Roopak Stores Pvt. Ltd. & Ors. v. Roopaks Pik-N-Pay & Ors.

1. This application is filed under Order 39 Rules 1 & 2 seeking injunction to restrain the defendants from infringing the trade mark ROOPAK of the plaintiffs by manufacturing, marketing, selling, offering for sale, dealing, etc. in all types and varieties of dry fruits, etc. under the trade mark/trade name ROOPAK/ROOPAK‟S PIK N PAY or any other trade mark/trade name which is identical and deceptively similar to the registered trade mark of the plaintiffs‟ ROOPAK.

2. It is the contention of the plaintiffs that pursuant to a Dissolution Deed dated 31.03.1993 in the partnership firm the plaintiffs became the sole and exclusive proprietor of the trade mark ROOPAK/ROOPAK STORES. It 2019:DHC:1733 is pleaded that subsequently, the said trade mark was assigned to a new company which is plaintiff No.1/ROOPAK STORES PVT. LTD. It is pleaded that the defendants had a right to use the mark ROOPAK only in relation to a business unconnected with the business of the partnership firm/plaintiff No. 1. However, it is pleaded that the defendants illegally and contrary to the terms of the Dissolution Deed dated 31.03.1993 has started using the trade mark ROOPAK‟S PIK N PAY for the products akin to what were dealt by the erstwhile partnership firm/now, plaintiff No.1. It is further pleaded that now in 2017, the defendants have opened a new store in GK-1 and in Gurgaon where the defendants are blatantly using the mark ROOPAK in addition to the trade mark being used earlier, namely, ROOPAK‟S PIK N PAY using the same font. Hence, the present suit.

3. Learned senior counsel for the defendants have however opposed the present application. She has taken me through some of the invoices of 1994- 95 to submit that the trademark ROOPAK‟S PIK N PAY and label ROOPAK have been used by the defendant since 1994. There was never any objection by the plaintiff. She has further taken me through the reply filed before the Trade Mark Registry where again an averment is made that the trademark and the label have been used by the defendants since 1994. She has also stated that in terms of the Dissolution Deed, the defendants have a right to use the trade mark ROOPAK and is not excluded from doing so as claimed by the plaintiff.

4. I may first look at the relevant clause of the Dissolution Deed dated 31.03.1993. Clause 5 of the Dissolution Deed reads as follows:- “5. That all the assets and the liabilities of the firm subject to clause (3) including the firm name „ROOPAK STORES' shall vest in the first party subject to however that the word 'ROOPAK' may be used by the third party who is retiring for any new business undertaken by him provided the name elected for such business shall not be one similar to the words „ROOPAK STORES'.

5. Hence, the firm name ROOPAK STORES is to vest in the first party i.e. plaintiff No.1 subject to that the word ROOPAK may be used by the third party i.e. defendants “for any new business undertaken by him provided the name for such business shall not be similar to ROOPAK STORES”.

6. Prima facie, it is manifest from a reading of the above clause that the defendants have not been completely barred from using the word/trade mark ROOPAK.

7. Another aspect which strikes the court is that the defendants are admittedly using the word ROOPAK‟S PIK N PAY in the shop at Karol Bagh as the neighbour of the original shop where the firm/plaintiff No. 1 was/is working since 1994. The plaintiffs have now filed the present suit in 2017 only after the defendants have opened a new store in GK-1, New Delhi and Gurgaon. The main argument now of the learned senior counsel for the plaintiffs was regarding the fact that the defendants have started using the work ROOPAK per se without using the original name which was allegedly being used i.e. ROOPAK‟S PIK N PAY.

8. As noted above, the defendants have placed on record invoices which show user of the label ROOPAK which relate back to the year 1994. They have also pointed out to the reply filed before the Trade Mark Registry. The defendants had filed an application for registration of the mark ROOPAK‟S PIK N PAY, objections were filed by the plaintiffs. In the reply to the objections, a plea has been taken by the defendants that they had annual sales figures under the mark ROOPAK in 1993-94 of Rs. 23.63 lakhs, in 1994-95 Rs.54.42 lakhs and so on. Prima facie, it appears that the defendants have been using the mark ROOPAK since 1993-94.

9. In my opinion, at this stage, after a prima facie user of the trade mark ROOPK‟S PIK N PAY and mark ROOPAK for 25 years, it is not possible for the court to injunct the defendants from using the trade mark/name ROOPAK‟S PIK N PAY or using the label ROOPAK.

10. It is evident from the above facts that the plaintiffs have approached this court in 2017 despite the defendants using the impugned mark since

1994. There is an unexplained delay and it would be improper for this court to grant an intern injunction to the plaintiffs. In this context reference maybe had to the judgment of the Supreme Court in Power Control Appliances v. Sumeet Machines (P) Ltd., (1994) 2 SCC 448 which held as follows: “33. Now, we come to the principles in relation to the grant of interim injunction. The case in K.E. Mohammed Aboobacker v. Nanikram Maherchand [(1957) 2 MLJ 573] makes a reference to the case-law and holds at pages 574-75 as under: “The principles which should govern the Court in granting or withholding a temporary injunction in trade mark infringement actions are well-settled: Seerecent decision Henry Hemmings, Ltd. v. George Hemmings, Ltd. [(1951) 68 RPC 47] As a temporary injunction is merely of a provisional nature and does not conclude the rights of the parties in any way, the Court will exercise its discretion in favour of the applicant only in strong cases. The plaintiff must make out a prima facie case in support of his application for the ad interim injunction and must satisfy the Court that his legal right has been infringed and in all probability will succeed ultimately in the action. This does not mean, however, that the Court should examine in detail the facts of the case and anticipate or prejudice the verdict which might be pronounced after the hearing of the suit or that the plaintiff should make out a case which would entitle him at all events to relief at the hearing. Colman v. Farrow & Co. [(1898) 15 RPC 198], Hoover, Ltd.v. Air-way Ltd. [(1936) 53 RPC 399], Upper Assam Tea Co. v. Herbert and Co.[(1890) 7 RPC 183], Star Cycle Co., Ltd. v. Frankenburgs [(1906) 23 RPC 337]. In fact the Court will not ordinarily grant an interlocutory injunction if a large amount of evidence is necessary to support the plaintiff's case. The proper course in such a case is to ask for the trial of the action. The injury must be actual or imminent. Pinel & Cie v. Maison Pinet, Ltd. [(1895) 14 RPC 933] Where the defendant disputes the plaintiff's title to the mark or contends that the plaintiff is not entitled to relief by reason of the acquiescence or delay or other estoppel or of the defendant's concurrent rights, the Court will be guided by the balance of inconvenience which may arise from granting or withholding the injunction as well as the justice of the cause after considering all the circumstances in the suit. In other words, where the plaintiff's title is disputed or the fact of infringement or misrepresentation amounting to a bar to the action or some other defence is plausibly alleged upon the interlocutory motion, the Court in granting or refusing the interim injunction is guided principally by the balance of convenience that is by the relative amount of damage which seems likely to result if the injunction is granted and the plaintiff untimately fails or if it is refused and he ultimately succeeds; Read Brothers v. Richardson and Co. [(1881) 45 LT 54], Hommel v. Bauer & Co. [(1903) 20 RPC 801] … It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark. North British Rubber Co., Ltd. v. Gormully and Jeffery Manufacturing Co. [(1894) 12 RPC 17], Army and Navy Cooperative Society, Ltd. v. Army Navy and Civil Service Cooperative Society of South Africa Ltd. [(1902) 19 RPC 574], Hayward Bros. Ltd. v. Peakall [(1909) 26 RPC 89], Yost Typewriter Co. Ltd. v. Typewriter Exchange Co. [(1902) 19 RPC 422], Royal Warrant Holders' Assn. v. Slade & Co., Ltd. [(1908) 25 RPC 245]”

11. Needless to add these issues would have to be gone into at the time of trial.

12. I restrain the defendants to use any variants of the mark ROOPAK‟S PIK N PAY or ROOPAK. The defendants will also file their annual accounts in court including accounts since the year 1993-94 regarding the use of the mark ROOPAK within a period of six weeks. It is also ordered that the trial be expedited. Parties will share the cost of the appointment of the Local Commissioner to expedite the trial.

13. At this stage, learned senior counsel for the defendants has also stated that they are not using the mark ROOPAK with underline as depicted in page 36 of the plaint being the first mark on the page only.

14. The application is disposed of.