The Bombay High Court has asserted that a person who does not come to the Court with clean hands is not entitled to be heard on the merits of his grievance, as every Court is not only entitled, but is duty bound to protect itself from unscrupulous litigants who try to pollute the stream of justice by resorting to falsehood or suppressed facts which have a bearing on the adjudication of the issues. The suppression of material facts disentitles a party to the discretionary relief of an interim injunction.
The Court held that acquiescence is a complete defence to an infringement action which contemplates the existence of two elements viz. honesty in the defendant’s adoption and use, and lack of some positive act on the part of the plaintiff. While a plaintiff’s trademark registration makes it entitled to exclusivity, it does not extend to the defendant company in peculiar circumstances where the business of both entities was intertwined flowing from the same origin, and where the plaintiff had expressly granted a no objection to the defendant’s adoption of the corporate name.
The Division Bench comprising Justice Bharati Dangre and Manjusha Deshpande observed that the Appellate Court shall not interfere with the exercise of discretion of the Court of first instance, and substitute its own discretion, except where the same has been shown to be exercised arbitrarily or capriciously or perversely or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions.
The Bench noted that the Plaintiff suppressed the material fact about their companies being promoted by the same family patriarch and about the inter se relationship between Amarendra and Raghavendra in the management of the Plaintiff and the Defendant company. The plaint completely lacked particulars about the relationship between the Plaintiff and the Defendant, or that Amarendra was a Director in the Defendant company till 2015, conveying a misleading impression that the Defendant is an un-associated third party.
The Bench observed that the Plaintiff’s reliance on its registration for the mark ‘MINCO INDIA’ granted on 29/01/2024 does not entitle the Plaintiff to an injunction as a matter of course, as the Plaintiff contrived its alleged cause of action immediately after its registration. The Bench also found the Plaintiff’s inaction for over 13 years, while the Defendant continued its business under the trading name ‘MINCO’ building a formidable business with cumulative sales turnover, amounts to clear acquiescence on the part of the Plaintiff.
The Bench noted that the Plaintiff in fact approved the change of name of the Defendant company in the year 2012 itself, as both companies formed part of the family-promoted consortium known as ‘GICON’.
Further, the Bench observed that the products do not have any mark per se, as the Plaintiff and Defendant are manufacturers of specialized industrial equipment supplied as per the specification of the client, and are not products casually available for sale in the market. Consequently, the likelihood of confusion is minimal, and the reliance by the Plaintiff on a solitary email of February 2024 is not sufficient to establish confusion or the likelihood of confusion.
Thus, the Bench concluded that the balance of convenience is in favour of the Defendant, who has been openly and continuously using ‘MINCO’ as a part of its trade name since September 2012 and has earned reputation and goodwill.
Briefly, the Appellant/Original Plaintiff, Minco India Private Limited, instituted a Commercial IP Suit for trademark infringement and passing off against the Respondent/Original Defendant, Minco India Flow Elements Private Limited. The Plaintiff claimed to be engaged in the business of gauges, flow meters, and allied goods since 1982, using the mark ‘MINCO INDIA’, applied for registration of the mark ‘MINCO INDIA’ in Class 09 with a user claim since 06/10/1982, which was registered vide Certificate No. 3373018 on 29/01/2024.
The Plaintiff pleaded that the cause of action arose in the first week of February 2024 when it allegedly discovered the Defendant manufacturing and offering for sale goods using the identical mark ‘MINCO’. Accordingly, it sought an order of injunction to restrain the Defendant from using the impugned mark ‘MINCO’ or any mark identical to ‘MINCO INDIA’ to infringe its registered trademark or pass off its goods.
The Plaintiff and Defendant companies were promoted by the same family patriarch, Manohar Mahadev Kulkarni, the father of Amarendra Kulkarni (Director of the Plaintiff) and Raghavendra Kulkarni (Director of the Defendant). The Defendant was originally incorporated as ‘Tivim Instruments Pvt Ltd’ in 1982. Following a family partition in 2012, Amarendra and Raghavendra were appointed as Directors of both the Plaintiff and Defendant companies. By a Resolution dated 02/07/2012, the Plaintiff company conveyed its no objection to the Defendant adopting the trade name ‘MINCO’, pursuant to which the Defendant’s name was changed to ‘Minco (India) Flow Elements Private Limited’ in September 2012.
Later, Amarendra Kulkarni resigned from his position as Director of the Defendant company with effect from 31/12/2015, and identically, Raghavendra Kulkarni resigned from the Plaintiff company on the very same day due to personal reasons. The Plaintiff suppressed these material facts in the plaint, giving a misleading impression that the Defendant was an unrelated third party who suddenly appeared in the market in 2024. Hence, the Single Judge dismissed the Interim Application, refusing interim relief on the grounds of suppression of material facts and acquiescence.
Cases Distinguished:
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd – 12 (2001) 5 SCC 73
Make My Trip (India) Pvt Ltd. Vs. Make My Trip – 2019 SCC Online Del 10638
Appearances:
Advocates Pranshul Dube, Asma Nadaf and Maithri Porwal, for the Appellant
Advocates Hiren Kamod, Anees Patel and Mayuresh Borkar, for the Respondent
