In the Supreme Court of India Civil Appeal No. 3415-20 of 2001, Citation: (2001) 5 SCC 95 Appellant Uniply Industries Ltd. Respondent Unicorn Plywood Pvt. Ltd. And Anrs. Date of Judgement 1st May 2001 Bench Hon’ble Justice S. Rajendra Babu, Hon’ble Justice K.G. Balakrishnan
It is well-settled law that the Trade Mark or Trade Name of a company or a deceptively similar Mark or name cannot be used by a person, because it will injury to the person to whom that Mark or Name belongs. It is also settled law that the prior use of the Trade Mark or Name has right over the latter user even if the latter user has the registered Trade Mark. The question regarding the Prior use of trademark arose in the present case i.e. Uniply Industries ltd. V. Unicorn Plywood Pvt. Ltd. And Anr.[i] Where the Appellant and Respondent both tried to show that he is the one who is the prior user of the Trade Marks in question.
The right of Prior user has been well recognized by the Indian Courts in many cases. Not only the cases but Statute also explicitly confers this right. The principle of ‘Priority in Adoption’ and not ‘priority in registration’ has been enumerated in Section 34 of the Trademarks Act, 1999 prevents even the registered user from using such mark or similar marks which have been in prior use by some other person.
Statutory Provisions Discussed-
The Court did not discuss or interpreted any provision in the present case. It just mentions Section 12(3) of the Trade and Merchandise Marks Act, 1958 once that too while referring to the registration of trademarks.
Facts of the Case-
The Appellant company was incorporated in 1996 and deals in Plywood, Laminates, Block Boards, etc under the Trade Names ‘UNIPLY, UNIBOARD, and UNIWUD’. The appellant came to know of the Respondent Company in 1999 that they are using the Name ‘UNIPLY, UNIBOARD’. The appellant filed a suit against the Respondent along with an application of a Temporary Injunction. The Court granted an ex-parte temporary injunction to the Appellant.
The Respondent filed another suit in 1999. The Respondent Company was incorporated in 1993 and according to the Respondent they have been carrying business under the Name of ‘UNIPLY, UNIBOARD and UNIDOOR’ since 1993. The Respondent claimed the prior use of Marks in question. However, the Court did not grant an injunction in favor of the Respondent.
There were invoices and other records placed by both the parties to establish prior use but the Trial Court by order dated 29-11-1999 held that the Respondents were established in 1993 and have advertised the Marks in 1993. On this basis, the Trial Court held that the Appellants have no prima facie case and the Balance of Convenience is not in their favor. An appeal was made to the High Court against the Decision. The High Court by relying upon the records concurred with the Decision of the Trial Court.
The Trial Court held that the Appellant has no prima facie case and the Respondent is prior user of the Mark. The High Court also concurred with the decision. Hence, an appeal to the Supreme Court was made to get the order of High Court Set Aside.
Whether the order of the High Court be set-aside and who is the prior user of the Marks in question?
Arguments by the Appellants-
The Appellants contended that principles laid down in Cadila Health Care[ii] the case has not been followed. The lower courts have given finding only on Prima facie case and no findings on irreparable injury and balance of convenience have been given. It was further contended that misrepresentation made by a trader is a valid cause for passing off action.It was also contended that the material placed before the court is sufficient to prove an action for passing off. The principle of the prior user is also wrongly applied and hence the order of the High Court should be set aside.
Arguments by the Respondents-
The Respondents contended that the two lower courts have held in favor of the respondents and there is no need for interference by this Court. The respondents are using these marks since 1993 when they have advertised it and other materials like invoices, letters are ample evidence to establish a prima facie case in favor of the Respondents.The respondents submitted that the Principle of Prior use has been rightly applied and the order of the High Court should stand as it is.
The Judgment of the Court was delivered by Justice S. Rajendra Babu.
The Court held that Cadilla Case[iii]is not applicable since the business activity is common and the marks in question are identical. The main question before the Court was that who is the Prior user and to decide this the High Court has relied upon Advertisement, invoices, and letters of the dealer. Regarding the Advertisement, the Court admitted that the Respondent has made advertisements since 1993 but whether the manufacturing has started in 1993 is to be decided by another factors. Regarding the invoices, the Court held that various invoices placed before the Court do not mention the brand names or trade-marks in question. Hence, whether the invoices pertaining to such Marks has to be established by placing more material before the Court.
The declaration filed by Respondent before excise authorities were found dubious by the High Court and hence cannot be relied upon. The Letters of Dealers are both in favor of the Appellants and Respondents. The Court while reiterating the Right of Prior user over latter user held that in the present case the lower courts should have been more cautious while granting an injunction.
The material placed was not enough to establish whether the respondent was the prior user of the marks or not. The Court also said that the lower Courts have not looked at factors other than the Prima Facie case. Hence, the lower courts should decide in whose favor the injunction lies and this should be done expeditiously. The Court Set aside the order of High Court, however, a temporary injunction was not granted to any party.
The Supreme Court, in this case, relied upon the existing principles of the Right of Prior user prevails over the latter. However, in this case, since there was not enough material before the Court to decide the prior user, the Court was not able to decide the temporary injunction in favor of any party. Hence, the Court asked the trial courts to call for more evidence so that this question can be settled.
“The views of the authors are personal“
[i]Uniply Industries ltd. V. Unicorn Plywood Pvt. Ltd. And Anrs, (2001) 5 SCC 95.
[ii]Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.