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1985 SCC OnLine Del 387 : AIR 1986 Del 343 : (1986) 29 DLT
110 (DB) : (1986) 1 Arb LR 45

In the High Court of Delhi

(Division Bench)
(BEFORE D.K. KAPUR AND N.N. GOSWAMY, JJ.)

Shri Swaran Singh Trading as Appliances Emporium

… Appellant;
versus
M/s. Usha Industries (India) New Delhi and another
… Respondents.
F.A.S.. (O. S.) No. 156 of 1984
Decided on November 18, 1985*
The Judgment of the Court was delivered by
D.K. Kapur, J.:— This is an appeal directed against the judgment of
a learned Single Judge of this Court on the Original Side whereby an
interim injunction to restrain the defendants from using the trade mark
or trade name USHA in relation to electric irons and other electrical
appliances like room heaters, stoves, angithis, ovens, hot plates,
toasters and table lamps, which had earlier been granted was virtually
withdrawn. The final order passed was that the defendants were
allowed to use the mark ‘USHA’ with the word ‘GOLDEN’ appearing
thereafter till the decision of the suit.
2. The suit in question was based on two registered trade marks
both ‘USHA’ which were registered in favour of the plaintiff-appellant in
1971 and 1976 respectively. The trade mark No. 276920 was registered
on 14th December, 1971, and was based on the user since 1960, which
was in respect of electric irons. The same mark ‘USHA’ bearing

Page: 344

No. 311724 was registered on 17th January, 1976, in respect of room-

heaters, stoves, angithis (furnace), oven, hot plates for cooking,
heating refrigerators, bread toasters, table lamps, etc., being used
since 1971. Thus, there were two trade marks, one for electric irons
based on the user since 1960, and one for other electrical goods
registered since 1976, based on the user since 1971.

3. According to the defendants whose name is M/s. Usha Industries

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(India), they had been using the trade marks from even an earlier date.
It was also claimed that though the plaintiff had come to know of the
alleged infringement in May, 1982, the suit was filed in 1984, so there
was a considerable delay in applying for the injunction.
4. The order under appeal has the effect of permitting the
defendants to use the impugned mark during the pendency of the suit.
In the case of a registered trade mark, this creates a very difficult
situation. The effect of registration is to give an exclusive right of user
to the proprietor of the registered trade mark. This is provided in S. 28
of the Trade and Merchandise Marks Act, 1958. The only persons who
can defeat this exclusive user are persons covered by S. 33 of the Act,
which provides as follows :—
“33. Saving for vested rights :—Nothing in this Act shall entitle the
proprietor or a registered user of a registered trade mark to
interfere with or restrain in the use by any person of a trade mark
identical with or nearly resembling it in relation to goods 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 by 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 in the name of the proprietor or a
predecessor in title of his; 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.”
In short, if there is user prior to the date of registration, then the user
may continue. According to the defendants, now respondents, they
have been using the marks from a prior date. There are two portions of
the Section, one of which refers to the date of user and the other refers
to the date of registration. The Section seems to give the earlier date as
the operative date, i.e., if the user is earlier than the registration it is
that date. If we take the user of the two trade marks as being 1960 and
1971 respectively, it means that the defendants must show that they
have used the trade mark ‘USHA’ prior to 1960 in relation to electric
irons and prior to 1971 in respect of room heaters, stoves, angithis, hot
plates, etc.
5. According to learned counsel for the respondents, the prior user is
established from a mass of documents placed on record. We have
examined some of these documents and must admit that it is difficult
to determine what the nature of that user was, if any. We are satisfied
that the defendants did use the trade mark ‘USHA’ in certain radio
goods like aerials. Qua such goods, we find no reason why the
defendants should not continue to use the trade mark ‘USHA’. The
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trade mark registered in favour of the plaintiff is not in respect of radio

goods or wireless goods. It is restricted to electric irons and to room
heaters, stoves, angithis, hot plates, etc.
6. We think, that as far electric irons are concerned, the injunction
has to continue because the user of the plaintiff, prima facie, appears to
be since 1961, but in respect of the other goods like room heaters,
stoves, angithis, ovens, bread toasters, etc., there is some user by the
defendants which may be treated as concurrent user for some time.
Mostly, these goods appear to have been sold in small quantities in odd
places in South India. The matter is to some extent made more
complex by the fact that the defendants are also named Usha
Industries. We have not been able to find any advertisement or any
reference in any journal relating to the trade mark showing that the
defendants actually advertised that they were using the trade mark
‘USHA’ prior to 1971. If there is any user between 1971 and 1976, it is
on a very limited scale.
7. There is then the question of delay. Learned counsel for the
respondents had urged that the delay is fatal to the grant of an
injunction. We are not so satisfied. A delay in

Page: 345

the matter of seeking an injunction may be a ground for refusing an

injunction in certain circumstances. In the present case, we are dealing
with a statutory right based on the provisions of the Trade and
Merchandise Marks Act, 1958. An exclusive right is granted by the
registration to the holder of a registered trade mark. We do not think
that statutory rights can be lost by delay. The effect of a registered
mark is so clearly defined in the Statute as to be not capable of being
misunderstood. Even if there is some delay, the exclusive right cannot
be lost. The registered mark cannot be reduced to a nullity. The
principles governing other types of injunctions are not to be readily
applied to a case like the present. Of course, if it was a case of a similar
mark as opposed to the same mark, the concurrent user coupled with
delay might be a ground for refusing an injunction. However, when the
same mark is being used, in a sense, the public is deceived into
purchasing the defendant's goods on the belief that they are the
plaintiff's goods, so a registered trade mark is a casualty, it is the duty
of the Court to protect the registered mark. That is the whole concept of
registration. So, we cannot refuse an injunction even if there is some
delay especially when the mark is the same. To refuse the injunction
would tantamount to permit a fraud being practised on unwary
customers. This is a matter of principle on which the Court cannot
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refuse the injunction.

8. Considering all the aspects of the case we think we should issue

an injunction to restrain the defendants from using the trade mark
‘USHA’ in respect of electric irons, but in the case of the other goods we
have to pass a different order. The defendants will be free to use the
trade mark ‘USHA’ in relation to radio components and aerials without
any restraint. In regard to the other electrical goods such as room
heaters, stoves, ovens, angithis, hot plates bread toasters, table lamps,
etc., the defendants-respondents will be permitted to use the word
‘USHA’ in conjunction with the word ‘GOLDEN’. In other words, they can
use the name ‘USHA GOLDEN’ as they appear to have done in some of
the price lists shown to us. In this connection, a subsequent order
passed by the learned single Judge on a contempt petition seems to be
the proper order to pass. By that order, the learned Single Judge has
directed the defendants to use the name ‘GOLDEN’ and ‘USHA equally
prominent, i.e., they will be entitled to use name ‘GOLDEN’ provided
the ‘GOLDEN’ and ‘USHA’ appear equally prominent. The appeal is
disposed of with this order. We want to make it clear that this
judgment is based on a prima facie consideration of the material before
us and will have no effect on the eventual determination of the facts on
an examination of the evidence produced by the parties.
9. We leave the parties to bear their own costs.
Order accordingly.
———
*
Against judgment of D.P. Wadhwa J., D/- 16-2-1984. (Delhi)

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