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Stanley Switchgear Products (Stanley Switchgear) took Mr. Sunil Agrawal to the Patiala House Court, (District Court) Delhi so as to seek an injunction for the following reasons:
- To restrain him from infringing its trademark “STANLEY”.
- To pass off his goods as those of Stanley Switchgear.
Stanley Switchgear is a partnership firm which is engaged in manufacturing and selling electric switches, plugs, sockets, conduit boxes, connectors, and the like products.
Contentions of Stanley Switchgear:
- It is the owner of the trademark “STANLEY” which it adopted in the year 1966 and has been using ever since.
- It came to the notice in September, 2018that wires and cables were being sold in the market under the mark STANLEY, by Mr. Agrawal, trading as M/s Jyoti Cables.
- Mr. Agrawal applied for registration of the trademark “Stanley” in 2005 on a "proposed to be used" basis and now has a registration for the same.
- Stanley Switchgear filed an application for the cancellation of Mr. Agarwal’s trademark before the Intellectual Property Appellate Board (IPAB) in 2018 which is still pending. After filing the rectification petition, it received a notice of infringement of the trademark STANLEY from Mr. Agrawal.
- In response to this, Stanley Switchgear asked Mr. Agrawal to refrain from infringing the trademark and for seeking voluntary cancellation of its registered trademark. However, it did not receive any further response.
The Court, at an earlier occasion, had granted exparte ad-interim injunction in favor of Stanley Switchgear. Resultantly, Mr. Agarwal applied for a vacation of the injunction order.
Contentions of Mr. Agarwal:
- His business is confined to wires and cables, and his consumers and the public at large associate the trademark “STANLEY” with his products since 2005.
- His goods under the said trademark are sold across the country.
- His mark has earned goodwill and reputation in respect of wires and cables.
- He also has a copyright registration of the artwork of his trademark “STANLEY”.
- Stanley Switchgear falsely alleged that it came to know about his business of wires and cables under the trademark “STANLEY” in September 2018.
- When Stanley Switchgear thought of entering into the business of wires and cables under the trademark “STANLEY” in September 2018, it had applied for registration of the said trademark falsely claiming prior use since 1966.
The Registrar had cited Mr. Agrawal’s trademark “STANLEY” in the examination report.
- Stanley Switchgear tried to overcome the said objection by stating that Mr. Agarwal’s mark is not deceptively similar to its mark and that the goods for which the two marks were being used are different.
- He filed an opposition to Stanley Switchgear’s mark in 2019 as well.
- Stanley Switchgear has no registration for wires and cables nor was it trading in them.
- No infringement suit or passing off action is maintainable against him and that the exparte interim injunction should be vacated.
Court’s observations: However, the court observed the following -
- Although Stanley Switchgear adopted the trademark “STANLEY” from the year 1966 and has been using the same ever since the description of the goods in its application for trademark registration does not include ‘wires and cables’.
- Stanley Switchgear has failed to adduce any documents evidencing its use of the mark in respect of wires and cables.
- Stanley Switchgear has applied for registration for the wires and cables only in 2018. Whereas, Mr. Agrawal has proved his use of the trademark “STANLEY” for these goods since 2005.
- Stanley Switchgear cannot raise an objection against Mr. Agarwal’s use of the mark as it has not approached the Court with clean hands.
Court’s decision: The vacated the ad-interim injunction stating that Mr. Agrawal is the prior user of the trademark “STANLEY” in respect of wires and cables stating the following conclusive pointers:
- It is well-settled law that a party who is seeking the discretionary relief of injunction has to approach the court with clean hands. Party is required to disclose all the material facts which may one way or the other affect the decision, otherwise, the party is not entitled to the discretionary relief.
- If a party withholds a vital document in order to gain an advantage on the other side, then, he would be guilty of playing fraud on the court as well as the opposite party.
- A prior user of a trademark is entitled to maintain an action against a subsequent user of an identical trademark including the registered user thereof.