Paul Components Private Limited v. Hi Tech Arai Private Limited

7. As against this, submits Mr. Lall, minutes of the meetings of the Board of Directors of the defendant, held on 26 June 2013, 18 March 2017 and 20 March 2019 make no reference to HTA and do not reflect the HTA mark at all, even on the letter heads on which the minutes have been drawn up. In each of these cases, the logo reflected towards the top of the letterhead is. It is for the first time that, in place of this logo, the logo figures on the letterhead on which the Minutes of the Board Meeting held on 10 August 2020, have been drawn up. In all letter heads after that, the logo alone is reflected. This, submits Mr. Lall, indicates that, in fact, the defendant has started using the logo only in or around August 2020.

8. The defendant, points out Mr. Lall, has never even applied for registration of the impugned ―HTA‖ or ―ARS-HTA‖ marks. As against this, Arai Seisakusho Co. Ltd, with whom the defendant is in collaboration and from whom the defendant has borrowed the ―ARS‖ part of the impugned ―ARS-HTA‖ mark, in fact applied on 11 October 1995 for registration of the device mark. There is no explanation, submits Mr. Lall, as to why, even when the proprietor of the logo had applied for registration of the logo as a registered device mark, the defendant has not chosen to do so. Apparently, submits Mr. Lall, this is because the defendant was never using the impugned marks.

9. Insofar as the claim of user, while applying for registration of the HTA word mark on 2 November 2022, of 25 January 1977, vis-àvis the earlier claim of user of 1994, is concerned, Mr. Lall submits that, after the death of Mrs. Harinder Kaur on 26 January 2022, the plaintiff discovered, from the papers available with her, that Paul & Paul had, in fact, been using the HTA mark for oil seals since 1977. It is for this reason that, on 2 November 2022, the plaintiff applied for registration of the HTA mark, claiming user since 1977 solely in respect of oil seals.

10. As against the aforesaid user of the HTA mark by the plaintiff dating back to 1977, Mr. Lall points out that the earliest reference to HTA, in the documents filed by the defendant, is to be found in an invoice dated 29 August 1986 raised on the plaintiff by the Government Tool Room and Training Centre, Bangalore, for ―Manufacture of Rubber Moulds as per Dos. HTA-1094, 2 nos. @ 20700‖, for a total amount of ₹ 49,514.40/-. The defendant has also placed on record a similar invoice dated 18 October 1986, for labour charges, raised on the defendant by Vijay Tool Room, which charges a total of ₹ 6584.30 towards labour charges for the manufacturing of (1) HTA 1153 Sample Mould 1 set, (2) HTA 1139 Sample Mould 1 set and (3) HTA 1123 Sample Mould 1 set.

11. The defendant has also relied on a letter dated 28 December 1986, addressed by the Section Officer, Secretariat for Industrial Approvals, Department of Industrial Development to the defendant, which is in response to the defendant‘s Letter No. HTA/FC/2210/86 dated 29 November 1986. Letter No. HTA/FC/2210/86 dated 29 November 1986, addressed by the defendant to the Department of Industrial Development, to which the said letter is a response, has also been placed on record by the defendant. Besides, Mr. Lall submits that there are several invoices and other documents placed on record by the defendant in which ―HTA1408.00‖ and other mark numbers including ―HTA‖ have been entered by hand, whereas the rest of the invoices and other such documents are printed, as in the following documents:

12. In some of the documents, such as a purchase order dated 25 November 1985 raised on the defendant by Escorts Ltd, the reference to ―HTA‖ is found only in the allusion to the number of the letter earlier written by HTA; for example, the purchase order dated 25 November 1985 raised on the defendant by Escorts Ltd refers to ―Your letter No. HTA/EL/S-5/34-85 dated 19-08-1985‖. There is no reference of ―HTA‖ in the parts covered by the purchase orders. Mr. Lall has thus taken me painstakingly through the documents placed on record by the defendant to demonstrate that in each of the documents, ―HTA‖ is either written by hand or even if printed, refers only to the part numbers covered by the said documents/letter number itself.

13. Mr. Lall submits that the defendant has not produced any material to indicate use of HTA on any of its products, save as part numbers. Usage of ―HTA‖ as a part number, or as a reference number in a letter, he submits, does not constitute use ―as a trade mark‖.

14. Insofar as the invoices with the mark appearing at the head of the invoice are concerned, they date only post 2017. On the body of the letterheads of the defendant, HTA appeared for the first time in 2020. Mr. Lall emphasized the fact that, though the logo was registered by, Arai Seisakusho Co. Ltd. Japan as far back as in 1995, the defendant had not chosen to seek any registration either of its HTA or ARS-HTA marks till date.

15. Thus, submits Mr. Lall, as the HTA marks are registered, both as word marks and a device mark, in favour of the plaintiff, and as the defendant has no registration for any of its marks, or any claim to user prior to user by the plaintiff, the plaintiff is entitled to an injunction as sought. Reply filed by the defendant

16. The defendant, in its reply filed by way of response to the present application, i.e. IA 10831/2023, initially submits that the plaintiff is disentitled from claiming any relief, as it has placed fabricated documents on record. The defendant submits that the Auto Expo photographs placed on record by the plaintiff, as they figured on the website of the plaintiff under the ―media‖ section, did not reflect the words ―HTA‖ or ―HTA Oil Seals‖. It is also contended that a bare glance at the said photographs would reveal that ―HTA‖ has been interpolated in the photographs using a different font and style as compared to that used for the other logos/marks.

17. The defendant also takes serious exception to the plaintiff claiming 1977 user for the first time in its application dated 2 November 2022 for registration of the HTA word mark in Class 17, having in all earlier applications and registrations claimed user since 4 May 1994. It is submitted that the plaintiff has resorted to this belated change of user only because the plaintiff is aware of the fact that the defendant is using the impugned mark since 1985. The 1977 user claimed by the plaintiff, submits the defendant, is completely bogus. Not only had the plaintiff not claimed any 1977 user in respect of the HTA mark; even in its applications for registration of its other marks such as ―PSILO‖, ―ARS‖ and ―ARAI‖, the plaintiff had always been claiming user since May or June 1994.

18. For that matter, the defendant also questions the claim of the plaintiff to 1994 user of the HTA mark. It is pointed out, in this context, that the plaintiff had applied for registration of the trademark ―PSILO‖ on 7 May 1996. If, in fact, the plaintiff was using the HTA mark since 1977 or even since 1994, there was no explanation as to why it waited till 13 August 2007 to seek registration of the HTA mark, claiming at that time user since 4 May 1994, later revising its user claim to 25 January 1977 while applying for registration of the HTA word mark on 2 November 2022. The claim of user, both from 25 January 1977 as well as from 4 May 1994 is, therefore, in the defendant‘s submission, transparently unacceptable. The defendant also seeks to point out, in this context, that in its affidavits of user filed with its applications for registration of the marks ―PSILO‖, ARS, ARAI and HTA, the plaintiff has provided the very same figures of annual turnover.

19. The defendant takes serious exception to the manner in which the plaintiff has ―systematically and fraudulently‖ obtained trademarks for HTA, ARS and ARAI, each of which is either an abbreviation or a part of the trade name of the defendant.

20. Considerable emphasis has been led in the reply filed by the defendant, to the plaintiff‘s product ―HTA 6351‖. The defendant submits that, in fact, ―HTA 6351‖ was a product, not of the plaintiff, but of the defendant and had engraved, on the body of the product, the defendant‘s mark ―ARS-HTA‖. The mark ―HTA6351‖ was used for an oil seal which was unique for two-wheelers manufactured by Hero Moto Corp Ltd. and was developed for Hero Moto Corp as a proprietary product by the defendant, based on the drawings provided by Hero Moto Corp. It is asserted that, even till date, the defendant is supplying HTA 6351 oil seals to Hero Moto Corp in large numbers. ―HTA 1224‖ was the original part number assigned to the oil seal by the defendant. When the part was upgraded, the defendant assigned it the new number ―HTA 6351‖. Details of supplies, by the defendant, to various customers of the HTA 1224 and HTA6351 oil seals have also been provided in the reply. Between 1990-1991 and 2000-2001, the defendant submits that it has supplied 1648705 pieces of HTA

1224. HTA6351 was the upgraded version of HTA1224, for use in the same vehicle. Hero Moto Corp, vide communication dated 11 January 2001 accepted the sample of HTA 6351 provided by the defendant and the use of the said new mould in mass production. Thereafter, between 2000-2001 and 2023-2024, the defendant claims to have supplied 41410096 pieces of HTA 6351. Mere supply of HTA 1224 and HTA 6351 has resulted in earnings, by the defendant, of approximately ₹ 30 crores.

21. The defendant also claims prior user of the mark HTA and ARS-HTA vis-à-vis the plaintiff. The reply states that the defendant has been using HTA since 1985 and the ARS-HTA mark both as a plain word mark as well as in the form of the logo since

1994. The mark HTA, it is stated, was derived as an acronym of the company name of the defendant, which was earlier Hi-Tech Ancillaries and, later, Hi Tech Arai. Consequent to successful collaboration with Arai Seisakusho Co. Ltd, Japan and Mitsubishi Corporation, Japan, the defendant adopted the mark ―ARS-HTA‖ since 1995, to signify the joint venture between Arai Seisakusho Co. Ltd and the defendant. It is submitted that, world over, the marks HTA and ARS-HTA are identified only with the defendant and with no one else. HTA, when followed by four digits, it is submitted, refers to the part or the model number in question, with the four digits having been assigned by the defendant.

22. It is further alleged in the reply that the plaintiff has fraudulently applied and obtained registration of the marks HTA, ARS and ARAI, each of which is either an abbreviation or the part of the defendant‘s trade names, appearing on the defendant‘s products.

23. Insofar as the documents filed by the plaintiff to show user are concerned, the defendant submits that all the cash memos from 1977 to 1994 are handwritten, and the names of the buyer/purchaser is also missing in some of the said cash memos. Further no invoice has been filed by the plaintiff for the years 1995 to 1997 or to 2001 to 2006. The plaint is also silent regarding the manner in which the plaintiff has developed and supplied its products under the marks ―HTA‖ or ―HTA Oil Seal‖. Inasmuch as the said marks are deceptively similar to the HTA mark, which was in use by the defendant prior to the registration of the plaintiff‘s marks, the reply asserts that the registration of the plaintiff‘s marks ought to be cancelled under Section 57(1) and (2)1 read with Section 11(1)2 of the Trademarks

57. Power to cancel or vary registration and to rectify the register. – (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.

11. Relative grounds for refusal of registration. – (1) Save as provided in Section 12, a trade mark shall not be registered if, because of – (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or Act. The documents filed by the defendant, it is asserted, indicate prior adoption and use, by the defendant, of the marks HTA and ARS- HTA as compared to the plaintiff.

24. The reply dwells considerably on the volume of the defendant‘s business and the fact that it is the prime supplier to various OEMs. As the defendant‘s products are pivotal for functioning of the automobiles rolled out by the said industries, any injunction at this point of time, it is submitted, would bring the automobile industry to a halt. Thus, submits the reply, the balance of convenience would also not be in favour of grant of any injunction against the continued manufacture and use, by the defendant, of the impugned marks. Submissions of Mr. Dayan Krishnan

25. Supplementing the submissions contained in the reply filed by the defendant by way of response to the present application, Mr. Dayan Krishnan laid considerable stress on the fact that the parts manufactured by the defendant are custom made items, meant for direct supply to OEMs for use in their vehicles. There are not usable elsewhere. There are not meant for sale in the open market. The OEMs provide drawings to the defendant, on the basis of which the defendant prepares moulds from which the parts are manufactured. The ―HTA‖ and ―ARS-HTA‖ mark is part of the mould prepared by the defendant. The defendant also assigns to the mould, a reference (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. number depending on the vehicle and the manufacturer involved a particular part number, such as 1228 or 6351, for the purposes of identification. Thus, submits Mr. Dayan Krishnan, there is no chance of any confusion in the market.

26. Mr. Dayan Krishnan seriously controverts Mr. Lall‘s submission that ―HTA‖ is not being used by the defendant as a trademark. He submits that even if it is used as a part of the model number manufactured by the defendant, such use amounts to ―trade mark use‖ within the meaning of the Trade Marks Act, inasmuch as it connects the products to the source.

27. Responding to Mr. Lall‘s submission that, in several of the defendant‘s invoices and other documents, ―HTA‖ is written in hand, Mr. Dayan Krishnan submits that, in that event, all the plaintiff‘s invoices, till 1998, would have to be rejected, as they are all handwritten. On this aspect, Mr. Dayan Krishnan points out that, in its First Examination Report (FER) dated 13 December 2022, whereby the Trademark Registry objected to Application No. 5667622 of the plaintiff, it was specifically alleged that the evidences filed by the plaintiff were insufficient to support its claim of user since 25 January 1977. It was also pointed out, in the said FER, that the plaintiff had already registered ―HTA‖, both as a word mark as well as in the form of the device mark. Mr. Dayan Krishnan points out that the plaintiff has filed just three more invoices, in addition to the invoices which had been filed before the Trade Mark Registry as evidence of use since 25 January 1977. The objection that the invoices filed by the plaintiff are insufficient to demonstrate such use, therefore, according to Mr. Dayan Krishnan continues to remain unaddressed.

28. Mr. Dayan Krishnan has also invited attention to affidavits of user filed by the plaintiff before the Trade Mark Registry on 21 November 2019, claiming user of the HTA mark w.e.f. 4 May 1994, particularly to para 4 of the said affidavit, which read thus: ―That the said trade mark has been adopted in the month of 04-05l994 and has been continuously used since that date upto the present time. The business carried on by my firm is very extensive one and the good baring the said trade mark have been distributed practically throughout India‖

29. As against thus, in the affidavit filed by the plaintiff with Application no. 5667622, the plaintiff claimed user, of the very same mark w.e.f. 1977, averring thus: ―I state that the Applicant is the owner and proprietor of the mark /HTA. I further state that the mark /HTA is being used by the Applicant in India since at least January 25, 1977 in respect of ―oil seals‖. Hereto annexed and marked as Annexure – A (Colly) are the sample invoices of the Applicant (including its predecessor-in-interest) featuring the mark /HTA.‖

30. In the above affidavit, there is no reference to the earlier user affidavit filed by the plaintiff with the Registrar of Trademarks, in which user of the very same mark was claimed w.e.f. 1994. Despite this, Mr. Dayan Krishnan points out that there is no explanation, in the later affidavit dated 28 October 2022, for the sudden change of user of the plaintiff‘s mark from 1994 to 1977.

31. In a case where the plaintiff has obtained registration of its mark improperly and the registration is ex facie objectionable, Mr. Dayan Krishnan submits that the plaintiff would not be entitled to the benefit of presumption of validity of the trademark under Section 31(1)3 of the Trademarks Act. For this purpose, he relies on para 158 of the judgment of this Bench in Armasuisse v. Trade Mark Registry[4] and paras 13, 14 and 19 of the judgment passed by a coordinate Bench of this Court in Lowenbrau AG v. Jagpin Breweries Ltd[5]. Mr. Dayan Krishnan reiterates the objection, as contained in the reply filed by the defendant, of the plaint being vitiated by suppression and misstatement. He submits that the plaintiff has concealed from the Court the registration obtained for the and marks, both of which are identifiable with the defendant.

32. Mr. Dayan Krishnan reiterates the objection voiced in the reply, that the photographs placed on record by the plaintiff with respect to Auto Expo stalls are all manipulated. He points out that the persons in the photographs filed by the plaintiff and filed by the defendant are in exactly the same position in both the photographs, so that it cannot even be sought to be contended by the plaintiff that the two photographs were taken at different points of time. Clearly, therefore,

31. Registration to be prima facie evidence of validity. – (1) In all legal proceedings relating to a trade mark registered under this Act (including applications under Section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof. (2) In all legal proceedings, as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration. (2023) 94 PTC 13 (Del) 157 (2009) DLT 791 the plaintiff‘s photographs are fabricated and the mark ―HTA‖ has been fraudulently inserted therein.

33. Mr. Dayan Krishnan has, finally, emphasized the scale and magnitude of the defendant‘s business and has sought to submit that the entire assembly line of automobiles of most manufacturers would come to a halt were injunction to be granted in the present case. The defendant, he submits, has been in the business for 38 years, with a turnover of ₹ 566.[8] crores in 2022-2023.

34. Without prejudice to the contentions raised earlier, Mr. Dayan Krishnan submits that, in the worst case scenario, if this Court is inclined to grant injunction as sought by the plaintiff, the defendant would need at least one year to change its moulds. Submissions of Mr. Lall in rejoinder

35. Mr. Lall first contends, in rejoinder, that, once the seniority of the plaintiff vis-à-vis the defendant, as regards use of the HTA mark is admitted and the marks are identical and used for the same product, the plaintiff is entitled, ex facie, to injunction without anything more. The only circumstance in which such an injunction can be avoided is if the defendant is entitled to the benefit of Section 346 of the

34. Saving for vested rights. – Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior – (a) to the use of the first-mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or (b) to the date of registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; Trademarks Act, and no such case has been set up by the defendant; indeed, no such case can be set up as the plaintiff has priority of user over the defendant.

36. Apropos Mr. Dayan Krishnan‘s contention that the defendant was an original supplier to OEM supplier, and that the products manufactured and sold by it under the HTA or ARS-HTA marks were custom made to suit specific vehicles, created on the basis of drawings prepared by the vehicle manufacturers, Mr. Lall, while not disputing these assertions, submits that they are of no relevance insofar as the aspect of trademark infringement is concerned. Mr. Lall submits that it is quite possible that, while manufacturing their vehicles, the vehicle manufacturers contracted with the defendant to provide the oil seals, gaskets etc. under the brand name HTA with the associated mark number, such as ―HTA 6351‖. The plaintiff, however, was also using the same mark with the reference number for identical goods, even if it was not supplying them to the vehicle manufacturers at the time when the vehicles were manufactured. Once a particular part had been assigned a mark, for example, HTA 6351, by the defendant Mr. Lall submits that there is no violation of law in the plaintiff making an identical part and embossing it with the same mark, so that it is identified as a substitute part for the part manufactured by the defendant. If, therefore, the part manufactured by the defendant, was found to be defective, or got damaged, the parts manufactured by the plaintiff could be used as replacement parts. ―HTA‖, he submits, was whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark. not a source identifier for the oil seals manufactured by the defendant. In fact, submits Mr. Lall, several mechanics and automobile workshops used the plaintiff‘s parts as replacement parts, when the original parts provided by the defendant failed to work or got damaged. These aspects, however, he submits, do not impact the issue of trademark infringement which is admitted by the defendant in the present case, given the dates of initial user of the plaintiff and the defendant of the respective marks.

37. With respect to Mr. Dayan Krishnan‘s challenge to the plaintiff‘s claim of user of 1977, Mr. Lall submits that the challenge is predicated entirely on the basis of some unjustified doubts cast on three of the invoices filed by the plaintiff, out of the mass of documents that have been placed on record. He submits that the defendant has not advanced any submission with respect to any of the other documents on which the plaintiff placed reliance in order to demonstrate pre-1985 use of the HTA mark by it. Mr. Lall further questions as to why, if the defendant‘s mark was of such repute, it had not chosen to have it registered till date. He seriously contests the defendant‘s claim that the mark HTA was a source identifier for the defendant.

38. Apropos the submission of Mr. Dayan Krishnan with respect to ―HTA 6351‖ Mr. Lall draws my attention to paras 31 and 32 of the rejoinder filed by the plaintiff in response to the defendant‘s reply to the present application which read thus: ―31. That the contents of para 22 of the Reply are denied as false and incorrect. It is denied that the present Suit and the present Application lack material particulars and pleadings. It is further submitted that the Plaintiff is not selling any product under the mark ―HTA 6351‖ and is using the numericals 6351 only as the part number for the purposes of identification. The trademark on the product is only HTA. The allegations that there is no whisper in the present suit as to how the Plaintiff has developed or manufactured ―HTA 6351‖ and to whom the Plaintiff supplies ―HTA 6351‖ or from when they started producing or selling ―HTA 6351‖ deserves no reply. The Plaintiff is manufacturing and selling the said product in size 6 X 25 X 6 mm through its own moulds/dies available with them and same is the case for all different kinds of oil seals that the Plaintiff is manufacturing. The Plaintiff‘s said product in the aftersales market commands immense goodwill and reputation.

32. That the contents of para 23 of the Reply are denied as false and incorrect. It is denied that the product ―HTA 6351 (HTA 1224)‖ is an oil seal which is unique for the two-wheeler Original Equipment Manufacturer — Hero MotoCorp Limited. It is denied that the product ―HTA 6351 (HTA 1224)‖ was used in the Cover Assy Oil Filter Rotor for their CD-100 Motorcycles in those days. It is denied that that the Defendant or any other party has a patent over the alleged product ―HTA 6351 (HTA 1224)‖. The product is openly sold in the market for after-sales services as well as to OEM.‖

39. The earliest representation of HTA on the letterhead of the defendant, submits Mr. Lall, is in 1989. There is, therefore, between 1977 and 1989, no evidence of any use, by the defendant, of HTA as a trademark. Nor can the defendant claim to be an honest and concurrent user of the HTA mark as the plaintiff is earlier in point of time in the market.

40. Mr. Lall submits that use of the HTA mark on the letterhead etc. cannot be said to constitute trademark use. He relies on Section of the Trade Marks Act, which deals with the circumstances in

101. Meaning of applying trade marks and trade descriptions. – which a person would be deemed to apply a trademark or trade description to goods or services. He submits that the manner in which the defendant was using the HTA mark even on its letterheads cannot be treated as ―use‖ of the mark as a trademark within the meaning of Section 101, as there was no use of the HTA mark on the pack in which the defendant was selling its goods. ―HTA‖ could not, therefore, be regarded as a source identifier for the defendant‘s goods.

41. Finally, Mr. Lall submits that the defendant has provided no explanation for using the concentric circles image registered in favour of the plaintiff as a trademark and also used by it as a distinctive feature of the packing in which the plaintiff was packing and selling its products. Analysis

42. Most of the submissions advanced in this matter are, to my mind, really tangential to the issue at hand, especially at a prima facie (1) A person shall be deemed to apply a trade mark or mark or trade description to goods or services who – (a) applies it to the goods themselves or uses it in relation to services; or (b) applies it to any package in or with which the goods are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture; or

(c) places, encloses or annexes any goods which are sold, or exposed for sale, or had in possession for sale or for any purpose of trade or manufacture, in or with any package or other thing to which a trade mark or mark or trade description has been applied; or

(d) uses a trade mark or mark or trade description in any manner reasonably likely to lead to the belief that the goods or services in connection with which it is used are designated or described by that trade mark or mark or trade description; or (e) in relation to the goods or services uses a trade mark or trade description in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial document and goods are delivered or services are rendered to a person in pursuance of a request or order made by reference to the trade mark or trade description as so used. (2) A trade mark or mark or trade description shall be deemed to be applied to goods whether it is woven in, impressed on, or otherwise worked into, or annexed or affixed to, the goods or to any package or other thing. stage. At this stage, the application can easily be decided merely by reference to Sections 288, 299 and 34 of the Trade Marks Act.

28. Rights conferred by registration. – (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

29. Infringement of registered trade marks. – (1) A registered trade mark is infringed by a person who, not being 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 and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of – (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. ***** (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he – (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising. ***** (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

43. Section 28 envisages usage the rights available consequent to registration of a trademark. Sub- sections (2) and (3) thereof have no application to the present case, as sub- section (2) applies only where the registration is granted subject to conditions of limitations and subsection (3) applies where the marks of the plaintiff and the defendant are both registered. In the present case, the defendant has no registered trademark, and the registrations of the plaintiff are not subject to any condition or limitation.

44. Sub-section (1) of Section 28 confers, on the registered proprietor of a trademark, two valuable – or, rather, invaluable, as the present case itself demonstrates – rights. The first is the right to claim exclusivity over the mark, in relation to the goods or services in respect of which the mark is registered. The second is the right to protect the mark from infringement.

45. The circumstances in which a trademark is infringed are set out in Section 29. For the purposes of this order, we need concern ourselves only with sub- sections (2), (3) and (6) of Section 29. Where the rival marks are identical, or deceptively similar, and are used for identical goods or services, and, owing to the similarity in the marks and the use of the marks for identical goods or services, there is a likelihood of the public either confusing the two marks or believing the existence of an association between the defendant‘s mark and the plaintiff, then, infringement, within the meaning of Section 29(2)(b), has taken place. Section 29(2)(c) envisages infringement as having taken place where the marks, as well as the goods or services in respect of which they are used, are identical. In such a case, subsection (3) presumes the existence of likelihood of confusion on the part of the public.

46. Where infringement is found to occur, an injunction must follow, as held by the Supreme Court in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia10. In that case, the appellant Midas Hygiene Industries (P) Ltd (―Midas‖) sued the respondent Sudhir Bhatia alleging infringement of copyright and passing off. The learned Single Judge of the High Court granted an interlocutory injunction in favour of Midas and against Sudhir Bhatia on the following considerations (as reproduced, verbatim, in para 2 of the report): ―(i) The defendant admittedly worked with the plaintiff prior to launching its business.

(ii) The plaintiff's prior and prominent user of the phrase

Laxman Rekha as a part of the description of crazy lines as shown by the documents i.e. advertisements at least of 1991 produced by the plaintiff showing prominent user of the phrase Laxman Rekha.

(iii) The defendant's non-denial of the plaintiff's assertions in the notice dated 28-2-1992 to the effect that the plaintiff used the phrase ‗Laxman Rekha‘ on its product.

(iv) The plaintiff's assertion of the ownership of copyright in the packaging containing the words ‗Laxman Rekha‘.

(v) The defendant has not chosen to give an explanation why he adopted ‗Magic Laxman Rekha‘.

(vi) The defendant's averments in Suit No. 1967 of 1996 that the product Magic Laxman Rekha was used by it since 1992.

(vii) The defendant's statement in the application made to the

Trade Mark Registry on 30-5-1996 for registration of trade mark ‗Magic Laxman Rekha‘ claiming continuous user since 1992.‖

The injunction granted by the learned Single Judge was, however, vacated by the Division Bench of the High Court on the sole ground of delay and laches in filing the suit. Midas appealed, thereagainst, to the Supreme Court. The Supreme Court, reversing the decision of the Division Bench, ruled as under: ―5. The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.

6. In this case it is an admitted position that the respondents used to work with the appellants. The advertisements which had been issued by the appellants in the year 1991 show that at least from that year they were using the mark LAXMAN REKHA on their products. Not only that but the appellants have had a copyright in the marks KRAZY LINES and LAXMAN REKHA with effect from 19-11-1991. The copyright had been renewed on 23-4-1999. A glance at the cartons used by both the parties shows that in 1992 when the respondent first started he used the mark LAXMAN REKHA on cartons containing colours red, white and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the appellants.

7. In our view on the facts extracted by the learned Single Judge, this was a fit case where an interim injunction should have been granted and should have been continued. In our view the Division Bench was entirely wrong in vacating that injunction merely on the ground of delay and laches. Under the circumstances, the impugned order is set aside and that of the trial court is restored. It is clarified that all observations made by the High Court and by this Court are prima facie and shall not be taken into consideration at the time of the trial of the suit.‖ (Emphasis supplied)

47. Where passing off is found to have taken place, the Supreme Court, in Laxmikant V. Patel v. Chetanbhai R. Shah11, in a similar vein, opined that ―once a case of passing-off is made out the practice is generally to grant a prompt ex parte injunction followed by appointment of learned Local Commissioner, if necessary‖.

48. It is significant that the Supreme Court has not, in either of the above decisions, subjected the grant of an injunction to the satisfaction, a priori, of the considerations of balance of convenience and irreparable loss. Intellectual property rights have, therefore, been accorded a somewhat more exalted status, by the Supreme Court, than other terrestrial proprietorial claims. To an extent, the considerations of balance of convenience and irreparable loss are inbuilt into every case in which a violation of an intellectual property right is found to have taken place. Property which is the product of one‘s intellect – be it a trade mark, copyright, patent or design or any other intellectual property for that matter – is entitled to be sedulously safeguarded.

49. Where, therefore, trade mark infringement, within the meaning of Section 29 of the Trade Marks Act, is found to have taken place, an injunction must follow – ordinarily. There is, however, one, and only one, circumstance in which an unregistered user of a trade mark which stands registered in favour of another can escape an injunction, and that is to be found in Section 34. Section 34 insulates an infringer against injunction where the use, by the alleged infringer, of the impugned mark, pre-dates the use as well as the registration – as is apparent from the use of the words ―whichever is earlier‖ in the provision – of the mark of which infringement is alleged. If, therefore, the defendant has been using the impugned mark from a point of time prior to the user of the asserted mark by the plaintiff, the plaintiff is absolutely proscribed, by Section 34, from interfering with such user in any manner.

50. Critical, therefore, to the present dispute, is the aspect of user.

51. The defendant claims user of the impugned mark since 1985. If, therefore, the plaintiff has a prima facie case of user of the asserted HTA mark prior thereto, a case of infringement would be made out and an injunction must follow.

52. Mr. Lall has placed, on record, a large amount of material to evidence pre-1985 user, by the plaintiff, of its HTA mark, and Mr. Dayan Krishnan has not attempted to dispute the credibility thereof, save and except for contending that the invoices were handwritten and that there was a discrepancy in two or three invoices. Neither in the reply to the present application, nor orally during arguments in Court, has any traversal been attempt, much less substantial, to the photograph reflecting a banner advertising the camp for sale of HTA Oil Seals by the plaintiff from 10 April to 13 April 1983, the notices soliciting dealer enquiries till 1978, 1979 and 1983 or the calendars printed by Paul & Paul covering the years 1978 to 1985. As many as 11 invoices have been produced by Mr. Lall for the period 1977 to

1985. The originals of the said invoices were also produced by Mr. Lall in Court. Though the defendant would, no doubt, be entitled to challenge the said invoices, or their credibility, during trial, I have seen the invoices and find, prima facie, that they are, in fact, dated and issued far back in point of time. It is well known that computerized or printed invoices were not issued in the late 1970s and early 1980s and, therefore, no adverse inference can flow from the fact that the invoices happen to be handwritten. There is substance in the contention of Mr. Lall that, having itself relied on invoices and purchase orders in which, though the rest of the document is printed, the part number with ―HTA‖ alone is written in hand, the defendant cannot, very well, be heard to dispute the credibility of the invoices produced by the plaintiff on the ground that they are handwritten.

53. The plaintiff has, therefore, made out a clear prima facie case of priority of user of the asserted HTA mark, vis-à-vis the defendant. Mr. Dayan Krishnan‘s attempt to cast doubts on the plaintiff‘s claim of user, on the premise that, if the plaintiff was in fact using the HTA mark there was no reason why it would not have got it registered when it obtained registrations for its other marks, is purely presumptive in nature. It cannot weigh against the volume of material placed on record by the plaintiff which substantiates, prima facie, its 1977 claim of user. There is, moreover, no requirement, in law, of a mark having to be registered under the Trade Marks Act, and the fact of non-registration is, at best, an extremely weak ground on which user of the mark can be doubted. In fact, in not choosing to get its marks registered – for which there is no satisfactory explanation from the defendant – the defendant has jeopardized its own case, as, in the absence of priority of user vis-à-vis the plaintiff, it has no substantial difference to offer, against the plaintiff‘s allegation of infringement.

54. Equally, as Mr. Lall correctly points out, the figures of annual turnover which were filed with the applications for registration of the various marks of the plaintiff, inasmuch as they related to the total turnover of the plaintiff, were bound to be the same.

55. All that remains to be seen, then, is whether the impugned marks of the defendant are deceptively similar to the registered trade marks of the plaintiff. The plaintiff holds registrations not only of the HTA word mark but also of the device. The defendant uses the marks HTA, ARS-HTA/ and also uses the device of the mark written in concentric circles on the outside of the packs in which it sells its product. As Mr. Lall correctly submits, the defendant has offered neither any defence nor any explanation for the use of the ―concentric circles‖ device, in which the plaintiff holds specific trade mark registration.

56. The use of the HTA word mark by the defendant directly infringes the HTA word mark registered in the plaintiff‘s favour, by virtue of Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, as the rival marks are identical, used for identical goods, and Section 29(3) would, therefore, presume the existence of likelihood of confusion. Inasmuch as ―HTA‖ constitutes a prominent part of the ―ARS-HTA‖ word mark as well as the logo (in which HTA is prominently written in capitals), the use of the said marks would also infringe the HTA mark of the plaintiff, applying Section 29(2)(b) of the Trade Marks Act. In this context, the fact that the rival marks are used for identical goods, and cater to the same customer segment, also contribute to the likelihood of confusion or deception.

57. Mr. Dayan Krishnan stressed the fact that the defendant‘s goods were first supplied to OEMs, who used them in the vehicles which rolled out of the assembly line. Thus, he says, there is no chance of confusion at all. The submission ignores the jurisprudential contours of the concept of ―confusion‖ in trade mark law. There is an illuminating discussion of the concept in the judgment in Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers Pvt Ltd12, distilled, in the following passage, from Mc Carthy on Trademarks and Unfair Competition, IV Edn: ―i. Likelihood of confusion (i.e. confusion is probable and not simply possible) is the standard for both trademark infringement and passing off. ii. Priority of use needs to be considered. iii. To establish trademark infringement and/or passing off in most cases (we discuss one statutory exception where confusion is presumed by court below) it needs to be shown that an appreciable number of buyers and not the majority of buyers are likely to be confused. Even 1% of India's population will be an appreciable number of buyers. iv. Likelihood of confusion may be proved in many ways, such as:  Through survey evidence;  By showing actual confusion;  Through arguments based on a clear inference arising from a comparison of the marks in question and the context in which the marks are used; Under Section 29 of the Trademarks Act, 1999, confusion is presumed if the marks are identical and are used for identical goods/services.

5. Confusion can be of the following categories: 221 (2015) DLT 359 • Point of sale confusion – this refers to confusion that takes place at the time of purchase. • Post sale confusion – this includes confusion of those other than the purchaser. • Initial interest confusion – this refers to confusion that may be caused initially, i.e. prior to purchase, but at the time of purchase of the alleged infringer/tortfeaser's product or using its service, the consumer is not confused. • Reverse confusion - this occurs when consumers purchase the goods or use services of the senior user thinking them to originate from the junior user.

6. When a person knows that the mark in question does not originate from the senior user but the senior user is called to mind, then it's a step before confusion. If on the other hand, the consumer is in a state of wonderment if there's a connection, this is confusion. Further, if this consumer then purchases the junior users product, this is then deception.‖ Both products, of the plaintiff and defendant, being identical, with identical ―HTA‖ embossings, there can be no manner of doubt, in my opinion, that a customer, even if of above average intelligence and recollection – unlike the unfortunate gentleman of average intelligence and imperfect recollection who generally inhabits these precincts – would be unlikely to distinguish one from the other. Even if one were to assume that the defendant‘s products are not ordinarily available in the market, as they are ―assembly line‖ inputs – for which there is no conclusive evidence on record, placed by the defendant – then, at the time of purchasing the plaintiff‘s product, even as a replacement part, the customer is likely to wonder whether the part is actually of the defendant, which would amount to ―reverse confusion‖ as explained in Shree Nath Heritage12. The requirement of likelihood of confusion, owing to the similarity of the rival marks and the usage, by the defendant, of the impugned logo for the same goods for which the plaintiff uses its registered HTA marks, also, therefore, stands satisfied.

58. Where infringement exists, Midas Hygiene10 mandates grant of injunction. The submission of Mr Dayan Krishnan that grant of injunction would bring the assembly line of several vehicle manufacturers to a halt is not supported by any cogent material. Even otherwise, how the defendant navigates itself out of the inevitable sequelae of infringement, is a call which the defendant would have to take, in its own best business interests. Where infringement of a registered trade mark has taken place, the balance of convenience is always in favour of grant of injunction, as continued tortuous infringement is presumed, in law, to result in injury to the intellectual property holder which cannot be compensated by money and is, therefore, irreparable.

59. As a result, the plaintiff is entitled to an interlocutory injunction, as sought in the application, pending disposal of the suit. Conclusion

60. Pending disposal of the present suit, therefore, the defendant, and all others acting on its behalf, shall stand restrained from using, in any manner and for any purpose, as well as from advertising, promoting or displaying, either physically or virtually, the marks HTA or ARS-HTA, whether as word marks or logos, or using a packing which is similar to the mark, which stands registered in favour of the plaintiff as a trade mark, incorporating the ―concentric circles‖ device, in respect of oil seals, gaskets, and other allied and cognate goods.

61. The defendant shall also remove from all physical and virtual sites, any reference to the marks HTA or ARS-HTA, or to the trade dress or logo. Given the concerns expressed by Mr. Dayan Krishnan, the defendant is granted a month‘s time to do so.

62. The Court is not passing any injunctive orders with respect to goods which bear the infringing marks and are already in the market and, therefore, outside the control of the defendant.

63. The application stands allowed accordingly.

64. Needless to say, all observations in this order are prima facie, for the purposes of disposal of the present application, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the CPC.

C.HARI SHANKAR, J AUGUST 9, 2023 rb