently followed, including in the decision of Manugraph India Limited v. Simarq Technologies Pvt. Ltd.[7]

29. He then pointed out that the Plaintiff had sought to rely upon a statement appearing on the Defendant’s website, which mentioned the names of certain entities, including one based in Mumbai, in an attempt to suggest that the Defendant has an office in Mumbai or otherwise carries on business within the jurisdiction of this Hon’ble Court. He submitted that this contention was wholly untenable and contrary to the Defendant’s categorical stand that the said entities were not agents of the Defendant, nor were the offices those of the Defendant. Therefore, he argued that the Plaintiff implicitly accepted that the Defendant does not conduct business within this Court's jurisdiction and had thus sought leave under Clause XII of the Letters Patent.

30. He further submitted that the mere appearance of an individual name or an entity on the website of the Defendant does not, ipso facto, render such an individual or entity to be an agent of the Defendant. He submitted that it must be shown that such individual or entity is an exclusive agent, failing which no inference can be drawn that the Defendant carries on business in Mumbai. In support of this contention, he placed reliance upon the decision of the Hon’ble Supreme Court in Dhodha House v. S.K. Maingi.[8]

31. Dr. Tulzapurkar then submitted that, on the Plaintiff’s own showing, the cause of action for passing off was required to be combined with the cause of action for infringement, and that the Plaintiff had failed to obtain the requisite leave for doing so as per Clause XIV of the Letter Patent. He submitted that, in the absence of such leave, this Court lacked jurisdiction to entertain the present Suit.

32. Dr. Tulzapurkar thus submitted that the Plaintiff had failed to establish, either in its pleadings or otherwise, that any part of the cause of action had arisen within the jurisdiction of this Hon’ble Court.

33. Dr. Tulzapurkar then submitted that the Plaintiff was not entitled to any interim reliefs on account of the inconsistent and contrary pleas taken. He submitted that the Plaintiff had, in the course of oral arguments, advanced a case which was entirely different from and directly contrary to the case pleaded in the Plaint. In particular, he pointed out that while the Plaintiff had argued that the Defendant was permitted to use “TRACKON” as a permissive user, the Plaintiff had in paragraph 13 of the Plaint categorically stated, “The Plaintiff has at no point expressly or implicitly permitted the Defendant to use the TRACKON Mark or any part thereof.”

34. Dr. Tulzapurkar further submitted that the Plaint proceeded entirely on the footing that the Defendant’s use of the impugned mark “TRACK-ON” was illegal and unlawful from its very inception and was completely silent on any case of permissive use. On the contrary, he submitted that the Plaint contained clear and categorical averments expressly negating the grant of any licence or permission by the Plaintiff to the Defendant. He therefore submitted that the Plaintiff cannot be permitted to advance a case that is wholly inconsistent with, and directly contrary to, its pleadings. In support of his contention, he placed reliance upon the decision of the Hon’ble Supreme Court in Bachhaj Nahar v. Nilima Mandal & Another.[9]

35. Dr. Tulzapurkar also then relied upon the decision of the Hon’ble Supreme Court in Ram Sarup Gupta (Dead) by LRs v. Bishun Narain Inter College & Others10 to submit that although Courts have cautioned against adopting an unduly technical approach when construing pleadings, no such latitude can be afforded where the argument advanced is directly contrary to the pleadings. He reiterated that paragraph 13 of the Plaint expressly negates any grant of permission or licence to the Defendant. He also placed reliance on the decision of the Hon’ble Supreme Court in Commissioner of Central Excise and Customs & Another v. Reliance Industries Limited11, to submit that a party cannot be permitted to argue a case contrary to its pleadings. He submitted that the present case stands on an even stronger footing since the Plaintiff had advanced arguments which were not only absent from the pleadings but are also wholly inconsistent with and directly contrary to the case pleaded in the Plaint.

36. Dr. Tulzapurkar further submitted that the Plaintiff’s contention that the Defendant was an agent of the Plaintiff and was, on that basis, permitted to use the expression “TRACKON” had been raised for the first time during arguments. He pointed out that the Plaintiff had, in paragraph 2.[2] of the Plaint, merely stated, “the Defendant is a former business associate of the Plaintiffs, who was doing business in the name of ‘TRACK-ON COURIER & CARGO,” and in paragraph 7, “the Defendant is a former business associate/partner of the Plaintiff who was doing business in the name of TRACK-ON COURIER & CARGO". He therefore reiterated that the Plaintiff’s arguments of permissive user were contrary to the pleadings and therefore must be disregarded.

37. Dr. Tulzapurkar then submitted that, had the Plaintiff pleaded a case of permissive user/licence, the Defendant would have had the opportunity to place material on record to demonstrate, inter alia, that (i) any such alleged permissive licence was contrary to law, particularly in the absence of a written agreement as contemplated under the Trade Marks Act, 1999; (ii) there was no connection in the course of trade between the Plaintiff and the Defendant; and (iii) no control whatsoever was exercised by the Plaintiff over the Defendant’s use of the mark or trade name. He thus submitted that, by failing to plead any case of permissive use, the Plaintiff had deprived the Defendant of an opportunity to meet such a case. He submitted that a party cannot be deprived of a fair opportunity to meet such a case.

38. He then submitted that, even assuming that the Defendant’s use of the mark could be regarded as a permissive user, there was admittedly no written agreement between the parties granting such permission. He submitted that, in law, a permissive user or licence can be recognised only when there is a written agreement and such agreement establishes a connection in the course of trade between the licensor and the goods or services in respect of which the trade mark is used. In support of his contention, he placed reliance on the decision of the Hon’ble Supreme Court in Gujarat Bottling Co. Ltd. & Others v. Coca Cola Co. & Others12.

39. Dr. Tulzapurkar submitted that, in the present case, the Plaintiff had failed to demonstrate any connection in the course of trade between itself and the Defendant, or any quality control exercised by the Plaintiff over the Defendant’s use of the mark “TRACK ON”. He submitted that the Defendant’s use of “TRACK ON” was entirely independent and without any reference to, or control by, the Plaintiff. He submitted that in the absence of these essential requirements, and assuming, while denying that any licence existed, such licence would in any event amount to a “naked licence”.

40. Dr. Tulzapurkar then submitted that the Plaintiff had suppressed material facts and documents which go to the very root of the matter and completely demolish the Plaintiff’s case. He pointed out that it was an admitted position that the Defendant was carrying on a courier business in the States of Andhra Pradesh and Telangana, and that it was precisely because of the Defendant’s established network in these States that the Plaintiff had sought to associate itself with the Defendant and chose the Defendant as a “business associate/partner”.

41. He pointed out that the letter/certificate dated 5th May 2016, addressed to the public at large by the Plaintiff, expressly recorded as follows: “M/S. TRACKON COURIERS & CARGO SERVICES proprietor B. N. Srinivas is our business associate for Andhra Pradesh & Telangana for booking of documents and parcels and to be taking care of all corporate clients for better services and single window solutions on behalf of our company.”

Dr. Tulzapurkar submitted that this letter/certificate clearly evidenced the fact that the Plaintiff was aware of the Defendant’s prior sole proprietorship which was on behalf of “M/S. TRACKON COURIERS & CARGO SERVICES.” He then submitted that the letter had been deliberately suppressed by the Plaintiff since it completely destroys the Plaintiff’s case that the Defendant’s use of the mark “TRACK-ON” was illegal from its inception, as well as the Plaintiff’s alternative and unpleaded argument of permissive use.

42. Dr. Tulzapurkar further pointed out that, in the Affidavit in Rejoinder, the Plaintiff had not disputed either the existence or the contents of the said letter but had merely contended that the same was signed by one Mr. Dinesh Rautela, a former Director of the Plaintiff who subsequently resigned, and that the Plaintiff does not have supporting records in relation thereto. He submitted that this explanation was demonstrably false and wholly untenable, as Mr. Rautela was not an ordinary employee but a Director of the Plaintiff at the relevant time.

43. Dr. Tulzapurkar then submitted that the Plaintiff’s contention that there was no deliberate suppression of the letter dated 5th May 2016 was both factually and legally untenable. He submitted that there was no explanation whatsoever as to why such a vital document was not disclosed in the Plaint and that the explanation sought to be offered in the rejoinder was a clear afterthought. He submitted that the purported explanation was wholly unsustainable since (i) the document and its contents are admitted; (ii) the relationship between the Plaintiff and the Defendant is founded upon the said letter; (iii) the letter is directly relevant and completely undermines the Plaintiff’s case that the Defendant’s use of the mark was an infringement ab initio, particularly when it evidences express and/or implied consent and a representation to the public at large permitting the Defendant to accept parcels in its own name; and (iv) the explanation that the Director who signed the letter has since resigned is a mere eyewash. He submitted that it was not even the Plaintiff’s case that the letter was unknown to it or was not part of its records.

44. Dr. Tulzapurkar then pointed out that the Plaintiff had also suppressed the Defendant’s reply dated 10th October 2024 to the Plaintiff’s cease and desist notice, wherein the aforesaid letter dated 5th May 2016 was specifically referred to and in which the Defendant had categorically stated as follows: “.....Our Client further asserts that Your client is also aware that apart from working together on terms/understandings entered between parties, our client and your client have also continued to run their services independently in the name of their registered firms…”

45. He submitted that the suppression of the aforesaid letter constitutes a fraud played by the Plaintiff on this Hon’ble Court and that on this ground alone the Plaintiff is disentitled to any relief. He submitted that this is a fit case for dismissal of the Suit itself since the Plaintiff had approached this Court with unclean hands. In support of his contention that such conduct on the part of the Plaintiff would by itself disentitle the Plaintiff to any relief, he placed reliance upon the decision of the Hon’ble Supreme Court in the case of S.P. Chengalvaraya Naidu v. Jagannath and ors.13

46. Dr. Tulzapurkar submitted that non-disclosure of such material documents cannot be brushed aside as an inadvertent error once the same are brought to light. He submitted that suppression of a document which goes to the root of the matter is fatal to any plea contrary thereto and disentitles the Plaintiff from any interlocutory reliefs, as held in S.P. Chengalvaraya Naidu. He submitted that the Plaintiff cannot be permitted to gain any advantage by suppressing material documents to the serious prejudice of the Defendant.

47. Dr. Tulzapurkar submitted that the Defendant’s continued use of its trading name containing the expression “TRACK-ON” was with the full knowledge and express consent of the Plaintiff and was entirely independent and not on behalf of the Plaintiff. He pointed out that Exhibit A to the Affidavit in Reply clearly demonstrated that the Defendant’s use of “TRACK-ON” was on its behalf as a business associate and not as a licensee or agent of the Plaintiff. He therefore submitted that the Plaintiff was precluded from making any claim for infringement or passing off in view of Section 30(2)(c) of the Trade Marks Act, 1999. He further submitted that, where there is such consent, the Plaintiff cannot claim any common law rights, as observed in Northern & Shell PLC v. Conde Nast & National Magazines.

48. Dr. Tulzapurkar also submitted that the Plaintiff was guilty of acquiescence. He submitted that the Defendant had been using “TRACKON” as a business name at least since 2016, to the knowledge of the Plaintiff, and that the Plaintiff had 14 1995 RPC 117 admittedly taken no steps whatsoever to prevent such use. On the contrary, the Plaintiff had encouraged such use by representing to members of the public and trade to deal with the Defendant in its own name. In support of his contention, he placed reliance upon the decision of the Hon’ble Supreme Court in Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd.15, to submit that the Plaintiff’s conduct clearly amounts to acquiescence. He therefore submitted that the Plaintiff cannot claim any relief against a Defendant who had developed its business in the name, now sought to be restrained.

49. Dr. Tulzapurkar lastly submitted that the Plaintiff had given no answer to the Defendant’s plea that the use of “TRACKON” was with the Plaintiff’s knowledge, consent, and encouragement, as evidenced by the suppressed letter dated 5th May

2016. He pointed out that the Plaintiff’s contention that the Defendant’s use of “TRACKON” amounted to the Plaintiff’s own use, was liable to be rejected, particularly since there was no plea of permissive use in the Plaint and that such a plea was contrary to law. He also submitted that the Plaintiff had failed to answer the Defendant’s specific pleas regarding (i) invalidity of the alleged permissive licence;

(ii) absence of any connection in the course of trade; (iii) encouragement and representation to the public at large; and (iv) acquiescence.

50. Dr. Tulzapurkar thus submitted that the Interim Application ought to be dismissed with compensatory cost.

51. Mr. Dhond, in rejoinder, submitted that the Defendant’s contention that this Court lacked jurisdiction was wholly without merit and liable to be rejected at the threshold. He submitted that the Defendant’s objection to jurisdiction was based on a fundamental misunderstanding of how the Plaintiff had invoked the jurisdiction of this Court and a deliberate misreading of the Plaint. He submitted that the Defendant had erroneously proceeded on the basis that the Plaintiff had invoked the jurisdiction of this Court on the basis that the Plaintiff was carrying on business in Mumbai. This premise, he submitted, was entirely incorrect.

52. He pointed out that the Defendant had not even addressed the actual basis pleaded by the Plaintiff for invoking the jurisdiction of this Hon’ble Court and for seeking leave under Clause XII of the Letters Patent, namely that part of the cause of action had arisen within the jurisdiction of this Hon’ble Court and part outside it. He submitted that, in these circumstances, the question of where the Plaintiff carries on business was wholly irrelevant.

53. Mr. Dhond further pointed out that, in paragraph 30 of the Plaint, the Plaintiff had clearly pleaded, inter alia, that this Hon’ble Court had jurisdiction on the basis that (i) the rival services were being offered in Mumbai, (ii) the Plaintiff was suffering loss and injury in Mumbai, and (iii) a substantial part of the cause of action had therefore arisen within the jurisdiction of this Hon’ble Court. He submitted that, since the rival services were also being offered outside Mumbai, the Plaintiff had accordingly filed a Petition seeking leave under Clause XII of the Letters Patent. He pointed out that, by the order dated 18th December 2024, which made specific reference to paragraph 30 of the Plaint, this Court had granted leave.

54. Mr. Dhond submitted that the law on this issue stands settled by the judgment of the Hon’ble Supreme Court in Isha Distribution House (P) Ltd. v. Aditya Birla, which holds that once leave under Clause XII of the Letters Patent has been granted, a Defendant cannot seek revocation of such leave by way of an interlocutory application and that territorial jurisdiction being a mixed question of fact and law, the plea of jurisdiction must necessarily be raised in the written statement, whereupon an issue of jurisdiction would have to be framed and decided at trial. In the present case, he pointed out that the Defendant had not even filed a written statement and that the time for doing so had lapsed.

55. Mr. Dhond submitted that the decision in Manugraph, relied upon by the Defendant, was in fact against the Defendant since in that case an attempt to invoke jurisdiction was made before a Court which did not have any real or substantial connection with the dispute, unlike the facts of the present case, where a part of the cause of action had arisen within this Court. Similarly he pointed out that the decisions in Sanjay Dalia and Dhodha House would also not apply since in both those cases the invocation of jurisdiction was solely on the basis of the Plaintiff’s place of residence or the place where the Plaintiff carried on business and not where part of the cause of action had arisen.

56. In any event, and without prejudice, Mr. Dhond pointed out that the Plaintiff had also placed material on record to demonstrate that the Defendant’s own website indicates that the Defendant offers its services in Mumbai. He therefore submitted that the objection to the territorial jurisdiction of this Hon’ble Court was wholly devoid of merit.

57. Mr. Dhond then submitted that the Defendant’s contention of any inconsistency in the Plaintiff’s case on permissive use was also misconceived. He submitted that it was well settled that a Plaint must be read as a whole, meaningfully and in context, and not in a myopic manner. He further submitted that when the Plaint is so read, it is clear that there was no inconsistency whatsoever in the Plaintiff’s case. He submitted that the Defendant’s attempt to isolate a single sentence from paragraph 13 and read it out of context was impermissible and contrary to the settled law laid down by the Hon’ble Supreme Court, including in Popat & Kotecha Property v. State Bank of India Staff Association17.

58. He then pointed out that the Defendant’s entire argument of pleading an inconsistent case rested on a single sentence in paragraph 13 of the Plaint, namely that “the Plaintiff has at no point expressly or implicitly permitted the Defendant to use the TRACKON Mark or any part thereof”. He submitted that by doing so the Defendant was completely ignoring the context in which the statement appears in the context of the Plaint read as a whole. Mr. Dhond submitted that, in the Plaint, the

Plaintiff had unequivocally asserted proprietorship and exclusivity over the TRACKON Marks as was evident from paragraph 1.[2] and 5.[3] of the Plaint.

59. He then pointed out that at paragraph 2.[2] of the Plaint, the Plaintiff had stated that the Defendant was a former business associate who was doing business in the name “TRACK-ON COURIER & CARGO”. Mr. Dhond submitted that this necessarily implies permissive use, since the Plaintiff was the admitted owner and proprietor of the Trackon Marks. He pointed out that the same paragraph further records that the Defendant had agreed to stop using the name/mark when called upon to do so, and that despite this, the Plaintiff later discovered that the Defendant had recommenced use, leading to the filing of the present Suit.

60. Mr. Dhond emphasised that the past business relationship between the Plaintiff and the Defendant was pleaded only by way of background to demonstrate that (i) the Defendant’s use was permissive; (ii) the Defendant was expressly asked to stop using the mark in October 2023; and (iii) the Defendant agreed in writing to stop, without asserting any independent right or prior use. He then reiterated that the Defendant had neither denied nor explained any of the email exchanges under the subject line “Change of Name” from 12th October 2023 to 6th November 2023.

61. Mr. Dhond submitted that paragraphs 9 and 10 of the Plaint specifically recorded that the Plaintiff had, in September 2024, discovered that the Defendant had recommenced use of the mark, including by filing a trade mark application on a “proposed to be used” basis, contrary to its express undertaking. He submitted that it was in this precise context that paragraph 13 of the Plaint inter alia set out that the Plaintiff had not permitted such use. He submitted that, read contextually, the averment in paragraph 13 of the Plaint was clearly referable to the Defendant’s adoption and use of “TRACK-ON” post-2023 and not the earlier permissive use of “TRACKON” during the subsistence of the relationship. He submitted that this interpretation was further reinforced by paragraph 31 of the Plaint, where the Plaintiff stated that the Plaintiff had first discovered in September 2024 that the Defendant was using the impugned mark TRACK-ON, after having agreed to stop using the same.

62. Mr. Dhond reiterated that there was nothing on record to demonstrate any independent or prior use of the impugned mark “TRACKON” by the Defendant, notwithstanding the claim of use since 1997 made in the Affidavit in Reply. He pointed out that, during the course of arguments, the Defendant abandoned the plea of prior use without any explanation, which itself underscores the falsity of that plea.

63. He further submitted that the Defendant’s contention of having suffered prejudice or being taken by surprise was demonstrably untenable. He pointed out that, in paragraph 3 of the Affidavit in Reply, the Defendant had expressly pleaded prior use since 1997 and had also categorically denied any permissive use. He submitted that, despite clearly understanding the Plaintiff’s case, the Defendant failed to place on record a single document evidencing independent use of the mark outside the subsistence of the business association.

64. Mr. Dhond then submitted that the plea of acquiescence was also wholly misconceived. He submitted that once the Plaintiff had expressly called upon the Defendant to cease use of the mark in October 2023, and the Defendant had unequivocally agreed in writing to do so in November 2023, and hence the question of acquiescence does not arise.

65. He further submitted that the Defendant’s reliance on the letter dated 5th May 2016 was entirely misplaced. He pointed out that the said letter merely evidences the commencement of permissive use by the Defendant of the mark “TRACKON” during the subsistence of the business relationship and expressly records that the Defendant was acting “on behalf of” the Plaintiff, with the Plaintiff assuming responsibility for the parcels booked. He therefore submitted that, far from supporting any plea of acquiescence, the said letter in fact reinforces and strengthens the Plaintiff’s case. He submitted that, in any event, the Defendant had failed to satisfy the test laid down in Power Control Appliances, since acquiescence cannot be pleaded by a dishonest adopter who was fully aware of the Plaintiff’s prior and subsisting rights.

66. Mr. Dhond then submitted that the allegations of fraud and suppression were wholly baseless and devoid of merit. In support of this submission, he pointed out that (i) the alleged reply dated 10th October 2024 to the cease-and-desist notice was never received by the Plaintiff, as confirmed on oath by the Plaintiff’s Advocate in an Affidavit dated 19th December 2025; (ii) the Defendant had produced no proof of delivery of the said letter; and (iii) mere postal dispatch slips, in any event, have no probative value, as held by this Hon’ble Court in Dharmil Bodani v. Manju Meadows Pvt. Ltd.18

67. He submitted that the Plaintiff’s failure to annex the letter dated 5th May 2016 had been adequately explained and, in any event, would not amount to suppression since the letter, in fact, supports the Plaintiffs case. He further pointed out that the Plaintiff had not gained any advantage by not annexing the said letter, and hence in facts of the present case, the decision of the Hon’ble Supreme Court in the case of S.P. Chengalvaraya Naidu would not apply. On the contrary he pointed out that the facts of the present case were squarely governed by the decisions of the Hon’ble Supreme Court in Apollo Tyres Ltd. v. J.V. Abhay19 and Govt. of NCT of Delhi v. BSK, which held that a high threshold had to be met for establishing allegations of suppression or fraud, which in the present case the Defendant had not been met.

68. Mr. Dhond therefore submitted that the Defendant’s contentions were ex facie without merit and liable to be rejected. He submitted that the present case is a fit case not only for the grant of interim reliefs in terms of prayer clauses (a), (b), and (d). Defendant’s Submissions in Sur-rejoinder:

69. Dr. Tulzapurkar, in sur-rejoinder, submitted that the Plaintiff’s contention that the plea of inconsistent pleadings had been satisfactorily answered in rejoinder was wholly unsustainable and deserves to be rejected. He submitted that the Plaintiff was required to set out, in the Plaint itself, all material pleas necessary for obtaining relief. He submitted that the Plaintiff cannot be permitted to cure fundamental defects in its pleadings by advancing inconsistent or contradictory cases in rejoinder under the guise of answering the Defendant’s submissions.

70. Dr. Tulzapurkar further submitted that there was no question of the Defendant having read the Plaint in a distorted or piecemeal manner. On the contrary, when the Plaint is read as a whole, together with the Petition seeking leave under Clause XII of the Letters Patent, the inherent inconsistencies in the Plaintiff’s case stand clearly exposed. He submitted that the Plaintiff’s reliance on Popat and Kotecha Property, was entirely misplaced and that a holistic reading of the Plaint itself demonstrates that, on the Plaintiff’s own showing, the Defendant does not carry-on business in Mumbai. He further submitted that the Defendant’s submissions on suppression of material documents and on the plea of permissive use do not arise from any distorted reading of the Plaint but flow directly from the Plaintiff’s own pleadings and omissions.

71. Dr. Tulzapurkar then submitted that the Plaintiff’s contention that there was no deliberate suppression was both factually and legally untenable. He submitted that there was no credible explanation as to why such a crucial and foundational document, namely, the letter dated 5th May 2016, was not disclosed in the Plaint. He submitted that the explanation sought to be offered in rejoinder was a clear afterthought and is wholly unsustainable if the same were admitted, it gives the Defendant consent to use the mark “TRACKON” and negates the Plaintiff’s case that the Defendant is infringing the mark ab initio. He thus submitted that it cannot be the Plaintiff’s case that the said letter was unknown to it or not part of its records.

72. Dr. Tulzapurkar further submitted that the Plaintiff had also sought, in rejoinder, to argue a case in response to an alleged plea of prior use, which was not pressed by the Defendant at all. He pointed out that this position was expressly clarified by learned counsel for the Defendant during the course of arguments. In any event, he submitted that the Defendant had not advanced any plea of being a prior user, and therefore the Plaintiff’s submissions that no evidence has been produced to establish prior use are wholly irrelevant and do not advance the Plaintiff’s case, particularly in light of the other substantive objections raised by the Defendant.

73. In these circumstances, Dr. Tulzapurkar submitted that the Interim Application is liable to be dismissed with compensatory costs. Reasons and Conclusions:

74. After hearing Learned Senior Counsel for the parties and having considered the rival contentions, pleadings and case law upon which reliance was placed, I find that the Plaintiff has made out a case for the grant of interim reliefs. My reasons are as follows:

(ii) the Defendant has expressly abandoned its pleaded case of prior use (iii) the letter/certificate dated 5th May 2016, which the Defendant alleges was suppressed from the Plaint, makes reference to “M/s. Trackon Couriers Cargo Services” and not to the impugned mark “TRACK-ON” or “TRACK-ON EXPRESS” the mark and name that the Defendant is now using (iv) the Defendant has not denied or disputed the correspondence by which the Defendant agreed to change its name and (v) the Defendant’s application for registration of the impugned mark, filed on 2nd July 2024, expressly states that the mark is sought to be registered on a “proposed to be used” basis. Thus, in my prima facie view, the Defendant’s adoption and use of the impugned mark is plainly dishonest and wholly lacking in bona fides.

I. The Defendant’s reliance on the decision in Gujarat Bottling Co. Ltd. to contend that recognition of the Defendant as a permissive user requires the Plaintiff to establish a written agreement granting permission and a formal trade connection between the parties is wholly misplaced. The decision itself notes that there could be other modes of permissive use which are independent of the provisions of the Trade Marks Act, 1999. In any event, the Plaintiff has failed to set out any legal basis or justification for use of the impugned mark.

75. The Interim Application therefore deserves to be allowed in terms of prayer clauses (a) and (b). Given the Defendant’s continued use of the impugned mark despite express undertakings to the contrary, this is also a fit case for costs. [ARIF S. DOCTOR, J.] After pronouncement:

76. At the request of Learned counsel for the Defendant, this order shall remain stayed for a period of four weeks from today. [ARIF S. DOCTOR, J.]