Eveready Industries India Limited vs Anil Gupta, Shiva Lamps Industries

S. Usha, J

The applicant in the rectification application has filed this instant miscellaneous petition to stay the effect of registration under No. 590383 in class

11.

The applicant's predecessor in title i.e. national Carbon Company (India) Limited came into existence in the year 1905. The National Carbon

Company (India) Limited was changed to The Ever Ready (India) Company in the year 1926. Ever Ready Company (India) Limited was incorporated

on 20th June 1934 and on 24th April 1995 the name was finally changed to Eveready Industries India Limited.

The applicants hold registration of the trade mark 'EVEREADY' both word per se and also in a stylized manner since 1905. By long and continuous

use the mark 'EVEREADY' has attained the status of a well known trade mark. The applicant has obtained copyright registration. On or about

January 2009, the applicants came to know about the impugned registration 'EVEREADY' in respect of electric bulbs/G.L.S. lamps for sale in the

area of New Delhi, Haryana, Rajasthan and Gujarat.

On complaint by the applicant, the Delhi Police on 13.02.2009 made investigation and found huge quantity of bulbs bearing the impugned trade

mark. The Respondent at this point produced the registration certificate. On perusal of the registration certificate, the police neither detained the goods

nor took the Respondent in custody.

The registration granted in favour of the Respondent is in contravention of the provisions of Sections 9, 11 and 18 of the Trade Marks Act, 1999. In

the interest of justice, the effect of the impugned registration be stayed.

The Respondent herein filed their counter to the miscellaneous petition denying the various allegations made in the miscellaneous petition. The

Respondent further submitted that the applicant is guilty of concealment of material facts and the application is liable to be dismissed on this ground

alone. The Respondent stated that the balance of convenience was in their favour as they had been using the impugned trade mark for the past 25

years.

The applicant herein filed their rejoinder to the reply filed by the Respondent.

The miscellaneous petition was taken up for hearing at the Circuit Bench sitting at Delhi on 02.02.2010. Learned Counsel Shri M.C. Mangla and

Shri Manish Singhal appeared for the applicants and Shri Neeraj Grover, learned Counsel appeared on behalf of the Respondent. We have heard both

the counsels. Learned Counsel for the applicant contended that they had been using the said trade mark EVEREADY since 1905. They had obtained

27 registrations out of which the first registration was of the year 1942. They had obtained registration in various classes. The sales figure runs to

several lakhs of rupees. The mark by long use had attained the status of a well known mark. The rival goods are same.

The applicants counsel further submitted that the adoption of the trade mark by the Respondent is dishonest. The Respondent if had made a search

would have definitely known about the applicants mark already on the register. The applicant, therefore, prayed that the effect of registration be

stayed.

The counsel for the Respondent submitted that in the Civil Suit an order of injunction was passed with regard to a different label and not with

regard to the present mark under dispute. The counsel also submitted that the applicants were aware of the Respondents use since 1993 as a legal

notice was issued to the Respondent and the same was replied to by the Respondent and denied the statement that the applicants came to know of the

Respondent's use only in the year 2009. The Respondents use is honest. The counsel cited Judgments in support of their case.

In rejoinder to the reply the applicants counsel submitted that reply notice was not received by the applicants.

We have carefully considered the arguments of both the counsel and have gone through the pleadings and documents placed before us. We do not

find any prima facie case made out by the applicant for granting an order of stay. We also do not find any denial by the applicant as to the use by the

Respondent since 1993. We are, therefore, of the view that by granting a stay at this stage, we are virtually granting the main prayers in the

rectification application. Hence, no stay is granted and the miscellaneous petition is dismissed without costs.